Background of the Dispute

The case involves a dispute over the use of the trademark "SWING" for energy drinks. Hector Beverages Private Limited (Hector), claimed that they have been using the mark "SWING" since 2017 for juices and have acquired significant goodwill. They filed a suit against DS Drinks and Beverages Private Limited (DS Drinks) for using a similar mark "CATCH SWING ENERGY INVIGORATES & MIND for energy drink.

The legal tussle began when Hector, the company behind popular beverage brands like Paper Boat and Tzinga, filed a suit before the Commercial District Court in Delhi. They claim that DS Drinks’ use of the word “SWING” in their product branding was deceptively similar to their own registered trademarks and could mislead consumers.

The District Court granted an interim injunction in favour of Hector restraining DS Drinks from using the mark "SWING" for their products. Challenging this decision, DS Drinks took the matter to the Division Bench (a two-judge bench) of the Delhi High Court. The case note discusses the contentions of the parties and the Court ruling. 

Plaintiff’s Case:

Hector Beverages argued that they have been active in the food and beverage sector since 2009, and own multiple trademarks, including TZINGA, PAPERBOAT, SWING, and SWING FIZZ. They asserted that:

  • The mark "SWING" was initially a product variant under the Paper Boat label but has since carved out its own identity and goodwill in the market.
  • They possess valid and subsisting registrations, including for  and PAPER BOAT SWING JUICIER DRINK in Class 32.
  • DS Drinks mark, "CATCH SWING ENERGY INVIGORATES & MIND," incorporates the word "SWING" in its entirety, which could confuse consumers as both parties deal in similar or allied products.
  • Hector Beverages contended that even though the products in question (energy drinks and juices) are different, they are allied products available across the same counter, and thus, the use of the same mark for both products could cause confusion.

Defendant’s Response: No Likelihood of Confusion

DS Drinks contested the injunction, arguing that:

  • Their mark, “CATCH SWING ENERGY INVIGORATES & MIND,” was visually and structurally different from the plaintiff’s mark “PAPERBOAT SWING.”
  • The plaintiff’s energy drink is sold under the brand “TZINGA,” not “SWING,” and thus there is no overlap in branding that could confuse consumers.
  • The trial court had erred in treating "SWING" as the dominant element of the plaintiff’s mark, especially in the absence of specific pleadings to that effect.

Appeal and High Court’s Findings

The High Court observed:

  • Hector had specifically pleaded the significance of "SWING" in the plaint.
  • Although composite marks are typically considered as a whole, exceptions exist when a particular element stands out and functions as a sub-brand. The Court observed "PAPERBOAT" appears to be the family mark while "SWING" is the sub-mark, equally important to identify the product with its source. 
  • In this case, "SWING" was found to be a distinctive and dominant feature, contributing to consumer recognition independent of the "PAPERBOAT" house mark.
  • Both products—energy drinks and juices—are allied goods that commonly appear on the same retail shelves, increasing the likelihood of confusion.

Accordingly, the High Court found no error in the trial court's decision and dismissed the appeal filed by DS Drinks.

Comment

The ruling reaffirms that while a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does not condone infringement where less than the entire trademark is appropriated. It is therefore not improper to identify elements or features of the marks that are more or less important for purpose of analysis in cases of composite marks.