TMI Blog2013 (9) TMI 99X X X X Extracts X X X X X X X X Extracts X X X X ..... ection or splitting up the word into several words would not cause any confusion in the minds of the purchasers. Application of Provisions of Section 11 - Whether the respondent Board had committed any error in allowing the application filed by the respondent by applying the provisions of section 11 of the Trade Marks Act - Held that:- The order passed by the 2nd respondent was not legally sustainable - the order passed by the 2nd respondent Board, allowing the rectification application for removal of the petitioner's trade mark from the Register of Trade Marks by applying the principle which was available to the trade mark holder before registering the trade mark, suffers from illegality - The grounds embodied under sections 9 and 11 were 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for rectification of the registration, particularly considering the factum that the Liquor India Private Limited had withdrawn their objections before the Commissioner on 14.03.2006 and allowed the petitioner to carry on the business under the name of RHIZOME IMPERIAL GOLD – Order set aside – Petition allow ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sion Bench of the Delhi High Court and the Hon'ble Apex Court dismissed the SLP at the admission stage itself with an observation to expedite the trial of the suits. Hence, the order of the Division Bench of the Delhi High Court has become final. In the said situation, the 4th respondent herein filed an application for rectification before the 3rd respondent. 7. The said application was resisted by the writ petitioner herein, by filing a counter before the 3rd respondent Board, contending that the petitioner is a company registered under the Companies Act, 1956 and is a registered proprietor of the trade mark 'RHIZOME'S IMPERIAL GOLD' under No.1161682. The petitioner company is a bottling and blending unit, which possesses recognised liquor brands in the market capturing middle and lower segments. Some of the brands of the petitioner are 'IMPERIAL GOLD WHISKY', 'MARSHALL WHISKY', 'ROYAL GOLD DELUXE WHISKY', 'ROYAL EAGLE WHISKY', 'THE FAMOUR HORSE WHISKY', 'CREDIT CARD SELECT WHISKY' and '1000 OAKS LUXURY WHISKY'. The trademark 'RHIZOME'S IMPERIAL GOLD' was adopted by the petitioner since 2002 and their trade mark, 'RHIZOME'S IMPERIAL GOLD', due to its uniquely coined nature, is p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t be monopolised by one single party to the exclusion of others, especially when neither party has used the term 'IMPERIAL' in isolation. In this regard, by inviting the attention of this Court to various products marketed with the term 'IMPERIAL', such as 'IMPERIAL TRIBUTE', 'TETLEYS IMPERIAL', 'IMPERIAL HERO WHISKY', 'IMPERIAL CLASSIC' etc., the learned senior counsel submitted that the word 'IMPERIAL' is, thus, a common word and hence, the 4th respondent cannot claim exclusive right over the word 'IMPERIAL'. He would further argue that the 2nd respondent Board ought to have appreciated and applied the principles enshrined in Section 17 of the Trade Marks Act and, thereby, ought to have come to the conclusion that the registered proprietor of composite trade mark cannot claim any exclusive right over the individual elements therein. He would further argue that in fact, the Division Bench of the Delhi High Court in the appeal filed by the writ petitioner as against the interim order passed by the learned single Judge held that 'IMPERIAL' is common to the trade and there was no likelihood of confusion between the 'Rhizome's IMPERIAL GOLD' of the petitioner and the 'IMPERIAL BLUE' o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... p are similar to the 4th respondent's ROYAL STAG. Pursuant to which, they have also changed the label, trade dress and their get up in the bottles. Therefore, according to the learned senior counsel, absolutely there is no likelihood of confusion between the trade marks of the petitioner and the 4th respondent. Therefore, the order passed by the 2nd respondent Board is liable to be set aside. In support of his contentions, the learned senior counsel has relied upon the decisions reported in HIMALAYA DRUG CO., .vs. SBL LIMITED (2010 (43) PTC 739 (DELHI) and GUFIC LTD., AND ANOTHER vs. CLINIQUE LABORATORIES, LLC AND ANOTHER (2010 (INDLAW DEL 1815). 11. Combating the said submissions, the learned Senior Counsel appearing for the 4th respondent submitted that the 4th respondent company has been using the trade mark 'IMPERIAL BLUE' since 1997. The petitioner had adopted the trade mark 'RHIZOME's IMPERIAL GOLD' only at the later point of time i.e. since 2002. By inviting the attention of this Court to the documents filed by him, the learned senior counsel submitted that the word 'RHIZOME' is the house mark of the writ petitioner, which was registered separately on 18th of May, 2005 and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... le Judge, Delhi High Court and therefore, the finding of the Division Bench cannot be said to be final. In this regard, the learned senior counsel, by referring to section 28(2) and (3) of the Trade Marks Act, submitted that when both the marks are registered by the 3rd respondent, unless one of the trade marks is cancelled, one party cannot take action for infringement. Therefore, the question with regard to the infringement is yet to be decided by the Delhi High Court. Hence, it is incorrect to state that the matter had reached finality in the interim order passed by the Delhi High Court. 13. The learned counsel for the 4th respondent further submitted that while deciding the application filed by the 4th respondent under section 57 of the Trade Marks Act, to cancel and to rectify the register, the Board has to consider the grounds under sections 9 and 11 as the ground for refusal of registration. Accordingly, the Board has taken into consideration the provisions of section 11 and correctly allowed the application filed by the 4th respondent. Therefore, it is incorrect to state that by following the principles of infringement the Board has allowed the application. In this regard ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... consideration on the submissions made by the learned counsel on either side, and perused the materials available on record. 16. In view of the said submissions, the following points would arise for consideration in this writ petition: (1) Whether the 4th respondent can claim any exclusive right over the individual element 'IMPERIAL' when a trade mark consists of several matters ? (2) Whether the 2nd respondent Board has committed any error in allowing the application filed by the 4th respondent by applying the provisions of section 11 of the Trade Marks Act ? 17. With regard to the first point, it is the contention of the learned senior counsel for the writ petitioner that the word 'IMPERIAL' is a common word and, as such, the 4th respondent cannot claim exclusive right over the said word. Moreover, by adding the word 'RHIZOME', the trade mark has become, undoubtedly, distinctive. But the 2nd respondent Board without looking into the trade mark as a whole, by isolating the individual element and applying the principle of infringement, which is the subject matter of civil suit, has allowed the application. In this regard, it would be appropriate to refer to the judgments re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... l impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the market place that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of difference. A court should not engage in "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate. The rationale of the anti-dissection rule is based upon this assumption: "An average purchaser does not retain all the details of a mark, but rather the mental impression of the m ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... word 'RHIZOME' is added as prefix to distinguish the petitioner's goods from those of the 4th respondent, the added trade mark is of no consequence and in the case of passing off, it is immaterial but the parties cannot escape liability in the case of infringement. In this regard, a reference could be placed on the judgment relied on by the learned senior counsel for the petitioner reported in DURGA DUTT SHARMA .vs. NAVARATNA PHARMACEUTICAL LABORATORIES (AIR 1965 SC 980), wherein the Honourable Apex Court has held as follows: "28. ..... In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... senior counsel for the petitioner relied upon a judgment that by adding prefix to a trade mark, the petitioner cannot escape liability in the action for infringement on the ground that only if the added word created confusion in the minds of the customers, an interference could be made with regard to the registration of subsequent mark. But, in the instant case, we are of the opinion that by adding a house mark 'RHIZOME' as prefix and a different colour name as suffix, the petitioner had totally made their product as distinguishable from the 4th respondent's trade mark. Under such circumstances, the judgment relied upon by the learned counsel for the 4th respondent cannot be made applicable to the facts of this case. Hence, we are not accepting the submission made by the learned counsel for the 4th respondent that the trade mark of the writ petitioner is deceptively similar to the trade mark of the 4th respondent. 23. Further, we find that the 2nd respondent Board by applying the principle of infringement had cancelled the trade mark of the writ petitioner. We find that Section 9 relates to absolute grounds for refusal of registration. Section 11 deals with the 'relative grounds ..... X X X X Extracts X X X X X X X X Extracts X X X X
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