Madras High Court Cancels 'Original Choice' Trademark Over Deceptive Similarity to 'Officer’s Choice' Under Sections 9 and 11 of Trade Marks Act

The Madras High Court has delivered a landmark ruling in the long-standing legal battle between two of India’s most prominent spirits companies. A Division Bench comprising Justice G. Jayachandran and Justice Mummineni Sudheer Kumar has set aside an earlier order by the Intellectual Property Appellate Board (IPAB), ruling that the trademark 'ORIGINAL CHOICE', held by M/s. John Distillers Limited (JDL), is deceptively similar to the well-known 'OFFICER’S CHOICE' mark owned by M/s. Allied Blenders and Distillers Private Limited (ABD).

A Bitter Blend of Trademark Disputes

The litigation centers on two major players in the Indian liquor market. ABD, the owner of the popular 'OFFICER’S CHOICE' whisky—tracing its origins to 1988—alleged that JDL’s adoption of the 'ORIGINAL CHOICE' brand in 1995 was a deliberate attempt to piggyback on their established reputation. The dispute reached a point of contention where both companies attempted to have each other’s trademark registrations rectified by the IPAB. When the IPAB dismissed both petitions, the case moved to the High Court, where both parties challenged the tribunal's findings.

The Core of the Confusion

The primary legal question for the High Court was whether the competing marks were deceptively similar and if the adoption of 'ORIGINAL CHOICE' was bona fide. ABD argued that 'OFFICER’S CHOICE', being the market leader, had achieved secondary meaning and was often referred to by consumers as 'OC'. They contended that JDL's subsequent adoption of 'ORIGINAL CHOICE', which notably featured the letters 'OC' in a similar diamond-shaped box, was a dishonest attempt to confuse the average consumer.

JDL defended its position by citing the 'anti-dissection' rule and the fact that the word 'CHOICE' was a common term in the liquor industry, for which a disclaimer was provided during registration. They argued that the two brands had co-existed in the market for nearly three decades without evidence of actual confusion.

The Court’s Legal Analysis

The Court rejected the IPAB’s reasoning, particularly noting its failure to compare the marks in their entirety. The Bench emphasized that the "likelihood of confusion" cannot be tested by placing two labels side-by-side. Instead, the assessment must be made from the perspective of an average consumer with an "imperfect recollection," as per the principles articulated in Parle Products -vs- JP & Co. and the recent Supreme Court judgment in Pernod Ricard India Private Limited v. Karanveer Singh Chhabra .

The Judges highlighted that the IPAB’s decision to ignore the device and label elements in favor of a narrow word-comparison exercise was a "patent error." Relying on the anti-dissection rule, the Court held that the overall commercial impression of the marks must be examined.

Key Observations

The Court underscored the illegitimacy of the respondent's trademark adoption:

> "We are able to clearly and without any doubt find the adoption of the composite mark 'ORIGINAL CHOICE', written in italic with the first letter 'O' and 'C' and the combination of both the letters 'OC' in its label is intentional adoption to mislead the customers who possess average intelligence and ordinary memory."

The Court also addressed the argument of concurrent use: > "Having held that JDL's use of 'ORIGINAL CHOICE' is not a bona fide and honest, the mark is liable to be rectified. It cannot coexist to the detrimental of the lawful proprietor of 'OFFICER’S CHOICE'."

Final Verdict and Implications

Allowing the Writ Petition of ABD (W.P. No. 19734 of 2013), the Madras High Court ordered the rectification of the register, effectively canceling the 'ORIGINAL CHOICE' trademark registration. Conversely, JDL’s petition (W.P. No. 25296 of 2013) was dismissed.

This judgment serves as a stern reminder to trademark applicants that long-term market existence—if rooted in dishonest adoption—does not grant immunity from rectification. By prioritizing the "average consumer’s" perspective over technical disclaimers, the Court has reinforced the protective shield around established intellectual property rights in the Indian market.