FREEZ held to be phonetically similar to BREEZER

Bacardi and Company Limited (Bacardi), the manufacturer of alcoholic beverages and registered proprietor of the trademark BREEZER has filed a suit before the Delhi High Court alleging trademark infringement and passing off. Bacardi is aggrieved by Bahety Overseas Private Limited, (Bahety) adoption and use of the mark FREEZMix concerning non-alcoholic beverages.

Bacardi in the suit contended:

1. They are the registered proprietor of the mark BREEZER in classes 32 and 33. They have also registered the shape of the bottle as a shape mark and is being used since the year 2003.
2. Though changes have been made to the way the mark BREEZER is depicted on the bottles over the years, they continue to retain goodwill in the mark, and it is solely associated with them.
3. In the year 2015, Bahety’s application for registration of the mark FREEZ in classes 32 and 33 were refused by the Trademark Registry, New Delhi.
4. In October 2020, Bahety obtained registration for the mark FREEZMIX in class 32 from the Trademark Registry, Ahmedabad.
5. The warning letter sent by them was not acted upon by Bahety and they declined to cease use of the mark which resulted in the filing of the suit.
6. Bahety is using the mark FREEZMix in a manner that infringes Bacardi’s rights in the registered mark ‘BREEZER’ word as well as the shape of the bottle. The word ‘mix’ in the label is in insignificant small letters, as compared to the main word ‘FREEZ’, which is practically non-discernible to an average customer viewing the product.
7. Bahety’s obtaining registration for the mark FREEZMix from the Trademark Registry, Ahmedabad, further to the refusal of their application for the mark FREEZ by the Delhi Trademark Registry evidence their lack of bonafide.

Bahety filed written submissions contending: 

1. Bacardi has not complied with specific requirements for registering the shape of the bottle. A shape could be registered as a trademark only under the category of ‘three-dimensional trademarks’ and such application would have to contain a specific recital to the effect that the mark was a three-dimensional trademark.
2. There is no visual similarity between BREEZER and FREEZMix when the labels are compared as a whole.
3. Bacardi cannot monopolize the shape of its bottle, as it is common to the trade. Consumers rarely associate a product with its shape, and it is only in combination with the label on the bottle that it acquired distinctiveness.
4. Products and target customers differ as Bacardi deals with alcoholic beverages whereas, Bahety deals with non-alcoholic beverages.

Court’s findings

• The argument that Bacardi’s shape mark ought not to have been registered for non-compliance of the requirements concerning a three-dimensional mark will not succeed as there are no pleadings to that effect. Bahety has neither filed a written statement nor replied to the injunction application. Despite being aware of Bacardi’s mark and its registration, Bahety has not chosen to apply for cancellation or revocation of the registration.
• The contention that Bacardi cannot claim exclusivity over the shape of its bottle is misconceived in the absence of specific pleadings. The ‘shape mark’ relating to the bottle, as well as the ‘BREEZER’ wordmark being registered, is deemed to be prima facie valid and Bacardi is entitled to the exclusivity of its registered marks.
• When comparing the rival marks, FREEZMIX may not be phonetically similar to ‘BREEZER’. That said, the word ‘FREEZMIX’ as it appears on the label is written in a manner that the suffix ‘mix’ is in insignificant small letters, as compared to ‘FREEZ’. Though Bahety’s registration is for the word mark ‘FREEZMIX’, what is shown to the public is the word ‘FREEZ’ with the suffix ‘mix’ in such small letters that it is hardly noticed. The existence of the suffix ‘mix’ cannot be a basis to hold that the public is not likely to be confused between the rival products. The similarity in lettering between Freez and the erstwhile Breezer mark cannot be disputed. Moreover, ‘FREEZ’ and ‘BREEZER’ are also phonetically similar with ‘er’ being, the minor syllable. The argument that rival products and target customers differ will not suffice. The nature of the goods is similar considering both are beverages. Further, it is common knowledge that ‘BREEZER’ product is often sold at retail outlets which also supply non-alcoholic beverages.

In light of the above, the court held that Bacardi has made out a prima facie case and the balance of convenience is in their favour. The Court, thus, allowed the injunction application and restrained Bahety from using the mark FREEZ or any other mark deceptively similar to BREEZER till the disposal of the suit.