Sanjay Kishan Kaul and T.S. Sivagnanam, JJ.

Challenge in this Writ Petition is to an order passed by the Intellectual Property Appellate Board (IPAB), dated 24.12.2010, in ORA/248/08/TM/CH, an application filed by the fourth respondent under the Trade Marks Act, 1999 ("the Act") for removal of the petitioner's trade mark 'Rhizome's IMPERIAL GOLD' registered under No.1161682 in class 33, from the Register of Trade Marks. The IPAB allowed the application filed by the fourth respondent and ordered for the removal of the said trade mark from the register. The petitioner challenged the order by filing this Writ Petition. A Division Bench of this Court by order dated 16.02.2012, allowed the Writ Petition and set aside the order passed by the IPAB holding that the grounds embodied under Sections 9 and 11 of the Act, are available to the persons only at the time when they raise objection for registering the trade mark and the said principles cannot be applied for rectification of the registration, particularly considering the factum that another company M/s. Liquor India Pvt., Ltd., withdrew their objections and allowed the petitioner to use the Trade Mark.

2. The fourth respondent preferred an appeal to the Hon'ble Supreme Court in Civil Appeal No.8420 of 2014. The Hon'ble Supreme Court by order dated 02.09.2014, allowed the appeal, set aside the order dated 16.02.2012 and restored this Writ Petition to the file of this Court for fresh hearing and disposal. All contentions were left open to be agitated before this Court. The Hon'ble Supreme Court pointed out although the Division Bench of this Court did consider the matter with reference to Section 11 of the Act and observed that if the impugned trade mark of the petitioner herein is seen as a whole with the trade mark of the fourth respondent herein without making any dissection or splitting up the word into several words, it would not cause any confusion in the minds of the purchasers, held that in the light of the flawed application of the two aspects pertaining to Sections 9 and 11 of the Act, it is difficult to visualise what would have been the ultimate conclusion of this Court, if the above aspects had not been taken into consideration. Thus, pursuant to the order passed by the Hon'ble Supreme Court, the Writ Petition is before us for being heard and disposed of afresh.

3. The fourth respondent, a company incorporated under the laws of France, engaged in the business of manufacturing and/or distribution of Wines, Liqueurs and Spirits with their presence in many countries; apart from the International branch, through its subsidiaries own local branch such as 'IMPERIAL BLUE' and 'Royal Stag' of which 'IMPERIAL BLUE' is the subject matter of controversy. In order to accord statutory protection to its trade mark 'IMPERIAL BLUE', the fourth respondent obtained registration of the mark in countries including Benelux and Nepal on 12.02.1997 and 27.07.1999, respectively. That apart, the fourth respondent has obtained registration for the trade mark IMPERIAL RED in class 32 and IMPERIAL BLUE in classes 9, 32 & 33. Elaborating on the reputation acquired and enjoyed by the trade mark IMPERIAL BLUE, the fourth respondent states that the said trade mark falls in the category of "well known" trade marks and requires protection of wider extent and beyond limitation or constriction of category of goods or services; they would further state that the goodwill and reputation that vest with the trade mark IMPERIAL BLUE is a creation of years of huge financial investments, pain staking quality control improvements and blender skills etc. The fourth respondent moved the IPAB stating that during the end of October 2007, they came across the trade mark registration applications filed by the petitioner for registration of their trade marks Rhizome's IMPERIAL WHITE, Rhizome's IMPERIAL RED, Rhizome's IMPERIAL GREEN, which were advertised in the trade mark journal dated 16.07.2007 and published by th