How Collector's Choice Deceptively Similar to Officer's Choice

Plaintiff is the registered proprietor of the trademark 'Officer's Choice'. The mark has been used by the plaintiff since 1988 and the plaintiff obtained registration in 2007. In 2013, the plaintiff found out that the defendant had started selling whiskey under the trademark 'Collector's Choice'. In order to restrain the defendant from infringing on its mark, the plaintiff filed a suit for permanent injunction. The court upheld the plaintiff’s arguments and extended the ex parte interim injunction till final decision. The court relied on consumer psychology and associative thinking in order to come to the conclusion that a 'Collector' could be confused with an 'Officer'.The defendant had been using the mark Collector's Choice with respect to whiskey and had filed an application for registration in 2011. The defendant was aware of the plaintiff's mark as they cited the plaintiff's mark in an answer to an objection.

Moreover, by using the mark 'Collector's Choice', it is not the case of the defendant that its product is a 'collector's item' instead, the defendant admitted that a Collector is an Officer. Hence the plaintiff argued that the defendant dishonestly used a mark similar to its mark. The defendant contended that the word 'Choice' was disclaimed by the plaintiff i.e. the plaintiff did not have any monopoly over the word 'Choice'. Since 'Collector' and 'Officer' are not phonetically or visually similar and the only common word is 'Choice', the marks are not deceptively similar. The court upheld the arguments of the plaintiff and held that Officer's Choice and Collector's Choice could lead to a likelihood of confusion among consumers. In coming to its conclusion, the court relied on its decision in the 'Old Monk' v. 'Told Mom' trademark case, where it was held that the two marks were deceptively similar.

The court prima facie concluded that a consumer is likely to associate a 'Collector' with an 'Officer' and the possibility of the plaintiff's trademark "Officer's Choice" being remembered/recalled as "Collector's Choice" cannot be ruled out. Since a Collector is the highest authority in a district, this may also lead consumers to believe that Collector's Choice is a superior product of the same manufacturer of Officer's Choice. The court extended the ex parte interim injunction obtained by the plaintiff in 2013 till the suit is finally decided. The balance of convenience was in favor of the plaintiff as it had been in the trade for a long time, with large sales figures and had established a reputation in the market.

However, the defendant was a new entrant to the market, who had hardly used its mark and had not yet built any goodwill. Therefore, the loss to the plaintiff by allowing the defendant to use the mark during the pendency of the suit would be irreparable and hence the injunction was extended.