2013 (9) TMI 99 - HC - Companies Law

Court rules in favor of petitioner's trademark 'RHIZOME'S IMPERIAL GOLD' over 'IMPERIAL BLUE.'

Rhizome Distilleries Pvt. Ltd. Versus Union of India and others

The court ruled in favor of the petitioner, holding that their trademark 'RHIZOME'S IMPERIAL GOLD' was sufficiently distinguishable from the 4th ... Exclusive Right over Trademark - Whether the respondent can claim any exclusive right over the individual element 'IMPERIAL' when a trade mark consists of several matters – Held 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 - the contention that the trade mark of the writ petitioner was deceptively similar to the trade mark cannot be accepted - no one can claim exclusive right for the word 'IMPERIAL' since the word 'IMPERIAL' was only a common word - the petitioner had also registered yet another trade mark 'IMPERIAL RED' - Therefore, the word 'IMPERIAL' had to be looked into along with the colour to decide the issue, 'whether the trade mark of the petitioner could be registered or not' - The anti-dissection rule which is prevalent both in US as well as in India is really based upon customer behavior - the trade mark of the petitioner looked as a whole, namely, 'RHIZOME'S IMPERIAL GOLD', with the trade mark of the 4th petitioner 'IMPERIAL BLUE without making any dissection 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for rectification of the registration, particularly considering the factum that the Liquor India Private Limited had withdrawn their objections before the Commissioner on 14.03.2006 and allowed the petitioner to carry on the business under the name of RHIZOME IMPERIAL GOLD – Order set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 allowed. Issues Involved:1. Exclusive right over the individual element 'IMPERIAL.'2. Application of Section 11 of the Trade Marks Act by the Intellectual Property Appellate Board (IPAB).Detailed Analysis:1. Exclusive Right Over the Individual Element 'IMPERIAL':The petitioner contended that the word 'IMPERIAL' is a common word and cannot be monopolized by any single party. The petitioner argued that by adding the house mark 'RHIZOME' as a prefix and the color 'GOLD' as a suffix, their trademark 'RHIZOME'S IMPERIAL GOLD' becomes distinctive and distinguishable from the 4th respondent's 'IMPERIAL BLUE.'The court referred to the judgment in HIMALAYA DRUG CO. vs. SBL LIMITED (2010 (43) PTC 739 (Delhi)), which emphasized the 'anti-dissection rule.' This rule states that conflicting composite marks must be compared in their entirety rather than dissecting them into component parts. The court noted that the commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail.The court also considered the judgment in DURGA DUTT SHARMA vs. NAVARATNA PHARMACEUTICAL LABORATORIES (AIR 1965 SC 980), which stated that in an action for infringement, the similarity between the plaintiff's and defendant's marks must be so close that it is likely to deceive. However, in the case of passing off, the defendant may escape liability if the added matter is sufficient to distinguish his goods from those of the plaintiff.The court concluded that by adding the house mark 'RHIZOME' and the color 'GOLD,' the petitioner's trademark was sufficiently distinguishable from the 4th respondent's 'IMPERIAL BLUE.' Therefore, the 4th respondent cannot claim exclusive right over the word 'IMPERIAL.'2. Application of Section 11 of the Trade Marks Act by IPAB:The IPAB had allowed the 4th respondent's application for rectification on the grounds that the petitioner's trademark 'IMPERIAL GOLD' was causing confusion and deception among the public. The IPAB applied the provisions of Section 11 of the Trade Marks Act, which deals with the relative grounds for refusal of registration.The court noted that the 4th respondent's trademark 'IMPERIAL BLUE' was registered on 12.02.1997, while the petitioner's application for 'RHIZOME IMPERIAL' was advertised on 28.03.2003. Despite being aware of the petitioner's mark, the 4th respondent did not challenge the registration at that time. The court also observed that the petitioner's label 'RHIZOME'S IMPERIAL GOLD' had been in use for several years without any objections from the 4th respondent.The court referred to the judgment in RUSTON & HORNBY LTD. vs. Z.ENGINEERING CO. (AIR 1970 SC 1649), which held that if the defendant's trademark is deceptively similar to the plaintiff's, the fact that an additional word is added is of no consequence. However, the court distinguished this case by noting that the petitioner's addition of 'RHIZOME' and 'GOLD' made their trademark sufficiently distinguishable.The court found that the IPAB had erroneously applied the principles of infringement, which are the domain of a civil court, rather than focusing on whether the petitioner's trademark could be registered. The court held that the grounds under Sections 9 and 11 are available only at the time of raising objections for registering the trademark, not for rectification.Conclusion:The court concluded that the IPAB's order was not legally sustainable. The court set aside the IPAB's order, allowing the writ petition and ruling in favor of the petitioner. The court emphasized that the principles for refusing registration cannot be applied for rectification after the trademark has been in use for several years without objections.