A new whisky called “Collector’s Choice” tried to stand against the market-leading “Officer’s Choice” — and lost. The lesson: a shared word, plus a newcomer with no goodwill to lose, tips the balance toward injunction. But precedents don’t decide every case.
The dispute
The plaintiff sought a permanent injunction to stop the defendant selling, distributing or advertising alcoholic beverages under “Collector’s Choice,” or any mark deceptively similar to its “Officer’s Choice.” The issue: were the marks similar, and was there confusion or likelihood of association? (Section 2(h), Trade Marks Act 1999, on deceptive similarity.)
The arguments
Plaintiff: “Officer’s Choice” had become the world’s largest whisky brand and third-largest spirit brand globally. “Collector’s Choice” lacked distinctive character, and using “Choice” took undue advantage of the similarity, misleading consumers into thinking the defendant’s goods were the plaintiff’s.
Defendant: examiners had previously accepted similar marks, making such usage customary; it cited a precedent where “Officer’s Choice” and “Original Choice” were held dissimilar despite sharing the acronym OC; and it argued its mark was visually and phonetically different.
The ruling
The court found the defendant’s use was neither long-standing nor high-volume, while the plaintiff’s losses would be irreparable. As a new entrant with minimal usage and no established goodwill, the defendant would suffer no loss from an injunction. It was restrained from using marks similar to “Officer’s Choice.”
The wider lesson
“Never take judgments for granted.” The defendant leaned on a precedent (Officer’s Choice vs Original Choice), but each case turns on its own merits — the balance of goodwill, usage and irreparable harm differed here. A favourable precedent is a starting point, not a guarantee.
The takeaways
- A shared word can still deceive — “Choice” against a dominant brand was enough here.
- A newcomer’s lack of goodwill cuts against it — little to lose from an injunction, much for the leader to lose.
- Precedents don’t self-apply — similar past cases don’t bind a court on different facts.
- Balance of convenience and irreparable harm are central to interim relief.
Frequently asked questions
Can a shared word between two marks cause infringement? It can — “Collector’s Choice” was restrained against “Officer’s Choice” partly on the shared word “Choice” and the likelihood of confusion, judged on the facts.
Why did the new entrant lose? It had minimal usage and no established goodwill, so it stood to lose little from an injunction, while the market leader faced irreparable harm.
Do favourable precedents guarantee a similar result? No — each case is decided on its own merits; a precedent like Officer’s Choice vs Original Choice doesn’t bind a court on different facts.
What is deceptive similarity? Under Section 2(h), a mark so nearly resembling another as to be likely to deceive or cause confusion.
Legislation referred to
- The Trade Marks Act, 1999