Pernod Ricard S.A. France Vs Rhizome Distillers Pvt. Ltd

Pernod Ricard S.A., owner of the well-known whisky brand IMPERIAL BLUE used in India since 1997 with substantial goodwill and turnover exceeding Rs. 317 crores in 2007, filed a rectification application in 2008 seeking removal of Rhizome Distillers Pvt. Ltd.'s registered trademark RHIZOME'S IMPERIAL GOLD (No. 1161682 in class 33) after discovering the registration through opposition proceedings, alleging that the mark was deceptively similar to IMPERIAL BLUE, likely to cause confusion among consumers of average intelligence and imperfect recollection, especially as the respondent prominently used only IMPERIAL GOLD in practice while the applicant was prior in adoption and use and the registration contravened Sections 11, 18 and 57 of the Trade Marks Act, 1999; the respondent claimed adoption in 2002 with launch in 2006 and argued the word IMPERIAL was common to trade and no confusion existed, but the IPAB found the applicant to be an aggrieved person with locus standi, held that likelihood of confusion existed on the date of the respondent's application due to the applicant's prior use, applied the test of overall similarity and imperfect recollection, rejected defences of delay and commonality of the word IMPERIAL, and allowed the rectification by directing removal of the mark from the register.

A person aggrieved under Section 57 includes a trader in the same field whose rights are restrained or who may be damaged by the registration, especially where the impugned mark is relied upon in opposition proceedings between the parties (Paras 28-30).

Registration contravening Section 11 on the date of application due to likelihood of confusion from prior use of a similar mark warrants rectification (Para 31).

Marks must be compared as used rather than merely as registered; prominent use of the essential feature IMPERIAL GOLD against prior IMPERIAL BLUE creates confusion (Para 32).

Test of deceptive similarity requires consideration of broad and essential features, overall impression, and viewpoint of a consumer with average intelligence and imperfect recollection, without side-by-side comparison (Paras 33-35, citing Kerly's Law of Trade Marks and Parle Products case).

Prior adoption and use entitle protection even against a registered mark; false claim of user in application supports rectification (Para 36).

Word IMPERIAL being laudatory or common to trade cannot confer exclusive rights on the registrant claiming such commonality (Para 37).

Delay, laches or acquiescence is not a valid defence in rectification proceedings as public interest predominates unless unfair disadvantage is proved (Para 38).

Case Title: Pernod Ricard S.A. France Vs Rhizome Distillers Pvt. Ltd. and Registrar of Trade Marks

Order Date: December 24, 2010

Case Number: ORA/248/08/TM/CH

Neutral Citation: (2011) 1 MIPR 322 : (2011) 46 PTC 96 (IPAB)

Name of Court: Intellectual Property Appellate Board, Chennai

Name of Judges: Hon'ble S. Usha, J; Syed Obaidur Rahaman, Technical Member

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]

[Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]