Pernod Ricard S.A. France, A Company Incorporated Under The Laws Of France vs Rhizome Distillers Pvt. Ltd. And Registrar Of Trade Marks, Trade Marks Registry

S. Usha, J

Application for removal of the trade mark 'Rhizome's IMPERIAL GOLD' registered under No. 1161682 in class 33 from the Register of Trade

Marks under the provisions of Trade Marks Act, 1999 (hereinafter referred to as the Act).

The applicant herein is a company incorporated under the laws of France. Applicant is the ultimate holding company of various entities, all engaged

in the business of manufacturing and / or distribution of wines, liquors and spirits. The Pernod Ricard Group features as one of the two leading players

of the world in the sprits and wine market and is number one player outside United States of America. The Pernod Ricard Group has presence in

many countries of the world. 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 including a wide range of whiskies, liquors and other spirits. These products are sold in

various internationally renowned and acclaimed brands such as ROYAL SALUTE, CHIVAS REGAL, 100 PIPERS, etc. These brands are global

and among the top selling brands of the applicant worldwide. Apart from the famous international brands the applicants through its subsidiaries owns

locally acclaimed brands such as IMPERIAL BLUE and ROYAL STAG, out of which IMPERIAL BLUE is the subject matter of the present

proceedings.

One of the most popular whiskies of the applicant sold in India since 1997 is under the registered trade mark IMPERIAL BLUE. The applicant

adopted the fanciful mark IMPERIAL BLUE possessing highest degree of inherent distinctiveness in relation to alcoholic beverages. As a result of

extensive use backed by aggressive marketing and excellent quality the sales of whisky under the trade mark IMPERIAL BLUE has been

phenomenal. The turnover of the said product for the year 2007 is over ` 317 crores. The trade mark IMPERIAL BLUE has acquired considerable

goodwill and enviable reputation among the members of the trade and public at large. The trade mark of the applicants namely IMPERIAL BLUE is

now a well known and famous brand in the liquor trade.

In order to accord statutory protection to its trade mark IMPERIAL BLUE the applicant applied for and obtained registration of its trade mark

IMPERIAL BLUE in various countries including NEPAL. In the line of brand extension the applicant's wholly owned India subsidiary Pernod Ricard

India Private Limited has also adopted the trade mark IMPERIAL RED for another variety of grain spirit blended with imported malt and has

obtained registration of the said trade mark in class 32. The applicant has also obtained registration of the trade mark IMPERIAL BLUE in India in

classes 9,32 and 33.

Towards the end of October, 2007 the applicants came across the trade mark registration application filed by the Respondent No. 1 for registration

of the trade marks RHIZOME's IMPERIAL WHITE, RHIZOME'S IMPERIAL RED and RHIZOME'S IMPERIAL GREEN and all the three

applications were advertised in the trade marks journal No. 1372 which was made available to public on 18.10.2007. All the three applications were

opposed by the applicant herein. Before filing the notice of opposition, the applicant made best efforts through its marketing network to find out from

the market in India whether any alcoholic beverages are available for sale and found out that no goods were on sale.

On 16.2.2008, the applicant came across yet another application for registration of the trade mark RHIZOME's IMPERIAL GOLD whisky label

under trade mark application No. 1454195 and the same was opposed by the applicant's wholly owned Indian subsidiary Austin Nichols and Company.

The goods of the Respondent No. 1 were seen in the market only in the second week of August, 2008. To the shock of the applicant, the applicant

found that the Respondent No. 1 was not only copying the over all colour combination and get up of the applicant's wholly owned Indian subsidiary

Austin Nichols and Company's trade mark, ROYAL STAG label and the trade dress thereof but even had used ROYAL STAG bottle for sale of

Rhizome's IMPERIAL GOLD whisky. The said oppositions are pending adjudication before the Registrar.

In the counter statement filed by the Respondent No. 1 before the Registrar in the opposition proceedings, the Respondent No. 1 had contended

that they are the registered proprietors of the trade mark Rhizome's IMPERIAL GOLD registered under No. 1161682. The registration has been

obtained by playing fraud on the Registrar by obtaining a deceptively similar trade mark for identical goods.

The adoption and use of the impugned trade mark IMPERIAL GOLD in conjunction with the trade dress pertaining thereto by the Respondent No.

1 is evidently dishonest, malafide and fraudulent in nature. It is evident that the first Respondent has copied the reputed trade marks, namely,

IMPERIAL BLUE of the applicant and ROYAL STAG trade dress of the applicant's wholly owned subsidiary Austin Nichols & Company, which

are whiskies having turnover of Rs. 317.88 crores and Rs. 644.71 respectively in the year 2007 and used them to practice confusion and deception on

consumers at large. The dishonest adoption is deliberate and the Respondent No. 1 ought to be credited with the success that he proposes to achieve

by such instrument of deception. Further, the fact that the bottle, Respondent No. 1 had used and the label they had used in conjunction with the trade

mark IMPERIAL GOLD is only to design undue benefit. The goods in question are purchased by unwary class of consumers from all strata of

society including illiterate and semi literate from semi-urban areas, rural areas and small townships having average intelligence and imperfect

recollection. Therefore, the impugned registration ought to be cancelled.

The use of the trade mark IMPERIAL in conjunction with any other mark signifying colour indicates the goods originating from the applicant and its

subsidiary and hence may lead to confusion and deception in the minds of the consumers, leading to passing-off of such unauthorized products for

those originating from the applicant.

The trade mark IMPERIAL BLUE on account of its prior adoption and continuous, extensive use since 1977 by the applicant has become

distinctive of the applicant's goods and the public at large associate the trade mark exclusively with the applicant and with none else. The impugned

trade mark Rhizome's IMPERIAL GOLD is phonetically, structurally deceptively similar to the trade mark IMPERIAL BLUE of the applicants. The

applicant's trade mark IMPERIAL BLUE is a well known mark and is distinctive of its goods only.

The impugned trade mark registration has been obtained by misrepresentation. The impugned registration has been obtained in contravention of the

provisions of the provisions of Section 11(1), 11(3), 11(10), 18 and Section 57 of the Act and is therefore liable to be removed from the Register.

The Respondent No. 1 filed their counter-statement. The Respondent company is registered under the Companies Act, 1956. The Respondent No.

1 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 Respondent No. 1 are Imperial Gold Whisky, Marshall Whisky, Royal Gold Deluxe Whisky, Royal Eagle Whisky, the Famour Horse Whisky etc.

The Respondents submit that the trade mark RHIZOME'S IMPERIAL GOLD was adopted by the Respondent since atleast the year 2002 when the

application for registration was filed before the Registrar of Trade Marks. The trade mark RHIZOME'S IMPERIAL GOLD due to its uniquely

coined nature is prima facie distinctive of the goods of the Respondents. Further, since the year 2006 Respondents have extensively and continuously

used the said trade mark without any interruption so as to cause sufficient goodwill and reputation to have been accrued in their favour. The goods

bearing the trade mark RHIZOME'S IMPERIAL GOLD are extensively sold with widespread sales. The Respondent No. 1 have also spent liberally

on advertising and sales promotion of goods under the impugned trade mark RHIIZOME'S IMPERIAL GOLD. Respondent No. 1 are also the

registered proprietors of the trade marks RHIZOME'S AND RHIZOME'S IMPERIAL GOLD in other jurisdictions such as Lebanon. Respondent

No. 1 have also applied and are also proprietors of copyright in the artistic work in the label RHIZOME'S IMPERIAL GOLD label under registration

No. a-817571/2007 dated 27.12.2007.

It is submitted that the trade mark RHIZOME'S IMPERIAL GOLD has been uniquely and bonafidely adopted by the Respondents; the impugned

trade mark is prima facie distinctive of the Respondent's goods; has been subjected to extensive use since the year 2006 with enormous sales of the

products under the said trade mark; is well publicised through various medias, has garnered sufficient goodwill and reputation due to aforementioned

extensive use and promotion and is thus associated with the Respondents only and with none else. In view of these reasons the instant application for

rectification deserves to be dismissed.

The preliminary submission of the Respondent No. 1 is that the applicants are not persons aggrieved and are therefore not entitled to file this

application for rectification under the provisions of Section 57 of the Act. In relation to the alleged similarity with the mark IMPERIAL BLUE of the

applicants, it is submitted that the trade marks in question are distinct from each other and as such there can be no confusion on account of origin of

the products and no person of average intelligence and imperfect recollection will be confused into believing that the Respondent's products originate

from the applicants. The Respondent further submitted that the work IMPERIAL was used for the first time for alcoholic beverages in the 1880s by

Moet and Chandon and thereafter the word IMPERIAL has been used number of times making it common to the trade. Given the fact that the

applicants themselves cannot claim exclusivity in respect of the trade mark IMPERIAL, it is not open to them to challenge the Respondent's right over

the trade mark RHIZOME'S IMPERIAL GOLD.

In relation to the alleged similarity with the trade dress of ROYAL STAG, it is submitted that ROYAL STAG and RHIZOME'S IMPERIAL

GOLD labels are different in many material respects, symbols used on the packaging.

The applicants are not entitled to any relief as they have not only concealed material facts in their application but have also made false statements

in relation to their date of knowledge of the Respondent's use. The present application is bared by acquiescence, delay and laches and therefore is not

maintainable as the applicants were aware of the Respondent's presence since the year 2006.

The applicants have not disclosed the details of their relationship with Seagrams and Austin Nichols companies with a view to conceal several

discrepancies in their pleadings which defeat the case of the applicants.

The applicant's trade mark IMPERIAL BLUE is being used since the year 1997 is denied. Rest of the averments in the grounds of rectification

application are denied by Respondent No. 1.

The applicants have filed their rejoinder to the counter-statement denying the averments made in the counter-statement.

We have heard Shri Hemant Singh learned Counsel for the applicant and Shri Neel Mason learned Counsel for the Respondent No. 1 in the

Circuit Bench Sitting at Delhi on 6.9.2010.

Learned Counsel for the applicant contended that the impugned trade mark was registered under No. 1161682 in class 33 in contravention of the

provisions of the Act. The applicants had coined and adopted trade mark IMPERIAL BLUE in the year 1997 whereas the impugned trade mark is

IMPERIAL GOLD. The sales turnover runs to 6.5 billion in the year 2007-08.

The counsel then brought to our notice the labels filed at pages 400-403 along with the application for rectification and stated that the Respondent

had not only copied the trade mark as 'Rhizome's Imperial BLUE' but also the trade dress and artistic work 'ROYAL STAG' bottle which created

double confusion among the public who were unwary purchasers. The applicants filed a civil suit against the first Respondent for infringement and

passing off before the Delhi High Court and obtained an order of injunction. The Respondents appealed against the said order before the Division

Bench and the same was set aside. The applicants moved the Supreme Court and the Supreme Court observed that the suit be heard and disposed of

within a period of three months and did not deal with the order of the Division Bench as they were only interlocutory orders.

The counsel then submitted that the Respondent had claimed user since 2002 in the impugned trade mark application which is a false statement

whereas the Respondent's user is only since the year 2006. The counsel pointed out that the invoices filed by the Respondent as Annexure E along

with the counter-statement in which the word IMPERIAL GOLD alone is found and no Rhizone's IMPERIAL GOLD as registered. So it is clear that

IMPERIAL GOLD is the permanent feature of the trade mark. On the whole when it is compared the test of imperfect recollection is applicable. The

counsel relied on the Judgments reported in AIR 1965 SC 980 Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories Hand

2007 (35) PTC 1 (SC) Heinz Italia and Anr. v. Dabur India Ltd.

The Respondent has failed to prove user of the word IMPERIAL with the colour. The counsel further submitted that the Respondent had relied on

various labels to say that they were used by many people filed as Annexure K along with their counter-statement. The counsel stated that those labels

relied on by the Respondent were of no relevance as some were not used in India, some were not used at all places. The word IMPERIAL was not

used with colours in those labels. The counsel submitted that the word IMPERIAL separately is not an issue. The mark if not distinctive, the

registration ought to be rectified / removed. The counsel relied on a number of Judgments.

The learned Counsel for the Respondent relied on Section 17 of the Act and submitted that if a trade mark consists of several matters, the

registration shall confer exclusive right on the proprietor to use the trade mark as a whole. The counsel stated that the word ' IMPERIAL' is common

to trade. There are others who are registered proprietors of the trade mark 'IMPERIAL' and are prior users than the applicants. The counsel relied on

the judgment reported in 2004 (28) PTC 404 (Del) Bharat Hotels Limited v. Unison Hotels Limited and 2001 PTC 360 (Del) (DB) Girnar Food &

Beverages Pvt. Ltd. v. Godfrey Philips India Ltd. to say that a slight difference is sufficient to distinguish one trader's name from the other considering

the customers.

The counsel further stated that the trade mark when said to be laudatory the risk of confusion is inevitable. The counsel stated that the applicants

have not clearly stated as to who is the registered proprietor of the trade mark in the statement of case. The Respondents had in fact adopted the

trade mark 'RHIZOME'S IMPERIAL GOLD' in the year 2002 but launched their product only in the year 2006, therefore the user stated is not false.

In reply to the Respondent's arguments, the counsel for the applicant stated that the Respondent though had applied for the registration as

'RHIZOMES IMPERIAL GOLD' but were used as 'IMPERIAL GOLD' alone. The counsel relied on Section 11(1) of the Act and stated that as per

the provisions the Registrar ought to have refused registration, therefore the registration granted is in contravention of Section 11(1) of the Act. Two

trade marks when placed side by side may exhibit some differences and therefore one person who is acquainted with one mark may be deceived if

the other is not before him. The settled principle is that the marks are not to be placed side by side and compared. In this respect, the counsel relied on

the Parle case reported in AIR 1972 SC 1359. with regard to the argument of who is the owner/ proprietor the counsel submitted that the applicants

are using through their subsidiaries. The counsel prayed that the application for rectification be allowed and the impugned trade mark be cancelled.

We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents. The main issue to be

considered is that whether the applicant is a person aggrieved to file and maintain an application for rectification. The expression 'aggrieved person'

has been liberally construed in various cases. Bown L.J. in Re. Powell's T.M. case held ""persons who are aggrieved are persons who are in some

way or other substantially interested in having the mark removed from the Register, or persons who would be substantially damaged if the mark

remained."".

Lord Watson held in Re. Powell's TM case, ""In my opinion, any trader is, in the sense of statute ""aggrieved"" whenever the registration of a

particular trade mark operates in restraint of what would otherwise have been his legal rights. Whatever benefit is gained by registration must entail

corresponding disadvantage upon a trader who might possibly have had occasion to use the mark in the course of his business.

A person who is engaged in the same trade as the registered proprietor and who is likely to be injured or harassed in his trade by the registration

complained of is a person aggrieved. An aggrieved person is a person whose registered trade mark shows prima facie a sufficient similarity to the

Respondent's registered trade mark to make it possible that his trade may be interfered with by the use of the other mark. In the instant case, the

applicants are aggrieved persons as the Respondent has relied on the impugned registration in an opposition proceedings between the same parties. In

view of the above, we are of the view that the applicant has a locus standi to file and maintain an application for rectification.

The other issue for consideration is that whether the registration is in contravention of the provisions of Section 11 of the Act. A trade mark may

be removed from the Register on the ground that on the date of application, the use of the mark was likely to cause confusion and deception. In this

case on hand, the applicants have been using a similar / identical trade mark since the year 1997 whereas the Respondent No. 1 had adopted the trade

mark only in the year 2002 but launched the product bearing the impugned trade mark in the year 2006. In such a case , on the date of application for

registration by Respondent No. 1 in the year 2002, the applicant's mark was already put to use and so there was likelihood of confusion and deception.

The impugned trade mark registered is in contravention of Section 11 of the Act.

The settled principle is that the mark must be looked at as used and not simply as registered. The impugned trade mark has been registered as

RHIZOME's IMPERIAL GOLD' but when used it is only the words IMPERIAL GOLD is prominently seen and not the word 'RHIZOME's'. The

applicant's contention is that they are the registered proprietors of the trade marks 'IMPERIAL BLUE', 'IMPERIAL RED' etc. in such

circumstances, there is every possibility of confusion being caused.

According to Kerley's law of Trade Marks and Trade Names (9th Edition, Paragraph 838) ""Two marks when placed side by side, may exhibit

many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark and not having the two

side by side for comparison, might well 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. Thus, for example a mark may represent a game of football; another

mark may show players in a different dress and in very different positions, and yet the idea conveyed by each might be simply a game of football. It

would be too much to expect that persons dealing with trade marked goods, and relying as they frequently do, upon marks, should be able to remember

the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by

some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have

been made by the owners of the trade mark they are already acquainted with for reasons of their own.

The apex Court in Parle's case (supra) held at para 9 ""9. It is therefore clear that in order to come to the conclusion whether 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 to prevent one design from being mistaken for the other. 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.

The test of similarity between the two marks have to be approached from the point of view of a man of imperfect recollection and average

intelligence as held by the Apex Court in Corn Products case. Here the product is being purchased by any person both literate and illiterate person of

average intelligence who go by the look. In such circumstances, we are of the view that there is every possibility of confusion and deception being

caused among the public.

The applicants claim to have used the trade mark IMPERIAL BLUE since the year 1997 whereas the Respondents claim to have used the

impugned trade mark since the year 2002. the Respondents have not disputed the applicant's user since 1997, whereas the applicants have stated that

though the Respondent's claim in the impugned trade mark application as to have used since 1.1.2002 have factually used only since 2006 which fact

has been admitted by the Respondent considering that the mark was adopted in the year 2002 but the launch was in the year 2006. it is, therefore,

clear that the applicants are prior in adoption and use of the identical trade mark and their trade mark is to be protected.

The Respondent's main contention was that the word 'IMPERIAL' was a common word and it was laudatory. If that be so, then the Respondents

themselves cannot have a statutory right over the word 'IMPERIAL.

The other contention of the Respondent was that the application is barred by delay, acquiescence and laches. In Addley Bowrne's TMS (1903) 20

RPC 105, it was held that ""delay per se in commencing the motion is not a valid defence as in matters concerning rectification of the Register public

interest is of paramount importance. Unless, therefore the action or neglect of an applicant has put the Respondent at some unfair disadvantage his

laches is sufficiently visited by punishment in the way of getting no costs, if he should succeed"". Going by the above observation, we are of the opinion

that the defence of delay raised by the Respondent is not a valid one. The impugned trade mark has been registered in the year 2005 and the applicant

became aware of the fact of registration in the year 2007 from the counter-statement filed by the Respondent in another opposition proceedings which

cannot be denied or disputed by the Respondent. The instant rectification application has been filed in 2008. in such circumstances, we do not think

there has been any delay and even if there is a delay that has not caused any damage to the Respondent as the same has not been pleaded or

substantiated by any evidence. Therefore, this contention also does not sustain.

Considering the above facts and circumstances, we think that the impugned trade mark 'IMPERIAL GOLD' has to be removed from the Register

of Trade Marks. The original rectification application is therefore allowed with a direction to the Registrar of Trade Marks to remove the trade mark

'IMPERIAL GOLD' registered under No. 1161682 in class 33 from the Register of Trade Marks. There shall be no order as to costs.