Trademark

SpicyIP Tidbit : Khoday Breweries loses in Battle of the Whiskies


images (1)Following opposition from global scotch whisky giant Chivas Holdings Ltd against the Khoday Breweries’ registered trademark “Royal Pipers”, the Intellectual Property Board(IPAB), Chennai recently ordered “Royal Pipers” removal from the trademark registry – by reason that it appears to bear a rather strikingly deceptive resemblance to Chivas’ own “100 Pipers” brand

Although the “100 pipers” trademark has been in use all over the world since 1949, it came to be registered by Chivas Holdings in India only in 1964 under the class of wine, spirit and liquor products. Chivas Holdings submitted that its continuous usage since 1949 has led it to become to be an extremely popular and well known brand associated with the firm.  It was alleged by the firm that the Bangalore-based Khoday Breweries had dishonestly registered and adopted the “Royal Pipers” trademark by imitating Chivas’ 100 Pipers.

Chivas Holdings accused Khoday Breweries of being a frequent trademark infringer, having previously infringed not only on other brands belonging to Chivas Holdings, but other companies as well. The Khoday Group, associated with a range of products “from liquor to engineering, stationery to diamonds, tissue culture, construction and computer software” as proudly stated on its website, appears to have a penchant for attracting court battles. In Kores (India) Limited vs Khoday Eshwarsa And Son, the case was centered around a trademark application filed by the petitioner in respect of Carbon papers, typewriting ribbons, stencils for duplicating machine, duplicating ink, etc that Khoday opposed on the grounds of it being similar to its own trademark. This opposition was upheld by the Assistant Registrar, but consequently struck down by the Bombay HC when Kores Limited dragged Khoday to court. On the other hand, the facts of the Diageo Brands B. V And Ors. vs Khoday Breweries Ltd  case as we discussed here are similar to the case that forms the subject matter of this post – here the Court noted that Khoday Breweries had sought to register 20 marks that were deceptively similar to Diageo’s Johnny Walker brand.

Looks like Khoday really does like to bite off more than it can chew.

Further, in its statement, Chivas Holdings went on to mentioned that Khoday Breweries had failed to disclose any legitimate reason for having registered a mark that so closely resembled that of Chivas’ in the same class of goods. It alleged that the mark was registered by Khoday with mala fide intention to damage the reputation and goodwill that “100 Pipers” had acquired over the years, by causing confusion in the minds of the people due to phonetically and structurally similar brand names – thus making it violative of section 11 (1) of Trademark Act 1999

Khoday consequently retaliated by stating that the firm cannot claim sole right over the mark and especially so, considering that the company had woken up 13 years after Khoday actually registered its “Royal Pipers” mark

However, it is interesting to note that the bench comprising Chairman Justice K.N. Basha and technical member, (Trademarks) Sanjeev Kumar Chaswa said that Khoday Breweries sent a letter to the IPAB Registry dated December 5, 2014 stating that they were not interested in pursuing the matter regarding the registration of its “Royal Pipers” mark, which had been renewed upto December 18, 2018. Thereby, the bench held that “in view of this, the Registrar of Trade Marks has been directed to remove the impugned trade mark “Royal Pipers” from the trademark registry in three weeks.”

 

 

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Kiran George

Kiran Mary George is a Third Year student at ILS Law College, Pune. Her first stint in the world of Intellectual Property law was an internship with a registered copyright society that granted her an insight into the world of copyright in music. Since then, her interest in IPR has taken strong hold, and she enjoys keeping close tabs on developments in the field. She is still discovering her interests, but so far takes a special liking to open access, copyright and trademarks.

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