BREEZER Vs. FREEZmix; Phonetic Similarity of Trademarks and Likelihood Confusion

INTRODUCTION

In recently adjudicated case of Bacardi and Company Ltd. vs Bahety Overseas Private Ltd. & Ors[3], on 12^th November 2021, the Delhi High Court reaffirmed the deceptive similarity and likelihood confusion in the minds of public to establish the Trademark infringement. In this case the court issued an interim injunction against the defendants from using such mark which is phonetically similar to the plaintiff’s trademark under section 29 of the trademark Act 1999.

Bacardi and Company Limited, a manufacturer of rum-based alcoholic beverages, sells products under the brand name "BREEZER". These beverages are mixed with various fruit essences and have been sold since February 27, 2003. The company has registered the wordmark "BREEZER" and the shape mark of the bottle under classes 32 and 33. Bahety Overseas Private Limited, on the other hand, manufactures and sells alcohol-free fruit-based beverages under the brand name "FREEZMix". The company has registered the mark "FREEZMix" and uses a font and styling similar to that of Bacardi's "BREEZER" mark. Bacardi has filed a lawsuit against Bahety before the Delhi High Court, alleging trademark infringement and passing off. Bacardi claims that Bahety's use of the "FREEZMix" mark is deceptively similar to their registered trademark "BREEZER" and is likely to cause confusion among consumers. Bacardi seeks an interim injunction against Bahety's products.

Likelihood Confusion and third-Person perception

The concept of likelihood of confusion is crucial in trademark law, as it helps determine whether a new trademark may be mistaken for an existing one. However, the Trade Marks Act, 1999, doesn't provide clear criteria for assessing this likelihood. To fill this gap, courts have developed guidelines through various cases.

The European Court of Justice (ECJ) has provided valuable guidance on "likelihood of confusion" through two significant cases:

1.      Sabel B.V. v. Puma A.G. (1998)[4]

2.      Canon v. Metro Goldwyn-Meyer[5]

The likelihood of confusion depends on several factors, which must be considered together to form a comprehensive view. These factors include:

Factors to be taken into account for deciding likelihood of confusion:

1.      The degree of similarity in the marks

In assessing the degree of similarity between marks, one must determine the degree of visual, aural or conceptual similarity between them and evaluate the importance to be attached to those different elements taking into account the category of goods or services in question and circumstances in which they are marketed.

2.      The degree of similarity in the goods or services

Where either the respective marks or goods or services are identical, a finding of similarity under the other heading will probably result in a finding that there is a likelihood of confusion.

3.      Interdependence of the relevant factors

A global assessment of the likelihood of confusion requires the Registrar to be conscious of the interdependence between the degree of similarity between marks and the degree of similarity between the goods or services. A greater degree of similarity between the marks may offset a lesser degree of similarity between goods or services. Similarly, registration of a mark may be refused despite a low degree of similarity between the goods or services covered where the marks are very similar and the earlier mark is highly distinctive.

4.      The likely perception of the marks in the minds of the average consumer

The average consumer

·         normally perceives a mark as a whole and does not proceed to analyse its various details.

·         rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect recollection of them he has kept in his mind.

·         level of attention likely to vary according to the category of goods or services in question and cost of the goods.

·         perception will vary according to the methods by which the goods are normally purchased.

5.      The degree of distinctiveness of the earlier mark which may be the result of inherent character or reputation through use. The greater the distinctive character of the earlier mark, the greater the likelihood of confusion between the earlier and application mark. Distinctive character could be inherent or because of reputation with the public. During ex officio examination, the Registrar will only have regard to the inherent distinctive character of the earlier mark. Evidence will he required to show that the earlier mark is particularly distinctive because of its reputation with the public, and this is more appropriate to opposition or invalidation proceedings. Conversely, the more descriptive and less distinctive the earlier mark, the less the likelihood of confusion.

THE JUDGEMENT

This analysis delves into the landmark case of Bacardi & Company Limited vs. Bahety Overseas Private Limited & Ors. The case revolved around trademark infringement and passing off claims brought by Bacardi against Bahety for the use of the mark "FREEZ" and its associated trade dress.

1. Trademark Infringement:

• The court upheld the validity of Bacardi's registered shape mark and wordmark "BREEZER," rejecting Bahety's arguments regarding non-compliance and lack of exclusivity.
• The court found that "FREEZ" and "BREEZER" were phonetically similar, citing precedents, Courts have held to be phonetically similar.

                                i.            “Amritdhara” and “Lakshmandhara”[6]

                              ii.            “Aristoc” and “Rysta”[7]

                            iii.            “Gluvita” and “Glucovita”[8]

• The court also concluded that Bahety's trade dress, including the bottle shape, neck design, and colour scheme, was deceptively similar to Bacardi's.
• The court applied the test of an average consumer's intelligence and imperfect recollection to determine that there was a likelihood of confusion among consumers.

2. Passing Off:

• The court found a likelihood of confusion between the two products due to the similarity in marks and trade dress.
• court held that consumers were likely to associate Bahety's product with Bacardi, potentially leading to passing off.

Bacardi successfully established a prima facie case of trademark infringement and passing off, demonstrating a clear right to the registered marks and a likelihood of infringement. Balance of Convenience The court considered the balance of convenience and found that it favoured Bacardi, as the potential harm to Bacardi's reputation and goodwill outweighed any potential harm to Bahety. Based on the above findings, the court granted an interlocutory injunction restraining Bahety from using the mark "FREEZ" or any other mark deceptively similar to "BREEZER," as well as from using a trade dress that was similar to Bacardi's.

CONCLUSION

From the above judgement it can be summed up that in order to establish an infringement or passing off action Triple Identity Test is important which comprises of:

        i.            Identity or Deceptive Similarity: Is the mark in question identical or deceptively similar to the registered trademark? This involves assessing visual, phonetic, and conceptual similarities between the marks.

      ii.            Field of Activity: Is the field of activity of the owner of the mark in question and the registered trademark owner the same? This considers whether the goods or services associated with the marks are identical, similar, or related.

    iii.            Use Likely to Cause Confusion: Is the owner of the mark in question using it in such a way that it seems the registered mark is being used? This evaluates whether the use of the mark is likely to cause confusion among consumers, leading them to believe there's an association between the marks or goods/services.