Pernod Ricard whisky dispute upheld but with one key exception

Despite the Delhi High Court ruling that Indian Stag is a “clear imitation” of Pernod Ricard’s Indian Royal Stag brand, the former cannot be found to “pass itself off” as the latter due to an export clause.

Pernod Ricard’s Indian Royal Stag whisky, which blends together Indian grain spirits and imported Scotch malts, quickly became one of the most popular spirits within India’s lower price segment when it launched in 1995. It currently retails for around INR600 (£5.79) per bottle.

In 2019, Pernod Ricard filed a trademark complaint against two local manufacturers making a whisky under the name Indian Stag, which the French company said was too similar to Pernod Ricard’s own product and likely to confuse consumers.

That trademark infringement suit has now been upheld, though with one important exception.

This week, Delhi’s High Court maintained that the use of the Stag motif on the bottle has indeed “exacerbated confusion” between Indian Stag and Indian Royal Stag. The court further ruled that the prevalence of the Stag visual on Indian Stag’s whisky label (albeit with notable differences from the stag pictured on Pernod Ricard’s product), combined with the use of the word ‘Stag’, can be found to “clearly indicate imitation”.

As both products are targeting the same consumer segment, the court stated that the possibility of “a consumer of average intelligence and imperfect recollection” confusing the two products “could not be ruled out”.

Export blow

However the court also ruled that there is no possibility of one being passed off as the other, given that Indian Stag is only exported, with no bottles sold in India.

Justice Shankar explained that the evidence required to prove “passing off” is far higher than that needed to show trademark infringement.

In order to find Indian Stag guilty of passing itself off as Pernod’s Indian Royal Stag, the French company would have to prove that consumers in foreign markets are likely to confuse the two products.

The court also made clear that it was upholding a case of “idea infringement” only, because the word ‘Stag’ by itself cannot be regarded as descriptive of an alcoholic beverage.

“Though liquor, consumed in excess, may evoke animalistic tendencies in the imbiber, the word STAG cannot, in any manner of speaking, be regarded as descriptive of alcoholic beverages,” a court document reads.

It’s not the first time that Pernod Ricard has come down on a rival for trademark infringement. In September, db reported that Diageo had come under fire for its Royal Challenge American Pride 2021, which Pernod Ricard India claimed was too close in name to its own Blenders Pride whiskey brand.