(Prayer: Writ Petition filed under Article 226 of the Constitution of India, praying for the issuance of a writ of Certiorarified Mandamus to call for the records pertaining to the order of the second respondent dated 24.12.2010, made in ORA/248/08/TM/CH and to quash the same and to direct the third respondent not to cancel/re-enter trademark registration no.1161682 in class 33 for the trademark 'IMPERIAL GOLD' from/in the Register of Trademarks, and to pass such further.)
T.S. Sivagnanam, J.
1. 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 visualize 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 and 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 the Registrar of Trade Marks as of 18.10.2007. The fourth respondent opposed all the three applications filed by the petitioner, prior to which they are stated to have conducted a market survey, and those three applications are pending. That on 16.02.2008, the fourth respondent is stated to have come across another application for registration filed by the petitioner for the trade mark Rhizome's IMPERIAL GOLD advertised in the Trade Mark Journal, dated 16.02.2008, which was made public on the same date. The fourth respondent's wholly owned Indian subsidiary filed a notice of opposition before the Registrar of Trade Marks on 16.06.2008. Further that they came to know that the goods were seen in the market only in the second week of August 2008 bearing the label mark Rhizome's IMPERIAL GOLD and when they obtained a sample bottle from Hyderabad, they found, the petitioner has not only copied the over all colour combination and get up of the fourth respondent wholly owned Indian subsidiary company's trade mark Royal Stag label and trade dress and even had used Royal Stag bottle for sale of Rhizome's IMPERIAL GOLD WHISKY.
4. In the counter statement filed by the petitioner to the notice of opposition, the petitioner stated that they are registered proprietor of the trade mark Rhizome's IMPERIAL GOLD in class 33. According to the fourth respondent this registration has been obtained by committing fraud upon the Registrar of Trade Marks. Thus, the fourth respondent being aggrieved by the trade mark, filed the petition for rectification. At the relevant time, the fourth respondent stated that they are taking steps to file a suit for permanent injunction against the petitioner for infringement of their trade mark, copy right, acts of passing of and unfair competition, dilution, damages/rendition of accounts etc.
5. The grounds on which rectification of the trade mark was sought are:
(i) that the fourth respondent being the registered proprietor of the trade mark IMPERIAL BLUE ?, a coined mark having registered in 1997 and being a 'well known mark' needs to be protected;
(ii) that use of any other mark, which is identical to or deceptively similar to the fourth respondent's mark 'IMPERIAL BLUE' will create confusion amongst the public and the fourth respondent has obtained registration of the trade mark 'IMPERIAL RED' in class 32 and hence use of trade mark IMPERIAL in conjunction with any mark signifying colour may lead to confusion or deception in the minds of consumers leading to passing of such unauthorised products for those originating from the fourth respondent;
(iii) that the trade mark registration applications filed by the petitioner for registration of the trade marks Rhizome's IMPERIAL WHITE, Rhizome's IMPERIAL RED, and Rhizome's IMPERIAL GREEN have been opposed while the opposition petitions were pending, the petitioner committed fraud upon the Registrar of Trade Marks by obtaining a deceptively similar trade mark for identical goods;
(iv) that the petitioner have not only copied the over all colour combination and get up of Royal Stag Label and trade dress, but also used Royal Stag bottle of the fourth respondent wholly owned subsidiary;
(v) that the adoption of the trade mark Rhizome's IMPERIAL GOLD by the petitioner is dishonest as there is no plausible justification whatsoever for the use of the said trade mark.
(vi) The consumers, who are familiar with IMPERIAL BLUE could associate IMPERIAL GOLD of the petitioner on account of various factors and such deceptively similar mark ought to be cancelled and removed from the Register of Trade Marks, as the same is in violation of Section 11(1) of the Act and consequently, the impugned mark is liable to be removed for contraventions of Sections 11(1), 11(3), 11(10), 18 and 57 of the Act.
6. The petitioner resisted the application by raising preliminary objection as well as objections on merits. The petitioner stated that the fourth respondent is not a person aggrieved and therefore, cannot file a petition under Section 57 of the Act; the trade marks in question are distinct from each other and there can be no confusion; the petitioner's trade mark IMPERIAL GOLD by the addition of the prefix 'Rhizome's' clearly distinguishes their mark; the word 'IMPERIAL' is a laudatory word which cannot be monopolised and the words 'IMPERIAL' or 'Royal' are commonly used in liquor industry by various manufacturers. Therefore, the fourth respondent cannot challenge the petitioner's right over the mark ' Rhizome's IMPERIAL GOLD'. The petition for rectification is barred by delay and latches as the fourth respondent was aware of the petitioner's presence since 2006.
7. While denying the other allegations made in the application for rectification, it was submitted that the word 'IMPERIAL' is common to trade and cannot be monopolised by a single entity to the exclusion of all others. That the petitioners have coined the term ' Rhizome's IMPERIAL GOLD', there is no dishonesty in such adoption, as it being a composite mark. That the petitioner's trade mark is 'Rhizome's IMPERIAL GOLD' and not 'IMPERIAL GOLD' and there is no question of misrepresentation. That the petitioner has registered not only the trade mark 'Rhizome's IMPERIAL GOLD', but possess a registration for the trade mark Rhizome's in class 33, dated 04.12.2009. Broadly on the above grounds, the petitioner prayed for rejection of the application for rectification.
8. The fourth respondent moved the High Court of Delhi for a decree of permanent injunction to restrain the petitioner from infringing the registered trade mark, copy right, passing of etc. The learned Single Judge by a detailed order rendered a finding that the petitioners are guilty of passing off and restrained the petitioners from manufacturing, selling with a trade mark/label/trade dress as may be deceptively similar to the trade mark of the fourth respondent namely, IMPERIAL BLUE, IMPERIAL RED, or Royal Stag. The petitioner preferred an appeal before the Division Bench challenging the said order and the Division Bench first considered the contention regarding the trade dress, Royal Stag and Rhizome's IMPERIAL BLUE and held that the similarities of both labels are such that a customer of modicum memory and mental capacity would become confused in distinguishing between them. The petitioner conceded to the point, though at an initial stage, without prejudice offered to change the label as well as the shape of the bottle. Accordingly, the same was done and the Division Bench of the High Court of Delhi recorded its satisfaction and held that upon change of label and bottle, the petitioner can no longer be accused of passing of.
9. With regard to the exclusive right claimed by the fourth respondent in respect of the word 'IMPERIAL', the Division Bench pointed out that no exclusive or proprietary rights can be claimed by either of the parties in respect of the word 'IMPERIAL', which is in common parlance and also is laudatory in nature as it alludes to royalty or grandeur. Further, it was pointed out that 'IMPERIAL' can mean only royalty and royalty and grandeur are one of the sentiments resulting from imbibing spirits and therefore, 'IMPERIAL' may justifiably be seen as descriptive.
10. The earlier observations with regard to the similarity of label/trade dress was reiterated and the subsequent changes agreed by the petitioner was taken note of and by way of interim arrangement, the petitioner was permitted to market its product as per the label approved by the Division Bench and the type of the bottle to be used. The Division Bench further observed that the views in their judgment are prime facie in nature and ought not to have conclusively influence the final decision of any Court or the IPAB or Register. Against the order, the fourth respondent preferred a Special Leave Petition before the Hon'ble Supreme Court in Special Leave to Appeal (Civil) Nos.34070 to 34072 of 2009. The Hon'ble Supreme Court by order dated 04.01.2010, dismissed the Special Leave Petitions refusing to exercise its discretionary jurisdiction under Article 136 of the Constitution of India as the impugned orders of the Division Bench of the High Court of Delhi are only interlocutory orders.
11. On the given facts, the IPAB considered the preliminary objection as to whether the fourth respondent was a person aggrieved and whether they could maintain an application for rectification and held that the fourth respondent being a person engaged in the same trade as the registered proprietor and who is likely to be injured or harassed in its trade by registration complained of, is a person aggrieved. Thus, the fourth respondent was held to have locus standi to file and maintain an application for rectification.
12. The next issue taken up for consideration was whether the registration of the petitioner's trade mark was in contravention of the provisions of Section 11 of the Act. The IPAB pointed out that the petitioner had adopted the trade mark only in 2002, but launch of the product bearing the impugned trade mark was during the year 2006 and on the date of the application of the petitioner for registration i.e., in 2002, the fourth respondent's mark was already put to use and there is likelihood of confusion and deception, consequently the impugned registered trade mark of the petitioner is in contravention of Section 11 of the Act. Further, the IPAB pointed out that the fourth respondent have claimed usage of their trade mark 'IMPERIAL BLUE' since 1997, whereas the petitioner claim to have used the impugned trade mark since 2002 and have not disputed the fourth respondent use since 1997 and on facts found that the fourth respondent are prior in adoption and use of the trade mark and the use of their trade mark is to be protected. With regard to the word 'IMPERIAL' while considering the petitioner's submission that it is a common word and it is laudatory, it was observed that the petitioners themselves cannot have a statutory right over the word 'IMPERIAL'. The contention raised by the petitioner that the application for rectification is barred by delay and latches was also rejected by the IPAB holding that there was no delay and even if there was a delay, there was no damage caused to the petitioner as there was no pleading or evidence to the said effect. Thus, the IPAB by the impugned order directed removal of the trade mark of the petitioner bearing Registration No.1161682, in class 33, from the Register of Trade Marks.
13. The learned Senior counsel appearing for the petitioner and the learned counsel for the fourth respondent elaborately referred to the factual details, took us through the documents placed before the IPAB as well as the decision of the Division Bench of the High Court of Delhi. The preliminary objections raised before the IPAB were reiterated by the petitioner.
14. The matter was heard in part on 10.06.2015. On the next date i.e., 16.06.2015, we continued the hearing and during the course of hearing, the learned counsels on either side crystallised the point/s, they seek to canvass which was recorded in our dated 16.06.2015.
15. The learned counsel for the fourth respondent sought to canvass the sole point that the fourth respondent has the exclusive right to use of combination of IMPERIAL with the word which describes the colour either as a prefix or suffix or atleast as suffix i.e., IMPERIAL-GOLD, IMPERIAL-RED, IMPERIAL-PINK or GOLD IMPERIAL, BLACK IMPERIAL etc. It was conceded that the fourth respondent is not claiming any exclusivity in the use of the word 'IMPERIAL' or descriptive of any colour separately, but it is the combination of both, over which they claims exclusive rights, as the essential and descriptive feature of the mark.
16. In the light of the concession made on behalf of the fourth respondent, the scope of contest became narrower, that there cannot be such exclusivity and the only right the fourth respondent can have is in IMPERIAL with colour ?.
17. It is submitted by the learned Senior counsel for the petitioner that the IPAB could have exercised powers under Section 57(2) of the Act which empowers varying the entry and the solution was not to strike of the mark totally. This submission was made in the context of judgment of the Division Bench of the High Court of Delhi. It is the further submitted that the petitioner had applied for registration of the mark Rhizome's IMPERIAL GOLD on 26.12.2002 and obtained registration on 27.04.2005 and the fourth respondent applied for registration of the mark 'IMPERIAL BLUE' on 12.02.1997, and obtained registration only on 21.12.2005 (i.e) after the petitioner obtained registration. It is submitted that at the time the petitioner obtained the registration of the mark, the fourth respondent had not even applied for registration of their mark. Therefore, their contention that they are owning a family of marks of IMPERIAL PLUSCOLOUR is false. It is further submitted that the registration of mark IMPERIAL BLUE would not entitle the fourth respondent to prevent third parties from coining distinctive marks using the word 'IMPERIAL' with other terms, without limitation signifying a colour such as GOLD, PURPLE etc. It is further contended that Rhizome's IMPERIAL GOLD is not deceptively similar to cause confusion for being removed from the register. That competing marks have to be compared as a whole and cannot be dissected to compare only similar features. In support of such contention reliance was placed on the decision of the High Court of Delhi in the case of Gufic Ltd., and Anr., vs. Clinique Laboratories LIC and Anr reported in 2010 (48) PTC 788 (Delhi) (DB). It is further submitted that the difference between two marks are so easily discernible to a purchaser of average intelligence and imperfect recollection. The word 'IMPERIAL' in isolation is laudatory and descriptive apart from being common to the trade. The observations made by the Division Bench of the High Court of Delhi and the petitioner's case was referred to and it is submitted that there is no new material nor a different argument was placed before the IPAB for them to have rejected the above contention.
18. It is further submitted that the contention of the respondent that the High Court of Delhi applied only the tests of passing of is inconsequential as the same test would apply for passing of and infringement when competing marks are not identical. To support this contention, reliance was placed on the decision of the Hon'ble Supreme Court in the case of Ruston and Hornsby Ltd. v. Zamindara Engineering Co., reported in (1969) 2 SCC 727. It is further submitted that the IPAB erroneously applied the test of how the mark is actually used in the market and thereafter, came to a conclusion on likelihood of confusion and the only test is to take the mark as it figures in the Register of Trade Marks. Therefore, it is contended that the test applied by the IPAB is really the test in passing of infringement/passing of actions were ironically the objector actually failed in establishing likelihood of confusion. Reliance was placed on the observations in Hoffmann La Roche vs. Geoffrey Manners reported in AIR 1970 SC 2062. It is further submitted that the fourth respondent was aware of the petitioner's mark since 2005 and filed the rectification only in 2008 and when the fourth respondent's application for registration of the mark IMPERIAL-RED when put up for examination, the fourth respondent pleaded before the Registrar that the mark has to be compared as a whole, which is exactly the petitioner's case in the present proceedings.
19. The learned counsel appearing for the fourth respondent submitted that the petitioner has nowhere contended that IMPERIAL-GOLD and IMPERIAL-BLUE are deceptively similar, but would contend that it has added its trade name Rhizome's to IMPERIAL GOLD, which is sufficient to distinguish their product. Thus their contention is based on the added matter which is liable to be rejected in the light of the the decisions of the Hon'ble Supreme Court in the case of Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, reported in AIR 1965 SC 980 andRuston and Hornsby Ltd. v. Zamindara Engineering Co., reported in AIR 1970 SC 1649. It is submitted that applying the test of infringement, the trade mark Rhizome's IMPERIAL GOLD is in breach of Section 11(1) and Section 29 of the Act and the IPAB rightly cancelled the same. As regards the deceptive similarity by referring to the decisions of the Hon'ble Supreme Court in the case of Amritdhara Pharmacy v. Satya Deo Gupta, reported in AIR 1963 SC 449, Corn Products Refining Co. v. Shangrila Food Products Ltd., reported in AIR 1960 SC 142 andParle Products (P) Ltd. v. J.P. and Co., reported in AIR 1972 SC 1359, it is submitted that the test of descriptive similarity is to be applied by examining the structural or phonetic or conceptual similarity between the competing trade marks. The competing marks IMPERIAL BLUE and IMPERIAL GOLD have same structure, they are phonetically similar, convey the same in idea and impression as it constitutes a combinative use of IMPERIAL PLUS COLOUR ?. It is further submitted that the essential feature of IMPERIAL BLUE has been taken by the trade mark IMPERIAL GOLD and the same is in breach of Section 11(1) of the Act.
20. It is further submitted that the adoption of the trade mark IMPERIAL GOLD by the petitioner is a dishonest adoption with an intention to pass of its goods, there is no explanation for the coinage of IMPERIAL GOLD by the petitioner, which is evident from the imitation of the trade dress, label and use of the bottle. Further, it is submitted that the petitioner have given an undertaking to M/s.Moet and Chandon, France, not to use IMPERIAL for Wine, after having given such undertaking, the plea raised by the petitioner that IMPERIAL is common to trade is a malafide plea. It is further submitted that the Courts have held when dishonesty is writ large, Court will not grant a stamp of approval to such badge of dishonesty. In this regard reliance is placed on the decisions of the Hon'ble Supreme Court in the case of Heinz Italia v. Dabur India Ltd., reported in 2007 (35) PTC 1: (2007) 6 SCC 1; T.V. Venugopal v. Ushodaya Enterprises Ltd., reported in (2011) 4 SCC 85 and the decision of the High Court of Delhi in the case of Mrs. Ishi Khosla vs Anil Aggarwal And Anr reported in 2007 (34) PTC 370 (Delhi). It is further submitted that the petitioner's trade mark of 'Rhizome's IMPERIAL GOLD' dilutes the distinctiveness of the trade mark IMPERIAL BLUE by using the same distinctive and essential feature of 'IMPERIAL PLUS COLOUR' and would lead to irreparable damage to the fourth respondent. It is submitted that the fourth respondent trade mark is 'well known mark' and requires to be protected. To support such contention, reliance was placed on the observations made in the decision in the case of Adidas Salomon AG vs. Fitness World Trading Ltd., reported in [2004] FSR 21. It is further submitted that the petitioner's case is that 'IMPERIAL' and 'GOLD' are non-distinctive marks and when such is the contention, the registration was in breach of Section 9 of the Act and rightly cancelled by the IPAB.
21. With regard to the contention raised that the IPAB ought to have exercised jurisdiction under Section 57(2) of the Act, it is submitted that there was no such prayer made before the IPAB and Section 47(2) envisages varying the registration and not the trade mark; varying the registration could be understood from reading Section 58 and modification of the registered trade mark is only under Section 59 and there is no procedure prescribed for it and it cannot be subject matter of rectification petition under Section 57 of the Act. Further, it is submitted that the findings of the High Court of Delhi could not have been a ground for IPAB to modify the trade mark, since the said finding was limited to issue of passing of and the Division Bench observed that the IPAB will not be influenced by any of its observations. Further, it is submitted that the IPAB applied the test of infringement, as laid down by the Hon'ble Supreme Court and there is no error of law committed by the IPAB and the impugned order being discretionary based on correct application of law does not justify interference.
22. We have elaborately heard the learned counsels and considered the materials placed on record.
23. In the conspectus of the submissions of the learned counsels on either side the issues which fall for consideration are (i) whether the fourth respondent has exclusive right to use of combination of IMPERIAL with the word which describes the colour, either as a prefix or suffix or whether the fourth respondent could claim exclusivity only over the mark IMPERIAL-BLUE ?; (ii) whether the Tribunal should have exercised the power under Section 57(2) of the Act, which provides for varying the entry in the trade mark register.
24. The fourth respondent filed an application under Sections 11(1), 11(3), 11(10), 18 and 56 of the Trademarks Act, 1999, (Act), before the IPAB for removal/rectification of the petitioner's trademark Registration No.1161682 (Rhizome's IMPERIAL GOLD) in class 33 from the Register of Trademarks. The fourth respondent contended that during October 2007, they came across the trademarks registration applications filed by the petitioner for registration of the Trademarks Rhizome's IMPERIAL WHITE, Rhizome's IMPERIAL RED and Rhizome's IMPERIAL GREEN, which were advertised in the trademark journal, dated 16.07.2007 and made public by the Registrar of Trademarks on 18.10.2007. The fourth respondent opposed the applications by notice, dated 15.02.2008 and the opposition proceedings were pending. In the counter statement filed by the petitioner before the Registrar of Trademarks to the opposition notice filed by the fourth respondent, the petitioner stated that they are registered proprietor of the trademark 'Rhizome's IMPERIAL GOLD' vide Registration No.1162682. The fourth respondent contended that the petitioner committed fraud upon the Registrar of Trademarks by obtaining a deceptively similar trademark for identical goods and the Registration came to their notice only when the petitioner filed a counter statement to their opposition notice. In the background of these facts, the fourth respondent approached the IPAB and filed the petition for removal/rectification of the petitioner's trademark of 'Rhizome's IMPERIAL Gold'. The fourth respondent further stated that on 16.02.2008, they came across another application for registration of the trademarks 'Rhizome's IMPERIAL GOLD' vide Application No.1454195, which was advertised in the journal dated 16.02.2008 and that the said label is a blatant imitation of the fourth respondent's wholly owned subsidiary namely Austin Nichols and Company's Royal Stag label and their subsidiary has filed a notice of opposition which is pending before the Registrar. The fourth respondent further stated that during second week of August 2008, they came across the infringing bottle of the petitioner bearing the label mark 'Rhizome's IMPERIAL GOLD' and they found that the petitioner had not only copied the overall colour combination and get up of ROYAL STAG label and a trade dress thereof, but even had used ROYAL STAG bottle of the fourth respondent's wholly owned subsidiary company, in which the name SEAGRAM'S was embossed. The fourth respondent stated that the impugned registration though was advertised in the journal on 04.11.2013, it escaped the attention of the fourth respondent and was inadvertently registered by the Registrar of Trademarks in contravention of the provisions of the Act. Thus, it was the case of the fourth respondent that the adoption of the trademarks 'Rhizome's IMPERIAL GOLD' by the petitioner was dishonest, malafide, unfair, without justification and solely motivated to mislead the consumers. It is further stated that the petitioner is not using the registered trademarks 'Rhizome's IMPERIAL GOLD' as a composite brand and the manner of use on the label clearly establishes that the Rhizome and IMPERIAL GOLD are being used by the petitioner as two independent trademarks, displayed in completely different position, layout and get up. Therefore, the fourth respondent contended that the consumers who are familiar with IMPERIAL BLUE Whisky of the fourth respondent could associate IMPERIAL GOLD whisky of the petitioner therewith as a variation or the same product on account of imperfect recollection. Thus, the impugned registration being in violation of the provisions of the Section 11(1) of the Act is liable to be removed from the registered. Further case of the fourth respondent is that the trademark 'Rhizome's IMPERIAL GOLD' is phonetically and structurally deceptively similar to the trademarks IMPERIAL BLUE of the fourth respondent and constitute infringement. That IMPERIAL BLUE whisky enjoys immense goodwill and reputation in the trade and public at large and it is a well known mark and needs to be protected. The registration of the petitioner's mark not only constitute acts of misrepresentation, but also leads to misappropriation of the goodwill and reputation that vest in the trade mark IMPERIAL BLUE of the fourth respondent. In the affidavit filed on behalf of the fourth respondent along with applications for rectification, the fourth respondent stated that they have obtained four registrations in India, three with the trademark IMPERIAL BLUE under classes 33, 32, 9 and one with the trademark IMPERIAL RED under class 31 and all the registrations are valid and subsisting. The fourth respondent has given their annual turnover and sales of their brand IMPERIAL BLUE whisky from 1998 till 2007 and the turnover which was Rs.12.80 crores in 1998 increased to Rs.317.88 crores in 2007. The fourth respondent states that they have spent substantial sums of money for promotional expenses and the marketing expenses for 2007 alone was Rs.13.28 crores.
25. The petitioner's defence before the Tribunal was that they adopted the trademark 'Rhizome's IMPERIAL GOLD' from 2002 when they submitted their application for registration and the mark is uniquely coined nature and since 2006, they have been extensively and continuously using the mark and earned sufficient goodwill and reputation. The petitioner has two registrations one with the mark 'Rhizome's' which has been dated 04.12.2001, which is stated to be their house mark and other registration which is impugned namely, 'Rhizome's IMPERIAL GOLD', dated 26.12.2002. The petitioner stated that their mark is clearly distinguishable from the fourth respondent's mark, since their trademark has a prefix 'Rhizome's' and the common element is the word 'IMPERIAL' which is laudatory and cannot be monopolized by a single trader. Further, the fourth respondent cannot claim any exclusivity in respect of the trademark 'IMPERIAL' and not open to the challenge the petitioner's mark. It was reiterated that the petitioner's trademark is not 'IMPERIAL GOLD', but 'Rhizome's IMPERIAL GOLD' and therefore, there is no question of misrepresentation as the trademark itself points towards its source of origin.
26. From the case as pleaded by the respective party, it is seen that the petitioner's major defence was that their trademark 'IMPERIAL GOLD' is prefixed by the word 'Rhizome's' which is their house mark and 'Rhizome's IMPERIAL GOLD' is not phonetically or structurally similar to the fourth respondent's trademark 'IMPERIAL BLUE'. The issue which arises for consideration is as to how the structural or phonetic similarity has to be adjudged.
27. In the case of Amritdhara Pharmacy (supra), the point for consideration was whether the name 'Lakshmandhara' was likely to deceive the public or cause confusion to the trade within the meaning of Sections 8 and 10(1) of the Act. The application filed for registration of the tradename in respect of medicinal preparation was opposed by the Proprietors of trade name 'Amritdhara'. The Hon'ble Supreme Court referred to the observations by Parker, J. in Re Pianotist Co.'s Application, (1906) 23 RPC 774, which was also a case of comparison of two words. Their Lordship's observed that the following circumstances were to be considered while comparison of two words namely it must the two words; must judge them both by their look and by their sound; must consider the goods to which they are to be applied; must consider the nature and kind of customer who would be likely to buy those goods; must consider all surrounding circumstances; must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. With regard to deceptive resemblance, two important questions were pointed out namely, (i) who are the persons whom the resemblance must be likely to deceive or confuse, and (ii) what rules of comparison are to be adopted in judging whether such resemblance exists. By applying these tests to the facts of the said case, it was held that it is not in dispute that the two names 'Amritdhara' and 'Lakshmandhara' are in use in respect of the same description of goods, namely medicinal preparation which will be purchased by people instead of going to a Doctor. Referring to the decision of the Hon'ble Supreme Court in the case of Corn Products Refining Co., (supra), it was held that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection and to such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandbara' is likely to deceive or cause confusion. Further, it was pointed out that an unwary purchaser of average intelligence and imperfect recollection would not, split the name into its component parts and consider the etymological meaning thereof or even consider the meanings of the composite words, but would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about. Further, it was held that a critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine. It was further pointed out that the trademark is the whole thing - the whole word has to be considered.
28. The learned Senior counsel appearing for the fourth respondent submitted that if 'IMPERIAL GOLD' and 'IMPERIAL BLUE' are similar the addition of the mark 'Rhizome's', is of no consequence. In Ruston and Hornsby Ltd., (supra), the trademarks, which were compared, were 'RUSTON', 'RUSTAM' and 'RUSTAM INDIA'. The appellant therein contended that their trademark 'RUSTON' has been infringed. The Allahabad High Court, where the matter originated, held that the use of the word 'RUSTAM' constituted infringement, but the word 'RUSTAM INDIA' does not constitute infringement. On appeal to the Hon'ble Supreme Court, it was held that the mark 'RUSTON' had been infringed not only by the use of 'RUSTAM', but also by the mark 'RUSTAM INDIA' as the word 'RUSTAM' was deceptively similar to the word 'RUSTON' and the fact that the word 'INDIA' was added to the trademark was of no consequence and held that there is infringement. Pointing out the distinction between a passing of action and an infringement action, the Hon'ble Supreme Court observed that in an action for infringement, the question would be whether the defendant's trade mark is identical with the plaintiff's mark and the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and, passing off actions.
29. In Kerly on Trade Marks, 8th Edition, 407, referred to by the Hon'ble Supreme Court in the case of Durga Dutt Sharma (supra), it was stated that where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as whole and not to disregard the parts which are common ?.
30. In the case of Parle Products (P) Ltd., (supra), which considered the case of the appellant pertaining to the word "Gluco" used on their biscuit packets and the wrapper known as "Parle's Gluco Biscuits", the Hon'ble Supreme Court held that in order to come to the conclusion whether the one mark is deceptively similar to another the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other and it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
31. In the case of Gufic Ltd., and Anr., (supra), the Division Bench of the High Court of Delhi, referred to the decisions in the cases of Ruston and Hornsby Ltd. (supra),Amritdhara Pharmacy (supra), Corn Products Refining Co. (supra),andParle Products (P) Ltd. (supra), and on facts found that the marks SKINCLINIQ" as a whole in comparison with the registered mark CLINIQUE" are not structurally or phonetically similar and taking a overall view of the marks, a person of average intelligence would not be deceived by the mark SKINCLINIQ" into believing that it is, in fact, the mark CLINIQUE", as the mark is not just CLINIQ", but SKINCLINIQ", which is one word and not two separate words as in Rustam's case and Cleanzo's case.
32. In the case of Metropol India (P) Ltd., vs. Praveen Industries India reported in 1997 PTC (17) 779 (DB), a Division Bench of the High Court of Delhi considered the mark "CLEANZO", a registered mark and CLEANJO which was the alleged infringing mark and the Division Bench observed that the use of the word CLEANJO whether with the prefix PRAVEEN or otherwise, was definitely likely to have an effect of creating confusion in respect of the cleaning goods and was likely to deceive the purchaser of the goods.
33. In the preceding paragraphs, we have noticed the legal principles which are to be applied in deciding the question of similarity between two marks in an action for infringement by approaching the matter from the point of view of a man of average intelligence and imperfect recollection and to such a man the overall structural and phonetic similarity would be vital coupled with the important fact namely, the goods to which they are to be applied, the nature and kind of customers, who are likely to buy those goods, all the surrounding circumstances. We have referred to various decisions cited at the bar so as to cull out the principles from those decisions. As pointed out by the Hon'ble Supreme Court in the case of Amritdhara Pharmacy (supra), that each case must decided on its own facts, what degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori.
34. The fourth respondent has obtained registration of its mark 'IMPERIAL BLUE' as of 1997, it is also the registered proprietor of the trade mark 'IMPERIAL RED'. Thus, the fourth respondent would contend that the mark 'IMPERIAL with Colour' is a coined trademark and it was a well known trademark enjoying a goods sales turnover for which materials were placed before the IPAB. It has to be pointed out that it was never the case of the petitioner that there is no deceptive similarity between 'IMPERIAL GOLD' and 'IMPERIAL BLUE'. Rather the petitioner would justify their mark broadly on two grounds, firstly by contending that their registered mark is 'Rhizome's IMPERIAL GOLD' and not 'IMPERIAL GOLD'. The second contention being the fourth respondent cannot claim any protection for the word 'IMPERIAL', as the same in isolation is laudatory. Thus, the petitioner's defence to the application for rectification before the IPAB was largely based on the word 'Rhizome's' which was a prefix to the word 'IMPERIAL GOLD'. The question would be as to whether this by itself would be a defence for the petitioner to sustain their registration.
35. As pointed out by the Hon'ble Supreme Court in the case of Ruston and Hornsby Ltd., (supra), in an action for infringement, the test would be as to likelihood of confusion or deception arising from similarity of marks. In the said decision, the Hon'ble Supreme Court held that by addition of the word INDIA ?, to the word RUSTAM is of no consequence and amounted to infringement of the registered mark RUSTON ?. We may at this stage point out that the product dealt by the petitioner and the fourth respondent are Alcoholic beverages and both the products are a particular type of liquor namely, whisky. Thus, if we look at both the marks namely, 'Rhizome's IMPERIAL GOLD' and 'IMPERIAL BLUE', there can be no doubt that by their sound and their look, they are similar and considering the nature of product and the kind of customer, the resemblance is likely to deceive a consumer, who is a man of average intelligence and imperfect recollection. The overall structural and phonetic similarity is a determinative factor, which looms large in the instant case. The added matter namely the addition of the mark 'Rhizome's' as a prefix to 'IMPERIAL GOLD' is of no consequence. More particularly, considering the nature of the product dealt with by the petitioner as well as by the fourth respondent. Therefore, we hold that the fourth respondent has an exclusive right to use of combination of 'IMPERIAL' which the word describes colour either as a prefix or a suffix. From the documents, which were placed before the IPAB, it is seen that though the petitioner claimed that they have marketed their products as 'Rhizome's IMPERIAL GOLD', the sale invoices raised by the petitioner to the AP Beverages Corporation Ltd., describes the products as 'IMPERIAL GOLD' branded whisky and not 'Rhizome's IMPERIAL GOLD'. The catalogue issued by the petitioner describes their product as 'IMPERIAL GOLD' and not as 'Rhizome's IMPERIAL GOLD'.
36. To decide as to whether there has been infringement of the fourth respondent mark it is enough if this Court comes to the conclusion that the petitioner's impugned mark bears on overall similarity to that of the registered mark of the fourth respondent as would be likely to mislead a person usually dealing with one to accept the other if offered to him. To consider as to whether there is deceptive similarity between two marks, the same should not be placed side by side and by doing so may exhibit many and various difference and the test would be, a person acquainted with one mark and not having the two side by side for comparison might will be deceived. If the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods, which bore the same mark as that with which he was acquainted. [Karly's Law of Trade Marks and Trade Names (9th Edition)].
37. With regard to effect of the decision of the High Court of Delhi in the appeal filed by the petitioner herein, the Division Bench pointed out that their views are prima facie in nature and ought not to conclusively influence the final decision of any Court or the IPAB or Registrar. An appeal was preferred by the fourth respondent against the said order to the Hon'ble Supreme Court in Special Leave to Appeal (Civil) Nos.34070-34072 of 2009, which was dismissed by order dated 04.01.2010, observing that they are not inclined to exercise discretionary jurisdiction under Article 136 of the Constitution because the impugned orders are only Interlocutory orders. Therefore, the contention raised by the petitioner that the finding of the Division Bench of the High Court of Delhi that no one can claim any right over the word 'IMPERIAL', in isolation cannot be stated to have been binding on the IPAB for more than one reason as pointed out above.
38. In the preceding paragraphs, we have held that 'IMPERIAL BLUE', and 'IMPERIAL GOLD' have same structure and phonetic similarity and conveys the same idea as the coinage is the word 'IMPERIAL with colour'. We have held that the prefix 'Rhizome's', is of no consequence. In such circumstances, we are to consider the plea as to whether the adoption of the mark 'Rhizome's IMPERIAL GOLD', by the petitioner was a dishonest adoption.
39. In the reply filed by the petitioner to the application for rectification before the IPAB, there is no explanation given for the coinage 'IMPERIAL GOLD'. That apart, the imitation done by the petitioner with regard to the label, trade dress and use of SEAGRAM'S bottles is also a very determinative factor to come to a conclusion that the conduct of the petitioner was dishonest. Though the petitioner raised a contention before the High Court of Delhi stating that the word 'IMPERIAL', is common to the trade and no exclusivity could be claimed over the world, they gave a letter of undertaking to Champagne Moet and Chandon recognising their right of the said company, in relation to the trade mark bearing the term 'IMPERIAL'. The petitioner undertook to limit use of the trademarks 'Rhizome's IMPERIAL GOLD, RED, GREEN, WHITE' in class 33 to exclude use over Wines ?, Champagnes ?. The petitioner also undertook not to file any new trademark application for the mark identical or similar to the trademarks 'IMPERIAL' in relation to champagnes and wines and to restrict any new application that could contain the 'IMPERIAL' term to exclude Wines and Champagnes. Further, the petitioner undertook not to oppose future registration filed in the name of Champagne Moet and Chandon containing the word 'IMPERIAL', in class 33 for wines and champagnes. In consideration of the undertaking given, the opposition filed by Champagne Moet and Chandon against the trademark Application of the petitioner for the applications 'Rhizome's IMPERIAL RED' GREEN and WHITE, were withdrawn. In the light of the conduct of the petitioner in acceding to the fact that Champagne Moet and Chandon have right to use the word 'IMPERIAL' over Wines and Champagnes is a very vital matter, which causes a serious dent on the defence raised by the petitioner to the application for rectification stating that no exclusivity could be claimed by the fourth respondent to the word 'IMPERIAL'.
40. Coming to the last contention raised by the learned Senior appearing for the petitioner that the IPAB instead of removing the mark from the register ought to have exercised jurisdiction under Section 57(2) of the Act. It is not in dispute that there was no such prayer made and no such contention raised by the petitioner before the IPAB that the registration of the petitioner's mark should be rectified so as to register the modified trademark. Therefore, to assail the order of the IPAB on the said ground is not tenable. Further, it is submitted that Section 57(2) does not deal with variations of the trademark, but envisages varying the registration and varying registration could be understood from reading of Section 58 of the Act and under Section 59, there is a procedure prescribed for it. Further, it is submitted that the finding of the High Court of Delhi could not have been a ground to modify the trademark as the judgment was rendered in a case of passing off and the Division Bench of the High Court of Delhi held that the IPAB will not be influenced by the said decision.
41. We are inclined to agree with the submission made by the learned Senior counsel for the fourth respondent as the petitioner never pleaded before the IPAB that their registered mark should be modified. In the absence of any such pleading or prayer before the IPAB, the correctness of the order passed by the IPAB cannot be permitted to be assailed on the said ground. Therefore, to that extent the contention raised by the learned Senior counsel appearing for the petitioner does not merit acceptance.
42. This leaves us with the only question as to whether the petitioner should be permitted to approach the IPAB for modification of its trademark. The learned Senior counsel appearing for the fourth respondent has raised a contention stating that Section 57(2) of the Act does not deal with varying of the trademarks, but envisages varying of the registration and in this regard has drawn our attention to Section 58 and 59 of the Act. In the light of the finding that the petitioner cannot be allowed to assail the correctness of the order of the IPAB on the ground which is never pleaded or raised before the IPAB, we are not inclined to go into the question as to whether the power under Section 57(2) of the Act, could be resorted to by the petitioner for varying the registration. Hence, we say nothing more on this issue and leave it open to the petitioner to work out their rights in the manner known to law, if so advised.
43. In the result, we find that there is no error in the impugned order passed by the IPAB warranting exercise of the Writ jurisdiction of this Court. Accordingly, the Writ Petition stands dismissed. No costs.