|Image from here|
Case Name: Allied Benders and Distilleries Pvt. Ltd. v. M/s. John Distillers Ltd. & Ors. [Intellectual Property Appellate Board Order (No. 44 of 2013); ORA/143/2008/TM/CH and ORA/34/2008/TM/MUM and ORA/34/2008/TM/MUM].
Decision Date: March 8, 2013.
Bench Composition: Hon’ble Smt. Justice Prabha Sridevan (Chairman) and Hon’ble Ms. S. Usha (Vice Chairman).
Facts of the Case: Allied Benders and Distilleries Pvt. Ltd. (ABD) manufactures and markets alcoholic beverages and has been using and promoting the mark OFFICER’S CHOICE for some time. The said mark had been assigned to M/s BDA Breweries & Distillers Ltd. by Cruickshank & Co. by a Deed of Assignment dated February 26, 1991 and the assignment was subsequently approved by the Bombay High Court. ABD became the proprietor of the mark as per the vesting of the liquor business of M/s. BDA into ABD. Evidences including market survey reports have been filed by ABD to prove extensive use and the growth of the reputation of the mark, along with high likelihood of confusion with the mark ORIGINAL CHOICE used by John Distillers Ltd. (JD). ABD has been opposing the adoption and use of the latter mark since 1995. The two marks having the same acronym (OC) perpetrates further confusion, as alleged by ABD. According to ABD, JD’s mark shall not remain. JD, on the other hand, also claims to be well-entrenched in the business of liquor manufacture & sale and has adopted its mark bonafide and argues that ABD’s mark must go since it had committed fraud on the Trademark Registry.
Issues: Whether the marks of ABD and JD are both bona fide and valid and whether there is any likelihood of confusion between the two.
Arguments: ABD argued that OFFICER’S CHOICE had been in use from 1986, Cruickshank & Co had applied for it in 1990 and registration was granted in 2007. In 1995, ABD had opposed JD’s application for label approval of ORIGINAL CHOICE before the Excise authorities, but without any success. When JD expanded its sales beyond Karnataka in 2002, ABD had filed OS NO. 1058/2002 before the Delhi High Court, although no interim order had been obtained. In the Written Statement, JD had referred to ABD’s priority of user and also the strong consumer loyalty to OFFICERS CHOICE . Furthermore, since OFFICERS CHOICE was registered before ORIGINAL CHOICE, ABD had both statutory and common law right over JD.
Moreover, the nature of business and trade channels for the two products are alike and no manufacturer can claim to be ignorant of the mark of a rival in said business. Thus ABD’s contention was that JD had deliberately adopted a mark deceptively similar to ABD’s mark. Reliance was placed on the Cadila Case (2001 PTC 541 SC) for determining the factors for deciding deception and confusion, on the George Ballantine & Son Ltd. V. Ballantyne Stewart & Coy Ltd. (1959 RPC (273)) for tendency to abbreviate marks in said business and on the Taverner’s case to prove the case of initial natural confusion.
JD’s arguments consisted of a technical objection that when ABD had filed Form TM-1 for registering its mark claiming ownership from a particular date, it had actually not obtained the right to apply for the mark, since on those dates, it was Crunkshank & Co, the assignee of the mark, who was the owner. Since ABD had given a false or wrong statement, it was therefore not entitled to any relief, since the registration of the mark itself lacked validity. [ABD countered this argument saying that Board resolutions existed to prove that the assignment was through and in view of the then existing relationship between Cruickshank & Co and BDA (the predecessors of ABD), it would be clear that there was no intention to deceive.]
JD’s next argument said that the Trade mark Registry had granted BDA the mark subject to disclaimer to the word ‘CHOICE’, which BDA had accepted. This would mean that ABD cannot object to the adoption of ORIGINAL CHOICE by JD. Furthermore, BDA’s subsequent objection to JD’s mark had failed before the Excise authorities once in a previous hearing. Subsequently, even the Delhi High Court had refused to rule in favour of ABD by awarding the latter with an injunction.
JD further submitted that when choice is disclaimed, what was left was OFFICER’s and ORIGINAL which were not likely to confuse the consumer. Although JD’s product came later than ABD’s, at present both the rivals were similarly posited in the business, since JD has also built a huge consumer base. Nor has the evidence filed by ABD proven to be strong enough to establish confusion.
Judgment: With regard to the similarity and likelihood of confusion between OFFICER’S CHOICE and ORIGINAL CHOICE, the question is whether to consider the names as a whole or only the non-disclaimed parts of them [OFFICER’S AND ORIGINAL]. Relying on the decision in Ashok Chandra Rakhit Ltd. case, the IPAB found out that the disclaimed parts are not within the protection of the statute and that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive right to the proprietor of the mark to the use of any particular word or name contained therein apart from a mark as a whole. Therefore, in the present case, OFFICER’S CHOICE, despite being earlier, does not give ABD the exclusive right to the word CHOICE; however, the consumer may not be aware of such disclaimer and his consideration is likely to be based on the entire mark. Had the marks also been associated with identical labels, the situation might have been different, but the IPAB made it clear that it is doing this hypothetical comparison only on the basis of the words alone. On such consideration, the IPAB found that there is little or no scope of confusion between the two marks.
Also, despite the fact that ABD had not challenged the Excise authorities’ decision, it had still filed subsequent objections against JD’s mark before the Delhi High Court and hence IPAB opined that ABD’s conduct was not that of a party acquiescing in the continuance of JD’s mark in the register.
The IPAB found flaws with the evidence of confusion or lack thereof submitted by the parties in the form of affidavits and market surveys. It went on to look at the marks themselves and relied on the Bali Case to conclude that the marks were in no way identical, nor was there any likelihood of confusion and hence both the marks were capable of standing independent on each other.
With respect to the technical objection of whether the Counter statement filed by JD ought to have been received and whether it is non-est in the eye of law, the IPAB held that there was no jurisdictional error in receiving the said Counter Statement.
Regarding the tendency to abbreviate the marks, the IPAB held that a mark can be removed on such grounds only on the basis of strong evidence from the consumers and the retailers of such abbreviation and resulting confusion which has not been presented in this case.
With respect of whether ABD had defrauded the Trademark authorities while applying to register its mark at a time when the ownership lay with Cruickshank & Co., the IPAB took into consideration the evidence submitted by ABD and opined that there did not appear to have been any intention of defrauding.
Decision: ‘ORIGINAL CHOICE’ and ‘OFFICERS CHOICE’ are not deceptively similar to each other and are not likely to confuse the public. Hence the IPAB rejected the contentions of both the parties that the other’s mark ought to be removed and all related applications were dismissed.