While clarifying brand confusion and deceptive similarity in the alcoholic beverage industry, the Madras High Court ruled that the adoption of the composite mark ‘ORIGINAL CHOICE’, written in italic with the first letter ‘O’ and ‘C’ and the combination of both the letters ‘OC’ in its label is an intentional adoption to mislead the customers who possess average intelligence and ordinary memory. Accordingly, the Court directed the removal of John Distillers Ltd. (JDL) mark from the register of trademarks, while confirming the validity of the Allied Blenders and Distillers Pvt Ltd. (ABD) registration for “Officer’s Choice”.
Applying the anti-dissection rule and the dominant feature test, the Court found that the two competing marks, i.e., the whisky brand “Original Choice” of John Distillers Ltd. (JDL) as well as the “Officer’s Choice”, owned by Allied Blenders and Distillers Pvt Ltd. (ABD), are deceptively similar, as similarities are to be viewed from the eyes of average consumer, who normally perceives a mark as a whole and does not proceed to analyse its various details.
The Court therefore held that the enjoyment of the trademark ‘Original Choice’ by JDL had been in continuous disturbance, and any wrongful adoption of a mark in violation of Section 9(1)(a) and 9(2)(a) of the Trade Marks Act is at the risk of the adopter. Having held that JDL’s use of ‘ORIGINAL CHOICE’ is not bona fide and honest, the Court asserted that the mark is liable to be rectified, and it cannot coexist to the detriment of the lawful proprietor of ‘OFFICER’S CHOICE’.
The Division Bench comprising Dr Justice G. Jayachandran and Justice Mummineni Sudheer Kumar observed that no element of fraud on the Trademark Registry was committed by ABD by applying for registration of their trademark ‘Officer’s Choice’, based on the Board Resolutions dated way back in 1990, and the Assignment Deed dated February 26, 1991. The minutes of the board resolution of the original proprietor of the mark ‘OFFICER’S CHOICE’ and passing of consideration of Rs. 5 lacs for the assigned rights, speak volumes about the existence of the mark, its reputation and its potential in the trade.
The Bench also explained that an application made in anticipation of executing an assignment is not an act of fraud, as in contract law, the holder of an agreement derives interest in the subject matter, and when no illegality is made out and found to be a genuine application by the Registrar as well as the Intellectual Property Appellate Board (IPAB), it is futile to claim that the registration of ABD of their trademark ‘OFFICER’ S CHOICE’ is obtained by fraud.
Further, the Bench pointed out that the existence of the mark ‘ORIGINAL CHOICE’ in the midst of opposition and objections/rectification cannot be termed as peaceful co-existence. Section 57 of the Trademarks Act vests a wide power in the Tribunal to cancel or vary registration and to rectify the register either on application by any aggrieved person or even suo motu in cases where entries are made without sufficient cause or an entry wrongly remains in the register.
The Bench also referred to Section 9(1)(a) of the Trademarks Act, which stipulated that any trademark that is devoid of any distinctive character or not capable of distinguishing the goods or services of one person from those of another person, then the Trademark registry can refuse registration. Similarly, Section 9(2)(a) says that if a trademark is of such a nature as to deceive the public or cause confusion, the registration may be refused.
The Bench therefore concluded that the JDL has failed to establish its honest adoption, and the IPAB, having failed to compare the competing marks as a whole and its selective failure to compare other components except the two words and its conscious omission to conduct the dominant feature test, renders its finding unsustainable.
Briefly, the dispute relates to 1990, when the ABD, by registering a trademark over “Officer’s Choice”, had acquired the mark from its previous proprietor through proper assignment and board resolutions. Later, ABD’s whisky, marketed under the “Officer’s Choice” brand, commanded substantial market recognition and goodwill. Sometime later, JDL introduced its whisky under the name “Original Choice”, which was claimed by ABD as a deliberate imitation to ride on the reputation of its established brand. ABD approached the Trademark Registry seeking the removal of JDL’s mark on the grounds of deceptive similarity. The Intellectual Property Appellate Board (IPAB), however, ruled that the marks were not deceptively similar.
Appearances:
Senior Advocate P.S. Raman and Advocate K. Premchander, for the Petitioner
Senior Advocate Sanjay Jain, along with Advocates Sushant M. Singh, G. Ramji, R. Sathish Kumar, and T.V. Krishnamachari, for the Respondents
