Supreme Court Defines Interim Injunction Criteria In Trademark Cases

In a recent and most famous judgment, the Supreme Court of India clarified the criteria for granting interim injunctions in cases of trademark infringement and passing off. The dispute arose between Pernod Ricard India Pvt. Ltd. (“Pernod”), owner of brands like Blenders Pride, Imperial Blue, and Seagram’s, and a local seller marketing whisky under the name London Pride.

The case raised questions about the extent of protection over common words, deceptive similarity in packaging, and how courts should balance competing interests when asked to grant injunctive relief. Importantly, the Court laid down a five-factor cumulative test that will guide interim injunctions in future trademark disputes.

This article explains the background, the Court’s reasoning, and the implications for trademark owners, litigators, and brand strategy in India.

Behind the Battle: Pernod Ricard vs. London Pride

Pernod Ricard is the brand that owns iconic brands like Blenders Pride, Imperial Blue, and Seagram’s. When it saw whisky bottles branded as London Pride, it believed its brand equity was under attack.

From experience, this is a very common concern among clients, especially in liquor, pharma, and FMCG, were brand recall drives sales. Pernod alleged:

• “Pride” in London Pride diluted its distinctiveness.
• The packaging resembled Imperial Blue.
• Bottles carried the “Seagram’s” embossing.

Yet both the Commercial Court (2020) and the Madhya Pradesh High Court (2023) refused interim relief. Pernod appealed to the Supreme Court.

The Core Question: When Do Courts Stop a Competitor Mid-Trial?

The Court was asked to decide:

1. Does Pernod have a prima facie case of infringement or passing off?
2. What factors should govern interim injunctions in trademark disputes?

The Supreme Court’s Five-Factor Formula

Courts do not simply ask: “Who used the mark first?” They weigh fairness and balance. The Supreme Court aligned India with global standards like American Cyanamid v. Ethicon (UK) and Cadila v. Cadila (India).

The five factors every plaintiff must now prove are:

1. Is There a Serious Question to Be Tried?

The claim must raise a genuine legal issue, not just a weak attempt to stall a competitor.

2. Will Consumers Likely Be Confused?

Courts put themselves in the shoes of an ordinary buyer with imperfect memory, not a trademark lawyer.

3. Where Does the Balance of Convenience Lie?

If refusal damages the plaintiff’s goodwill more than it harms the defendant’s business, courts may intervene.

4. Will There Be Irreparable Harm?

Loss of brand reputation and consumer trust is often irreversible, something clients struggle to repair even years later.

5. What About Public Interest?

Courts also ask whether the public would be misled. In sectors like food, liquor, and medicines, consumer safety and fairness carry great weight.

All five factors must co-exist. Missing even one can sink an injunction request.

How the Court Applied These Principles in Pernod’s Case

1. The Word “Pride”: Declared a common English word (publici juris). No monopoly unless distinctiveness is proven.
2. Packaging and Trade Dress: Found significant differences; no deception established.
3. “Seagram’s” Embossing: Insufficient proof at the interim stage.
4. Plaintiff’s Conduct: Pernod had not opposed the mark earlier, weakening its equity claim.

Courts often ask: “If you didn’t oppose it at the registry, why rush for an injunction now?” Pernod’s inaction cost it dearly.

Result: No injunction. Appeal dismissed.

Judgment in Simple Words

The Supreme Court upheld the lower courts’ refusal of interim relief. However, it ordered the trial court to decide the main case promptly, so that the dispute is not dragged out indefinitely.

Lessons Every Brand Should Take Home

1. Common Words Cannot Be Locked Up: You cannot monopolize generic or descriptive words like “Pride” or “Choice” without a clear secondary meaning.
2. Prepare for the Five-Factor Test: Injunctions now need evidence on all five counts.
3. Conduct Counts: Courts reward diligence. If you sleep on your rights, equity will not favour you.
4. Evidence is King: Photos, surveys, consumer confusion reports, without these, injunction pleas collapse.
5. Trade Dress Law Still Developing: Copying packaging with bad intent is tricky to prove; more rulings are needed.

Global Lens: How India Now Fits In

• UK/EU: It applies multi-factor balancing, much like India now.
• US: It lays strong emphasis on the irreparable harm post eBay v. MercExchange (2006).
• India: It aligns with the global best practices, prioritizing fairness over monopolies.

Conclusion

This judgment is a reminder that interim injunctions are not guaranteed. Plaintiffs must:

• Prove the real risk of consumer deception.
• Show irreparable damage to goodwill.
• Demonstrate they acted promptly and fairly.

A trademark case is often won in preparation, not just in courtroom arguments. This ruling reinforces that principle, making it a guiding framework for future trademark litigation in India.

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FAQs

1. What does ‘publici juris’ mean in trademark law?

It means a term is so common or generic that no single party can claim exclusive rights over it, unless it has acquired distinctiveness.

2. How important is trade dress in trademark injunctions?

Trade dress (packaging, colour scheme, bottle shape) can be protected, but courts require strong proof of consumer deception. It remains a developing area in Indian law.

3. What role does delay or inaction play in injunction cases?

Courts treat delay as evidence against urgency. If a brand owner did not oppose the mark during registration, it weakens the case for interim relief.