Pernod Ricard S.A., a French company owning the IMPERIAL BLUE whisky trademark used in India since 1997 with substantial sales and reputation, filed a rectification application to remove Rhizome Distillers Pvt. Ltd.'s registered mark Rhizome's IMPERIAL GOLD under No. 1161682 in class 33, alleging deceptive similarity, dishonest adoption, copying of their mark and ROYAL STAG trade dress, fraud on the registrar, and contravention of Sections 11(1), 11(3), 11(10), 18, and 57 of the Trade Marks Act 1999; Rhizome countered with claims of honest adoption since 2002, use since 2006, distinctiveness, and that IMPERIAL is common and laudatory; the IPAB reasoned that Pernod Ricard is an aggrieved person with locus standi due to potential trade interference, the marks are deceptively similar phonetically and structurally likely to cause confusion among unwary consumers under the imperfect recollection test despite side-by-side differences, Pernod Ricard's prior adoption and use since 1997 prevails over Rhizome's later use and false 2002 claim, the registration contravenes Section 11 as it would deceive on the application date, delay is not a bar given public interest, and actual use emphasizes IMPERIAL GOLD prominently; the board allowed the application and directed removal of the mark from the register without costs.
- A trade mark registration may be rectified and removed if it contravenes Section 11 of the Trade Marks Act, 1999, by being deceptively similar to a prior mark, assessed holistically as used rather than merely as registered, applying the test of likelihood of confusion from the viewpoint of a consumer with average intelligence and imperfect recollection, even if the word 'IMPERIAL' is common when combined with colors indicating source [Pernod Ricard S.A. vs Rhizome Distillers Pvt. Ltd., ORA/248/08/TM/CH, decided on 24.12.2010 by IPAB, paras 31-35].
Case Title: Pernod Ricard S.A. Vs Rhizome Distillers Pvt. Ltd. & Anr., Order date: Dec. 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 Judge: Hon'ble Judges: 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]
