Introduction
In a recent ruling1, the Supreme Court has clarified the criteria for granting interim injunctions in cases of trademark infringement and passing off. The dispute between Pernod Ricard India Pvt. Ltd. (“Pernod”), maker of brands like “Blenders Pride”, “Imperial Blue”, and “Seagram's”, and a local seller of whisky under the name “London Pride”, raised questions on deceptive similarity and the use of common words in trademarks.
Factual Background
Pernod has long-standing trademark registrations for Blenders Pride (since 1994), Imperial Blue (since 1997), and Seagram's (since 1945).
In 2019, Pernod discovered that the Respondent was marketing whisky under the brand London Pride. According to Pernod, the Respondent's mark and packaging were deceptively similar to its own, particularly because:
- London Pride allegedly copied the “Pride” suffix from Blenders Pride;
- The packaging and trade dress were said to mimic Imperial Blue; and
- The Respondent's bottles bore “Seagram's” embossing, thereby infringing Pernod's registered house mark.
Pernod sought a decree of permanent injunction and damages before the Commercial Court at Indore, along with interim relief under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 (“CPC”). The Commercial Court rejected the interim injunction application vide Order dated 26 November 2020, finding no deceptive similarity. The Madhya Pradesh High Court affirmed this decision vide Order dated 03 November 2023. Aggrieved by the same, Pernod preferred an Appeal before the Supreme Court.
Issues before the Supreme Court
- Whether Pernod had established a prima facie case of trademark infringement and passing off to seek interim injunction.
- How Courts should apply the cumulative factors test for interim injunctions in trademark matters.
Analysis
The Supreme Court emphasized that grant of injunction, whether for infringement or passing off is ultimately guided by equitable considerations and not by an assumption of automatic entitlement. Drawing upon comparative jurisprudence, including American Cyanamid v. Ethicon, the Supreme Court reiterated that the following cumulative factors govern the grant of interim injunctions in trademark cases:
- Serious question to be tried – A genuine triable issue must exist; frivolous claims do not qualify.
- Likelihood of confusion/deception – Even at the prima facie stage, the plaintiff must show that an average consumer with imperfect recollection could be misled.
- Balance of convenience – The Court must weigh the harm to both parties, and if refusal risks irreparable damage to the plaintiff's goodwill or consumer confusion, then injunction may be granted.
- Irreparable harm – If goodwill dilution and consumer confusion cannot be compensated monetarily, irreparable harm is presumed.
- Public interest – In cases concerning public health, safety, or mass-consumed goods, Courts may consider whether public interest justifies an injunction to prevent confusion or deception in market.
The Supreme Court clarified that these criteria operate cumulatively, and the absence of any one factor may justify refusal of interim relief.
Applying these factors, the Supreme Court held:
- The only overlap between Blenders Pride and London Pride was the common word “Pride”, which is publici juris (of public right) and cannot be monopolised.
- The packaging, bottle design, logos, and colour schemes were materially distinct.
- Pernod failed to establish a prima facie case of deceptive similarity.
- Pernod had not opposed the impugned trademark when it was advertised in the prosecution proceedings.
Conclusion
The Supreme Court, therefore, dismissed the Appeal, upheld the refusal of interim relief to Pernod, and directed the trial court to dispose of the Suit on merits expeditiously.
This judgment reiterates that proprietors cannot claim exclusivity over common or descriptive terms such as “Pride” unless distinctiveness has been established through long and continuous use. Secondly, the Supreme Court has articulated the five-factor cumulative test as the determining factor for grant of interim injunctions in trademark disputes.
In our view, this decision serves as a cautionary reminder to brand owners that interim relief will not be granted as a matter of routine; and a strong prima facie case of deceptive similarity and a real likelihood of consumer confusion must be established before the courts.
However, despite the fact that the mark as a whole was not considered similar, the Supreme Court has certifiably missed an opportunity to opine on the effect of a deceptively similar trade dress being used with a mala fide intent. This issue is in need of evolved jurisprudence, and the Supreme Court's observations could have helped bridge this gap to set the tone for future jurisprudence.
Footnote
1, Civil Appeal No. 10638 of 2025, decided on 14 August 2025 (Bench: J.B. Pardiwala & R. Mahadevan, JJ.)
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