Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2012 Supreme(Mad) 839

High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE ELIPE DHARMA RAO & THE HONOURABLE MR. JUSTICE R. SUBBIAH
Rhizome Distilleries Pvt. Ltd.
Versus
Union of India, rep. by its Secretary, Department of Industrial Policy & Promotion, Ministry of Industry & Commerce, Government of India, Udyog Bhavan, New Delhi & Others
Writ Petition No.8681 of 2011
Decided On : 16-02-2012

Advocates Appeared:
For the Petitioner:AR.L. Sundaresan, Senior Counsel for M/s. G.M.S. Law Associates, Advocate.
For the Respondents:R1 to R3- C.V. Ramachandra Murthy, R4- Hemant Singh for A.A. Mohan, Advocates.

Ratios
a. Grounds embodied under sections 9 and 11 of the Trade Marks Act, 1999 are available to the persons only at the time when they raise objection for registering the trade mark and not when rectification is sought for.
b. A trade mark should not be dissected or split into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion.

Headnote:(A)Trade Marks Act, 1999(47 of 1999)- Sec.9, 11, 57-Trade mark-Similarity-Rectification-Common word-Imperial-Petitioner had already got registered its trade mark “Rhizome’s Imperial Gold” for its liquor and later sought for rectification-At that stage, the respondent had sought for cancellation of the trademark by contending that it was already owning trade mark “Imperial blue” for its liquor and it had created goodwill for the word ‘Imperial” and its usage by the petitioner amounted to violation of its right-When the Tribunal had accepted the stand of the respondent, petitioner challenged the decision by filing writ petition-Parties stood by their stands-Held, to ascertain the distinctness of a trade mark or the violation of one’s right, the trade mark should not be divided into parts and the words compared-Entire trademark had to be taken together and the Tribunal had to decide the likely violation and confusion-When read together, the trade mark “Rhizome’s Imperial Gold” was entirely different from “Imperial blue” and there could not be any confusion with the users-Further, objection to any trade mark could be raised only at the time of its registration and not when rectification was sought for-Writ petition was allowed and the order of the Tribunal was set aside.
       (B)Trade Marks Act, 1999(47 of 1999)- Sec.9, 11-Trade mark-Similarity-Common word-Comparison- A trade mark should not be dissected or split into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion.
       A reading of the said judgment would show that the conflicting composition marks must be compared in their entireties. A mark should not be dissected or split into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. Undoubtedly, the word ‘IMPERIAL’ is a common and universal word. As observed earlier, nobody can have an exclusive right over the said word. If the trade mark of the petitioner looked as a whole, namely, ‘RHIZOME’S IMPERIAL GOLD’, with the trade mark of the 4th petitioner ‘IMPERIAL BLUE without making any dissection or splitting up the word into several words, in our opinion, it would not cause any confusion in the minds of the purchasers. Para 21
       (C)Trade Marks Act, 1999(47 of 1999)- Sec.9, 11, 57-Trade mark-Similarity-Rectification-Objections-Grounds embodied under sections 9 and 11 of the Trade Marks Act, 1999 are available to the persons only at the time when they raise objection for registering the trade mark and not when rectification is sought for.
       Further, in our considered opinion, the grounds embodied under sections 9 and 11 are available to the persons only at the time when they raise objection for registering the trade mark. The said principles cannot be applied for rectification of the registration, particularly considering the factum that the Liquor India Private Limited has withdrawn their objections before the Commissioner on 14.03.2006 and allowed the petitioner to carry on the business under the name of RHIZOME IMPERIAL GOLD. Para 23

Judgment :-

R. SUBBIAH, J.

1. This writ petition has been filed to quash the order dated 24.12.2010 passed by the 2nd respondent/ Intellectual Property Appellate Board, directing the 3rd respondent, the Registrar of Trade Marks, to remove the writ petitioner's trade mark 'IMPERIAL GOLD', registered under No.116168 in Class 33 from the Register of Trade Marks, in the application filed by the 4th respondent herein under sections 11(1), 11(3), 11(10), 18 and 57 of the Trade Marks Act, 1999 and Rule 2 of the Trade Marks (Applications and Appeals to the Intellectual Property Appellate Board) Rules, 2003.

2. The brief facts, which are culled out from the materials available on record to decide the issue involved in the writ petition are as follows:

The 4th respondent is a company incorporated under the laws of France, having their registered office at Paris, France and they are the ultimate holding company of various entities, all engaged in the business of manufacturing and/or distribution of wines, liquors and spirits. The 4th respondent company features as one of the two leading players of the world in the spirits and wine market and is number one player outside United States of America. The said holding company by itself and through its subsidiaries is engaged in the business of manufacturing and marketing of a variety of alcoholic beverages worldwide and their products - whiskies, liquors and other spirits are sold in various internationally renowned and acclaimed brands such as 'ROYAL SALUTE', 'CHIVAS REGAL', 100 PIPERS' etc. Apart from these brands, the 4th respondent, through its subsidiaries, owns locally acclaimed brands such as 'IMPERIAL BLUE' and 'ROYAL STAG'.

3. While so, the 4th respondent filed an application before the 2nd respondent Intellectual Property Appellate Board for removal/rectification of the petitioner's trade mark 'Rhizome's IMPERIAL GOLD', stating that they are the registered proprietors of the trade mark 'IMPERIAL BLUE', which is registered in India since 1997 and is a coined mark having highest degree of inherent distinctiveness in relation to alcoholic beverages. On account of long and continuous usage since 1997, extensive marketing and sale compaign through all India distribution network, enormous sale and painstaking quality control, the whisky sold under the trade mark 'IMPERIAL BLUE' has acquired enviable goodwill and reputation amongst the members of trade and public at large and acquired status of a 'well known brand' which signifies, connotes and denotes the whisky originating from the 4th respondent exclusively.

4. It is the further case of the 4th respondent that during the month of October, 2007, the 4th respondent came to know the trade mark registration applications filed by the writ petitioner for registration of trade marks 'RHIZOME'S IMPERIAL

WHITE' (No.1374617), 'RHIZOME'S IMPERIAL RED' (No.1374616) and 'RHIZOME'S IMPERIAL GREEN' (No.1374618), all advertised together in Trade Marks Journal No.1372 (Regular) dated 16th July, 2007, which was made public by the 3rd respondent on 18.10.2007. All these applications were opposed by the 4th respondent vide applications dated 15.02.2008. Before filing the notice of opposition, the 4th respondent made best efforts through its marketing network and sales representatives to find out from the liquor market in India whether any alcoholic beverages are available for sale and found that no such goods are available for sale. While so, on 16.02.2008, the 4th respondent came across yet another application for registration of the trade mark 'Rhizome's IMPERIAL GOLD' whisky label vide trade mark application No.1454195 advertised in the Trade Mark Journal and the same was also opposed by the 4th respondent's wholly owned Indian subsidiary Austin Nichols and Company. The goods of the writ petitioner were seen in the market only in the second week of August, 2008. The 4th respondent obtained a sample of the said bottle from Hyderabad and to the shock of

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2012 Supreme(Mad) 839

Cases Referred (3)