Yesterday, the Delhi High Court had come up with a judgment vindicating IPAB’s stance regarding a matter of trademark opposition. The matter, titled Champagne Moet And Chandon v. Union Of India & Ors. [W.P. (C) 9778 of 2006], involves a trademark relating to champagne, which ought to prove especially interesting to the readers who also double as wine connoisseurs.
Facts: The Petitioner (Champagne Moet) had challenged a trademark application filed by the Respondent (M/s Moets) regarding a mark ‘MOETS’ in 1986. Petitioner is a French manufacturer of wines sold under the trademark MOET and MOET & CHANDON in several countries since 1743. It claimed to have shipped its Champagne bearing the marks MOET & CHANDON to India as far back as 1906 for sale till date. It also holds a registration for the trademark MOET from 1982 onwards and for the trademark MOET & CHANDON from 1985 onwards under the Trade and Merchandise Marks Act, 1958.
The Respondent is a Delhi-based partnership firm that claimed to have coined the trademark MOETS in 1967 from ‘Mohit’, which was one of the partners’ surname. As per the Respondent, the mark was adopted as the trade name/trading style of the firm and had been used continuously by it since then, thereby having acquired goodwill and reputation among the public regarding the firm.
The Deputy Registrar of Trademark had dismissed the Petitioner’s original opposition on the following grounds:
The rival marks were identical, but the goods were not the same, with the Petitioner selling quality wines, spirits and liquors and the Respondent selling meat, fish, poultry and game and meat extracts. Moreover, the Petitioner had failed to establish usage since 1947, as originally claimed by it. The mark being a significant part of the Respondent’s trading style since 1967, it could therefore not be said that the adoption and use of the mark by the Respondent was dishonest. Finally, since the Respondent had established usage for a substantial period, it qualified for registration under S. 9 of the TM Act, 1958.
The Petitioner filed an appeal to the IPAB, which was subsequently dismissed for the following reasons:
The documents produced by the Petitioner did not show anything relevant to identify its trade in India prior to 1988. None of the documents referred to the Petitioners trademark MOET alone, but to the composite mark MOET & CHANDON. Nor did the Petitioner produce any evidence to show that it had attained reputation and goodwill in respect of its products in India with the mark MOET. It also failed to establish the plea of prior user. The difference in the goods as well as the distributing channels of the Petitioner and the Respondent was also another factor.
This dismissal led the Petitioner to file a petition under A. 226 of the Constitution of India at the Delhi High Court.
Arguments: Petitioner contended that that the adoption of the mark MOET by the Respondent was fraudulent and dishonest particularly since it had used two dots on the letter E, thereby copying the essential feature of the Petitioner’s mark. Moreover, the Petitioner’s products (wines) and the Respondent’s products (food) are both table products; respectable eating houses and hotels cater for both and, therefore, the channels of trade were the same. There was a valid nexus between food and drinks. Consequently, wines and meat, poultry etc. were related goods and sold through a common trade channel. Nor had the Petitioner ever acquiesced to the Respondent’s usage of the mark, a defence which the Respondent shouldn’t be allowed to claim in any case, being entirely aware of the Petitioner’s mark and thus having acted dishonestly.
The Respondent’s contentions were that the Petitioner had not placed any documents to show prior use, that there was acquiescence on the part of the Petitioner to the Respondent’s use of the trademark MOET (as evident from the lack of any infringement suit filed by the Petitioner in that regard against the Respondent), and that there is a difference in the goods being traded by the Petitioner and the Respondent, which brooks no problem of deception or confusion.
Judgment: The High Court found that on the basis of the evidence submitted, the Petitioner hadn’t satisfactorily established sale of its goods in India prior to 1980 (which was after the Respondent’s use) and that none of the evidence provided by the Petitioner referred to the mark MOET alone, but to the composite mark MOET & CHANDON. Also, the Respondent was able to establish its own goodwill in the trade regarding the mark MOETS. In the light of the Respondent’s usage of the mark since 1967, the Court decided to ignore the allegation of dishonest usage by the Respondent in using two dots above the letter E. The difference in goods and channels of trade was also agreed upon by the Court.
The Court further opined that the contention that a dishonest adoption of a mark would not entitle Respondent to raise the defence of acquiescence was not tenable in view of the finding that the user of the mark by Respondent couldn’t be said to be dishonest. Further, the adoption of MOETS as part of its trading name by Respondent had not been sought to be prevented by the Petitioner at any point in time. Therefore, the plea of acquiescence merited acceptance. Therefore, the Court affirmed the IPAB’s order of dismissing the original opposition filed by the Petitioner and allowing the mark to be registered by the Respondent.
While lack of evidentiary diligence on the Petitioner’s part proved to be its undoing for the most part in this case, one wonders how the matter would have turned up had the Petitioner been able to establish sale of its goods in India prior to the Respondent’s use. In that case, it would have been matter of weighing between the Petitioner’s prior use and the Respondent’s defence of acquiescence and differing goods and channels of trade.
I think the petitioner’s prior user would have nothing to do with the defence of acquiescence and differing goods and channels of trade. A person may be prior user and yet be guilty of acquiescence, besides the goods being of diferent channels of trade.
Delhi High Court rains on Champagne’s Parade
The appeal preferred by Champagne Moet And Chandon before the DB of Delhi High Court in LPA No: 588 of 2011 has been dismissed by the Bench of Hon’ble The Chief
Justice Mr. Dipak Mishra and Hon’ble Mr. Justice Sanjeev Khanna vide their judgment dated 19th September, 2011. The DB in the said appeal entitled as Champagne Moet And Chandon v. Union Of India & Ors. has held that while exercising the power of judicial review under Article 226, it cannot be converted into an appeal. The judicial review is directed not against the decision but it is confined to the examination of decision making process. If the decision is manifestly unreasonable or if there is perversity of approach, if the non examination of relevant factors and conclusion has been arrived at, the same comes within the scope of judicial review. In case the view taken is plausible and there is no perversity of approach and the application of law to the facts is correct, the concept of judicial review is not attracted.
The reasoning given by the DB sustaining the concurrent findings of the Registrar, The IPAB and the single Judge include:
1. The initial adoption of the contesting respondent was not dishonest and the respondent was entitled to raise the defense of acquiescence as was held by the Single Judge;
2. Mr. Mohit Bindra who was one of the partners of the respondent sued to spell his name as MOET and that there is phonetic similarity between MOHIT and MOET.
3. The contesting respondent has been using the trade mark since 1967;
4. The species of goods catering to the educated and discernible consumers is clearly demonstrable, it cannot be said that the adoption of the mark was dishonest;
5. The application for the registration of the contesting respondent in class: 16 remained unassailed (the opposition by Champagne Moet And Chandon was dismissed and no appeal was filed there against);
6. Nothing was brought on record to show that the contesting respondent was intending to claim benefit and advantage of appellant’s mark;
7. The opposition of the appellant was not within the parameters and was rightly dismissed by Registrar