India – A Toast To Trademark Justice: Radico Khaitan Secures Victory In IP Showdown.
In today’s globalised economy, the protection of intellectual property (IP) has become an essential aspect of business strategy, especially in alcoholic beverages industry, where brand identity and packaging play a significant role in consumer choice. The decision of the Delhi High Court in the case of Radico Khaitan Ltd. vs M/S Raina Beverages & Ors. on September 26, 2024, is a significant example of a brand successfully defending its trademark and trade dress against infringement. The case revolves around the Magic Moments Remix brand and highlights the importance of safeguarding intellectual property and the role of courts in providing effective remedies.
Background
The plaintiff- Radico Khaitan Ltd. is a leading Indian manufacturer of Indian Made Foreign Liquor (IMFL) and has been a key player in the liquor industry since 1943. Magic Moments is one of its most well-known brands, including a range of gin and vodka products. The plaintiff supplies alcoholic beverages under its registered trademarks all over India and exports them to several countries, including the USA, UAE, Sierra Leone, Nigeria, Tanzania, etc. Over the years, the plaintiff expanded this brand by launching flavoured variants under the sub-brand Magic Moments Remix in 2008, characterised by its unique packaging design, including dancing figures on the bottles.
The plaintiff’s trademark for Magic Moments Remix is well-established and recognised, particularly in its market segment. However, in 2016, the plaintiff discovered that the defendants, M/S Raina Beverages and its affiliates, were marketing alcoholic beverages with packaging similar to that of Magic Moments Remix, including the use of deceptively similar bottle designs, colour schemes and artistic representations.
This led the plaintiff to file a case to protect its trademark, copyright, and trade dress from infringement. The plaintiff argued that the defendants were passing off their products as those of the plaintiff, misleading consumers and harming its brand.
Initial Proceedings and Interim Relief
On May 11, 2016, the Delhi High Court granted an ex parte ad interim injunction in favour of Radico Khaitan, restraining the defendants from continuing their infringing activities. The court appointed a Local Commissioner to visit the defendants’ premises and seize infringing products.
Despite these actions, mediation efforts between the parties failed, and the case proceeded through the courts. Over the next several years, the defendant’s conduct during the legal process reflected a pattern of non-cooperation. They failed to file written statements within the required timelines, and by August 2022, they had stopped appearing in court altogether. As a result, the court proceeded ex parte, allowing the plaintiff’s evidence to be presented without challenge from the defendants.
Radico Khaitan’s Case
The plaintiff presented compelling evidence of trademark infringement and demonstrated that it had registered trademarks for Magic Moments Remix and held copyrights over the artistic designs used on its bottles. The plaintiff argued that the defendants’ products, which were being exported to Nigeria under the name “Confirmed Sexy Vodka,” featured packaging that closely imitated Magic Moments Remix.
The court was provided with a detailed comparison of the bottle designs, which highlighted numerous similarities between the two products. These included:
- The use of dancing figures on both sets of bottles.
- Identical colour schemes and bottle shapes.
- Similar placement of logos and labels, including the use of parallel dotted lines around the word marks.
The plaintiff argued that these similarities were not coincidental but rather a deliberate attempt by the defendants to capitalise on the reputation and goodwill of Magic Moments Remix. The defendants’ actions amounted to infringement of copyright and passing off, causing confusion among consumers.
The Court’s Findings
After reviewing the evidence, the Delhi High Court ruled in favour of Radico Khaitan. The Court concluded that the plaintiff had successfully established its rights over the Magic Moments Remixtrademark and trade dress, including the copyrighted artistic work on its bottles. The court found that the defendants had infringed on these rights using deceptively similar product designs.
The court noted that the trade dress of Magic Moments Remix, which includes distinct colour combinations and dancing figures, had been in use since 2008 and was registered in the plaintiff’s name. The Court acknowledged the significant goodwill and reputation that the plaintiff had built for its brand in India and internationally.
Additionally, the Court observed that the defendants had deliberately copied the plaintiff’s packaging design with only minor variations without any plausible explanation. The Court rejected any notion that the similarities were coincidental and instead characterised the defendants’ actions as a deliberate attempt to deceive consumers and unfairly benefit from the plaintiff’s established market presence.
Relief Granted
Considering the evidence presented by the plaintiff, the Court granted a permanent injunction against the defendants, preventing them from continuing their infringing activities. The Court also ordered the deliveryof all infringing products seized by the Local Commissioner during the case.
Additionally, the Court awarded punitive damages and costs to Radico Khaitan. Citing a previous case, Hindustan Lever Ltd. v. Satish Kumar, the Court emphasised that punitive damages are appropriate in cases where the defendant has acted in bad faith and failed to defend himself. The defendants in this case demonstrated a blatant disregard for the legal process, failing to appear in Court or contest the claims made against them. As a result, the Court awarded Rs. 10,00,000 in damages and costs to Radico Khaitan.
