TaxTMI 
TaxTMI 
TaxTMI 
2013 (9) TMI 99
X X X X Extracts X X X X
X X X X Extracts X X X X
....he 4th respondent is a company incorporated under the laws of France, having their registered office at Paris, France and they are the ultimate holding company of various entities, all engaged in the business of manufacturing and/or distribution of wines, liquors and spirits. The 4th respondent company features as one of the two leading players of the world in the spirits and wine market and is number one player outside United States of America. 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 and their products - whiskies, liquors and other spirits - are sold in various internationally renowned and acclaimed brands such as 'ROYAL SALUTE', 'CHIVAS REGAL', '100 PIPERS' etc. Apart from these brands, the 4th respondent, through its subsidiaries, owns locally acclaimed brands such as 'IMPERIAL BLUE' and 'ROYAL STAG'. 3. While so, the 4th respondent filed an application before the 2nd respondent Intellectual Property Appellate Board for removal/rectification of the petitioner's trade mark 'Rhizome's IMPERIAL GOLD', stating that they are the registered proprietors of th....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... respondent that the application No.1161682 for impugned registration for the trade mark 'Rhizome's IMPERIAL GOLD' was advertised in Trade Mark Journal No.1305 (Supplement) III and was made available to the public on 04.11.2003; but the said advertisement escaped the attention of the 4th respondent and was registered inadvertently by the 3rd respondent in contravention of the objective and provisions of the Trade Marks Act, 1999. 6. Subsequently, the 4th respondent filed a suit before the Delhi High Court in the year 2008 in C.S.(O.S.)No.2314 of 2008 and a learned single Judge of Delhi High Court has granted an order of interim injunction restraining infringement of plaintiff/4th respondent's trademark and copyright by its order dated 06.11.2008 in I.A.No.13426 of 2008. Aggrieved over the same, the petitioner filed two appeals before the Division Bench of the Delhi High Court in FAO(OS) No.484/2008 and FAO(OS) No.497/2008 and the Division Bench allowed the appeals holding that the word 'IMPERIAL' is laudatory in nature and common to the trade which cannot be monopolized by any one single party and allowed the petitioner to use the trade mark 'RHIZOME'S IMPERIAL GOLD', but directed....
X X X X Extracts X X X X
X X X X Extracts X X X X
....plication. 8. The 3rd respondent Board, after hearing both sides, has allowed the application on a finding, inter alia, that the registration of the trade mark 'IMPERIAL GOLD' is in contravention of the provisions of section 11 of the said Act; the writ petitioner's trade mark was causing confusion and deception in the minds of the public; the 4th respondent has been using the similar identical trade mark since 1997, whereas the writ petitioner has adopted the trade mark only in the year 2002, but launched the product bearing the impugned trade mark in the year 2006; on the date of application for registration by the writ petitioner in the year 2002, the 4th respondent's trade mark was already put to use and there was likelihood of confusion and deception; further more, it is the contention of the 4th respondent that they are the registered proprietor of IMPERIAL RED, IMPERIAL BLUE, etc. and in such circumstances, there is every possibility to cause confusion'and thus, allowed the application filed by the 4th respondent and directed the 3rd respondent to remove the trade mark of the writ petitioner, namely, 'RHIZOME'S IMPERIAL GOLD'. Challenging the same, the present writ petition....
X X X X Extracts X X X X
X X X X Extracts X X X X
....sel further submitted that the Board, by applying the principle of infringement, has decided the application filed by the 4th respondent which is purely a subject matter of civil court and therefore, the order dated 24.12.2010 is liable to be set aside. 10. That apart, the learned senior counsel for the petitioner submitted that in the appeal filed by the writ petitioner before the Division Bench of Delhi High Court as against the interim injunction granted by the single Judge in the suit filed by the 4th respondent, the Division Bench has held that the word 'IMPERIAL BLUE' and 'RHYZOME'S IMPERIAL GOLD' are totally dissimilar and both the parties have to co-exist and thus, allowed the appeal. When that being the position, the order passed by the 2nd respondent Board, by allowing the application filed by the 4th respondent and directing the 3rd respondent to remove the writ petitioner's trade mark 'RHIZOME's IMPERIAL GOLD' is not legally sustainable and is contrary to the findings rendered by the Division Bench of the Delhi High Court, which has become final. The learned senior counsel further submitted that the writ petitioner has also agreed to change the label, trade dress and g....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ark their products, whereas the writ petitioner, in the same way, by adding a word 'GOLD' along with 'IMPERIAL', is attempting to trade upon the goodwill and reputation that vest completely in the trade mark 'IMPERIAL BLUE' of the 4th respondent and therefore, such a trade mark cannot be registered. Considering these aspects, the 2nd respondent has correctly allowed the application filed by the 4th respondent. The learned senior counsel further submitted that the learned single Judge of the Delhi High Court has granted an order of interim injunction only based on the case put forth by the 4th respondent on the ground of passing off and not on the ground of infringement. Aggrieved over the same, the petitioner has filed an appeal before the Division Bench, in which, the Division Bench has made certain observations with regard to the word 'IMPERIAL' stating that the word 'IMPERIAL' is a common word. In this regard, the learned senior counsel for the 4th respondent further submitted that the observation made by the Division Bench of the Delhi High Court is only based on the ground of passing off and not on the other aspects of the case and hence, the writ petitioner cannot take advant....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... The learned senior counsel for the 4th respondent further submitted that though the petitioner has referred to number of trade marks and other products with the word 'IMPERIAL', those trade marks were not a conceptual coinage of IMPERIAL + colour. Therefore, the reference made by the learned senior counsel for the writ petitioner with regard to other trade marks may not be correct. The learned counsel for the 4th respondent has also relied on the judgments reported in KAVIRAJ PANDIT DURGA DUTT SHARMA .vs. NAVARATNA PHARMACEUTICAL LABORATORIES (AIR 1965 SC 980), RUSTON HORNBY LTD., .vs. Z.ENGINEERING CO., (AIR 1970 SC 1649), AMRITDHARA PHARMACY .vs. SATYA DEO GUPTA (AIR 1963 SC 449) and PANKAJ GOEL .vs. DABUR INDIA (2008(38) PTC 49). 14. The learned counsel for the 4th respondent further submitted that a writ of certiorari can be issued only to correct the errors of jurisdiction committed by inferior courts or Tribunals, without jurisdiction or is in excess of them. In the instant case, absolutely there is no jurisdictional error. Therefore, no interference is called for into the order passed by the 2nd respondent. In this regard, the learned senior counsel has relied upon the dec....
X X X X Extracts X X X X
X X X X Extracts X X X X
....or comparison. This is the "anti-dissection" rule. The rationale for the rule is that the commercial impression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed:- "The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety" The anti-dissection rule is based upon a common sense observation of customer behaviour: the typical sho....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e the word 'IMPERIAL' is only a common word. The ordinary dictionary meaning of the word refers to an empire, an emperor or empress, of a country having control or sovereignty over other countries or colonies, etc. But, at the same time, it is the submission of the learned counsel for the 4th respondent that by adding a colour, namely, Blue, along with the word 'IMPERIAL', they innovated a structural and conceptual coinage of IMPERIAL + Colour, namely, 'IMPERIAL BLUE', which is distinctive and unique component. Subsequently, the petitioner has also registered yet another trade mark 'IMPERIAL RED'. Therefore, the word 'IMPERIAL' has to be looked into along with the colour to decide the issue, 'whether the trade mark of the petitioner could be registered or not'. But it is the reply of the learned senior counsel for the petitioner that conflicting composite marks are to be compared by looking at them as a whole, rather than breaking up the marks into their component parts for comparison. So far as the instant case is concerned, the word 'IMPERIAL' is a common word and by adding the house mark 'RHIZOME' as prefix and a colour, namely, 'GOLD', the trade mark of the petitioner has becom....
X X X X Extracts X X X X
X X X X Extracts X X X X
....nt is entitled to succeed in its action for infringement of its trade mark". 20. On going through the decisions relied on by the learned counsel on either side, we find that in the judgment relied on by the learned senior counsel for the petitioner reported in HIMALAYA DRUG CO., vs. SBL LIMITED (2010 (43) PTC 739 (Delhi) (cited supra), the Delhi High Court has made a reference in McCarthy on Trademarks with regard to the comparing marks by applying two principles, i.e. (i) Anti-Dissection Rule and (ii) Compare composition as a whole. 21. A reading of the said judgment would show that the conflicting composition marks must be compared in their entireties. A mark should not be dissected or split into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. Undoubtedly, the word 'IMPERIAL' is a common and universal word. As observed earlier, nobody can have an exclusive right over the said word. If 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 sev....