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Judgment
Prabha Sridevan, J
Both the parties are in the liquor business. The financial stakes are high obviously, though it is submitted that the appearance of the marks and the
labels are as on date very different from one another, the battle has been fought over several days, the two Senior Counsel engaged us with the
different issues that are involved in this case. Raymond Chander said ""There is no bad whisky. There are only some whiskeys that aren't as good as
others"". We do not know into which category the parties fall, we are only concerned with their marks. The mark of the applicant in
ORA/143/2008/T/CH i.e. Allied Blenders & Distillers (ABD) is ""OFFICERS CHOICE"". The mark of the applicant in ORA/34/2008/TM/CH John
Distillers Ltd. (JD) is ""ORIGINAL CHOICE"". If the names are abridged to the initials, it is obvious that both will be ""OC"". This is one of the bone of
the contention. There are many others. The parties have also raised some technical objections against each other. According to Allied Blenders &
Distillers (ABD), John Distilleries (JD) had in their opposition to ABDs mark in parallel proceedings raised the question of similarity, confusion and
deception. Therefore, they are bound by this statements and in ORA/143 /2008/TM/CH the issues of confusion and deception stand admitted. They
are estopped from contending otherwise. To this, John Distillers (JD) stand is that they have filed amendments in those oppositions for deleting other
grounds. The other technical objection raised by ABD is that the Counter Statement was filed by JD long after the time granted under the law, had
passed. And in any event, extensions of time were granted by the Deputy Registrar who had no authority to sanction. And these extensions are,
therefore non-est in the eye of law. Therefore, this Board shall not take into account the Counter Statement. To this JD's response is that they had
filed the Counter Statement after obtaining extension from the Deputy Registrar who alone had been granting extension at that time. When the last
such extension was granted JD had sent the Counter Statement within the time granted and it was because of intervening holidays that the mail was
not delivered on time.
The technical objection raised by John Distillers is that when Allied Blenders & Distillers (ABD) filed its Form TM-1 for registering its trade mark
claiming ownership from a particular date, it had actually not obtained the right to apply for the mark. On those dates, it was Crunkshank & Co, the
assignee of the mark who was the owner. As they had given a false or wrong statement, ABD Distillers was not entitled to any relief. It was pointed
out that it was four months after the date on which the Form TM-1 was filed, that the Assignment deed was actually executed and consideration was
paid. The user of Cruickshank & Co. cannot be the user of ABD. In fact Crucikshank & Co. had filed a suit for declaration that the assignment deed
was invalid. It was contended that the fact that subsequently a settlement was arrived, cannot advance the case of ABD. To which ABD replied that
there were several Board resolutions which would make it clear that it was understood that the assignment was through and indeed it was and if there
was some inaccuracy, in view of the then existing relationship between Cruickshank & Co. and BDA. (the predecessors of ABD) it would be clear
that there was no intention to deceive. And unless there is fraudulent intent, a wrong statement cannot be a ground to deny ABD its right. It was also
submitted that the fact that the matters pending in Court have now been resolved amicably will only advance the case of ABD. We will deal with
these technical objections at the end.
We will first take up the objection as to the registration of the trade mark itself, as for instance, the effect of disclaimer, effect of acquiescence, the
proof relating to confusion & deception, dishonesty in adoption of the mark etc. we will deal with the facts in brief.
ABD is in the business of manufacture & marketing alcoholic beverages including Indian made foreign liquor. The trade mark ""OFFICER'S
CHOICE"" was originally adopted by Cruickshank & Co. This was assigned to M/s. BDA by a Deed of Assignment dated 26.02.1991. Subsequently,
by a Composite Scheme of Arrangement, duly approved by the Hon'ble Bombay High Court. ABD became the proprietor of the mark OFFICER'S
CHOICE as per the demerger, transfer and vesting of liquor business of M/s. BDA Breweries & Distillers limited into ABD (P) limited. According to
ABD it has been using and promoting the mark OFFICER'S CHOICE and publicizing its products through the predecessors in title and thereafter by
itself. There is an evidence of extensive use and the growth of the reputation of the mark. ABD had also filed market surveys to show the high
likelihood of confusion. Since 1995, ABD has been opposing the adoption and use of the mark ORIGINAL CHOICE. ABD had filed its Excise
objection in 1995 against the label ""ORIGINAL CHOICE"". Initially JD's alleged use was limited to the State of Karnataka and they ventured outside
Karnataka in 2002. Immediately, a legal notice was sent to them, and a, passing off suit was filed before the Delhi High Court. ABD filed its
opposition to the registration of the mark but it met with failure. But the Hon'ble Supreme Court while dismissing ABD's special leave petition directed
the hearing of the rectification petition. According to ABD, JD's mark shall not remain.
JD on the other hand also claimed to be well entrenched in the business of liquor manufacture & sale and had adopted its mark bona fide ABD's
mark on the other hand must go since it had committed fraud on the Registry.
The learned Senior Counsel Mr. P.S. Raman appearing for ABD submitted that their mark OFFICER'S CHOICE had been in use from 1986.
Cruickshank & Co. had applied for it in 1990 and registration was granted in 2007. In 1995, when the respondent applied for label approval of
ORIGINAL CHOICE, ABD opposed it before the Excise authorities. Excise authorities rejected the opposition. Initially, the respondent had restricted
its sales to Karnataka, but expanded to Andhra Pradesh in 2002. Immediately, ABD filed OS NO. 1058/2002, before the Hon'ble Delhi High Court,
though no interim order was obtained. The learned Senor Counsel also referred to the filing of Counter Statement, in these proceedings and said that
an abandoned Counter Statement cannot be restored without a Miscellaneous Petition. Then he referred to the judgment of Hon'ble Mr. Justice Badar
Durrez Ahmed between the parties. The Senior Counsel submitted that in their Written Statement, JD had referred to ABD's priority of user and also
the strong consumer loyalty to OFFICERS CHOICE thereby admitting ABDs reputation. According to the learned Senior Counsel since OFFICERS
CHOICE was registered before ORIGINAL CHOICE, ABD had both statutory and common law right over JD. Learned Senior Counsel submitted
that OFFICER'S CHOICE had got the reputation of being a top whisky. The learned Senior Counsel referred to 50 proceedings, initiated by ABD to
protect its mark, and that not even one has been initiated by JD. Therefore, JD has not acted as a proprietor, while ABD had zealously guarded its
mark OFFICER'S CHOICE.
The learned Senior Counsel submitted that the trade channel for this product from the stage of manufacturing the liquor to serving the product to the
consumer, both were alike. Learned Senior Counsel submitted that the liquor trade was a closed trade and no manufacturer can claim to be ignorant
of the mark of a rival in this business. So the JD had deliberately adopted a mark, deceptively similar to ABD's mark. The nature of the two
businesses are admitted to be identical. The learned Senior Counsel referred to the cross examination of JD's witness where this is admitted. He also
referred to the tendency to abbreviate the names of such goods which results in enhanced possibility of confusion. Learned Senior Counsel submitted
if the adoption is deceptive at its inception, no ground of subsequent history can cleanse it.
The learned Senior Counsel referred to Question 34 in the Cross Examination of DW-1 in CS(OS) No. 383/2007. Also referred to the Written
Statement filed in Suit No. 1058/2002 where it is admitted that ABD has been selling their product of OFFICERS CHOICE from 1986 while JD was
selling from 1996 and there was acquiescence. [para 42 of the Written Statement].
He referred to paragraph 34 where the confusion and dilution of the mark is specifically referred to and the fact that there is no explanation for JD
adopting the mark ORIGINAL CHOICE. The learned Senior Counsel submitted that the Cadila Case (2001 PTC 541 SC) deals with the factors for
deciding deception and confusion and if they are applied in the instant case and looks at the nature of mark, degree of resemblance, nature of goods of
both parties, Class of purchasers, the mode of purchase and other surrounding circumstances. The learned Senior Counsel submitted that JD's growth
after notice is hardly relevant. JD took the risk and it was done with constructive and actual notice. The learned Senior Counsel submitted that the
tendency to abbreviate has been proved and referred to ""George Ballantine & Son Ld. Vs Ballantyne Stewart & Coy Ld."" 1959 RPC (273), ""Mark
Stateroom"" Chancery Division- 29 RPC (489). According to him CHOICE was common to the trade. The learned Senior Counsel submitted that there
were bad faith elements in JD's adoption of its mark. The learned Senior Counsel also cited The Taverner's case to prove the case of initial natural
confusion and their mark must remain and 'ORIGINAL CHOICE' shall go.
The learned Senior Counsel Mr. Sanjay Jain appearing for JD submitted that JD's mark shall remain and OFFICER'S CHOICE shall go. The Trade
mark Registry had communicated to ABD's predecessor in title in 1995 when they made their application under No. 538727 that the registration may
be accepted subject to disclaimer to the word 'CHOICE' and this was accepted by the predecessor in title of ABD of their letter dated 4th April,
1997. This would show that they cannot object to the adoption of ORIGINAL CHOICE by JD. The search report obtained from the Registry shows
that CHOICE has been used by many applicants with relation to many goods. On October, 17, 1995 BDA lodged its objection with the Commissioner
of Excise to the approval granted to the label of ORIGINAL CHOICE on ground of confusion and deception etc. By a detailed order in which both
the parties hearing were represented, The Commissioner of State Excise had rejected the appeal arising out of approval to ORIGINAL CHOICE only
in 2002. OS No. 1058/2002 was filed by ABD predecessors in title against BDA for injunction before the Delhi High Court. The reason for filing
before the Delhi High Court appears to be a letter sent by some one to BDA asking BDA if they have any objection to the sale of 'ORIGINAL
CHOICE"". The written statement was filed by JD and then a Comprehensive Suit CS(OS) No. 383/2007 was filed by ABD. To this action, the JD
has filed a written statement. In the original order in the interim application passed by the Hon'ble Delhi High Court, the learned judge held that there
was delay on the part of ABD in approaching the Court and because of non-disclosure of material facts which in that case was in the knowledge of
ABD of JDs activity, injunction will not be granted. The order made it clear this was a prima facie conclusion. Against that an appeal was filed and
the Division Bench did not interfere with the conclusion of the learned single Judge. The learned Senior Counsel for JD submitted the single Judge had
restrained his observations to the minimum because the matter was pending before IPAB. The Special Leave Petitions were dismissed. The Deed of
Assignment by Cruickshank & Co. in favour of BDA reads as ""Deed made on this day on 26th day of February, 1991"". The learned Senior Counsel
submitted that the TM application made by ABD was on a false premise. He submitted that when choice is disclaimed what was left was
OFFICER'S and ORIGINAL which were not likely to confuse. He submitted that though JD's product was later, now the rivals were almost same
level in business. The huge consumer base built by JD should be a special circumstance for exercise of discretion. The Learned Senior Counsel stated
that the evidence filed by ABD was not strong enough to prove confusion. The learned Senior Counsel submitted that having allowed JD to grow by
leaps and having bounds and acquiesced in its growth, ABD cannot ask for removal of the mark.
Documents have been filed to show the user of 'ORIGINAL CHOICE' by filing the labels along with the stamp of approval by the Excise
Authorities for the years 1995-96, 199-97 and so on. CA's Certificates have also been filed to show the trade promotion expenses by JD.
There is a Market Survey Report filed by one GFK Mode Pvt. Limited. The Report shows the background to study whether to accept or reject
the hypothesis that the presence of ORIGINAL CHOICE in the OFFICER'S CHOICE market would create confusion. The report contains the
research methodology, the size of each panel is 100. The questionnaire was restricted to residents of Jaipur, Kolkata and their conclusion is that there
was a significant degree of confusion. In addition to this, the parties have also filed affidavits. The affidavits have been produced by ABD to show
that the mark OFFICER'S CHOICE is exclusively associated with BDA which is the predecessor in title of ABD. The affidavits filed by JD are from
license holders who have been selling both the brands and according to these affidavits, the consumers know the difference and there is no confusion.
These affidavits have been filed from dealers in Bilaspur, Pondicherry, Bangalore, Hyderabad etc. Articles have been produced to show how
successful 'OFFICERS CHOICE' has been. There are also Bar Menus where the 'OC is used.
Following judgments were cited on:
""Squirt Co. Vs The Seven-up Company et al"" - Court of Appeals, Eighth Circuit -207 USPQ-with relation to the mark of Squirt & Quest. In this
case, common survey indicated 25% confusion.
""Caprihans (India) Private Ltd. Vs Registrar of Trade Marks and Others""- PTC (Suppl) (2) 497 (Cal)(DB)--In this case, at para 41, Hon'ble
Kolkata High Court held that ultimately it is for the Court or the tribunal to Judge whether a trade mark is calculated to deceive or confuse by the
impression the mark makes on those who use the goods. The Court held that this does not mean that the evidence is of no assistance but that the
Court should consider the evidence and also apply its own mind.
""Registrar of Trade Marks Vs Ashok Chandra Rakhit Ltd.""., AIR 1955 S.C. 558
The third thing to note is that the avowed purpose of the section is not to confer any direct benefit on the rival traders or the general public but to
define the rights of the proprietor under the registration. The registration of a trade mark confers substantial advantages on its proprietor as will appear
from the sections grouped together in Chapter IV under the heading ""Effect of Registration.
It is therefore, clear that the section itself contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a
whole although the registration of the mark as a whole does not confer any statutory right with respect to that part.
""T.V. Venugopal Vs Ushodaya Enterprises Ltd. And Another,"" (2011) 4 SCC 85-In this case the Supreme Court held that the protection for a mark
could be granted against a person with relation to even an unrelated product if the vice of dishonesty of adoption is satisfied and the Court held that the
word ""Eenadu"" though a descriptive word, had acquired a secondary or subsidiary meaning with relation to the respondent.
""M/s. Times Publishing House Ltd. Vs M/s. The Financial Times Limited"" - -Order No. 91/2012-IPAB-In this case Hon'ble Board held that both
the parties being in the same business one would know of the existence of the other and because of the publicity that must have been generated, there
was a strong evidence to show that the applicant was aware of the existence of the respondent. This was cited to show that the alleged dishonesty of
JD.
""Ramdev Food Products (P) Ltd. Vs Arvindbhai Rambhai Patel and Others"" Â (2006) 8 SCC 726-In this case ""fraud"" ""delay"" and ""acquiescence
and their relevance was referred to in the context of granting injunction and the principle of acquiescence could be applied where one allows another
to invade one's rights or advance a course of conduct in consonance with the claim for exclusivity of the trade mark.
""BALI"" Trade Mark (Rectification C.A.)-1968-RPC-P-426 There the Court held that what is relevant is whether there is confusion on the date of
application for rectification. The marks were ""BALI"" & ""BERLEI"" and the court held that both the names start with 'B' and end with 'I' and that no
one but an illiterate and exceptionally careless person could mistake one for the other and since the goods are presented in different coloured packs at
different prices, the likelihood of confusion was minimal. In this case also the goods were the same. This case was cited by JD.
""M/s. Khoday India Ltd. Vs Scotch Whisky Association & Ors."" AIR 2008 SC 2737--Held delay was relevant while considering the continuance of
the mark that has sought to be removed.
""Hindustan Pencils Pvt. Ltd. and another Vs Universal Trading Company"" Â 2000 PTC 561 (DB) Here the mark was NATRAJ and the Division
Bench of the Hon'ble Delhi High Court held that whether the have been using the mark for 25 years and its business had been expended and
prospered during the period if the rectification application is allowed it would cause serious prejudice.
""London Rubber Co. Ltd., Vs Durex Products Incorporated and another"" Â AIR 1963 SCC 1882-It was held that there was hardly any likelihood
of confusion and no instance of confusion was proved.
""Jolen Inc Vs Shobanlal Jain & Others"" - W.P.(C) No. 1210 of 2005 -In this case, the Hon'ble Delhi High Court held that there is no doubt that an
average customer will be confused.
""S.P. Chengalvaraya Naidu (Dead) by Lrs. Vs Jagannath (Dead) by\lrs. And others""- (1994) 1 SCC 1. This was Cited to show that fraud was
played on the court in the context of ABD claiming to be a proprietor before the Assignment Deed was signed. To the same effect was ""Satish
Khosla Vs M/s. Eli Lilly Ranbaxy Ltd. & another - Crl. C.P. 8 of 1997 & F.A.O. (OS) 50 of 1997 was also cited.
""Pt. Ram Avtar Sharma and Others Vs Pt. Chakradhar Saran Sharma and others.""- AIR 1971 All. 157 (V 58 C 33). This was a proceeding that
arose out of Trade Marks Act. It was held that general and vague allegations of fraud cannot be taken notice of by Courts.
""William Derry, J.C. Wakefield, M.M. Moore, J. Pethick and S.J. Wilde Vs Sir Henry William Peek, Baronet-Vol. XIV and PRIVY COUNCIL
[HOUSE OF LORDS] It was held that in an action of deceit, the plaintiff must prove actual fraud.
""Neon Laboratories Limited Vs Medical Technologies Ltd. & Another"" - 2012(50) PTC 346 (Bom)-- Hon'ble Bombay High Court held that if a
defendant does not carry out the search it cannot take advantages of its negligence.
""Alfred Dunhill Limited Vs Kartar Singh Makkar & Others""- 1999 PTC (19) 294-It was held that trader who has built name, fame, reputation and
goodwill needs to be protected from other trader passing off his goods.
""Century Traders, Vs Roshan Lal Duggar & Co. and others""- AIR 1978 Delhi 250 - The court held that there is no evidence to show that there is
actual user of the mark by any party other than parties before the Court and that common to the trade had not been proved.
""M/s. Lachhmandas Biharilal Vs Bhagwan Dass and others"" - AIR 1977 Delhi 200 --The Court held that in an application for removal of mark,
affidavit filed in evidence cannot be allowed to be withdrawn.
""Diamond T. Motor Car Company Vs Registrar of Trade Marks""-
[Vol. XXXVIII] RPC [No. 13] 373- In that case there was diamond shaped border with the addition of the letter 'T'. Court found that diamond shape
border was common to the trade and in fact called the class of marks as ""diamond marks"". The trade marks with the initial letter 'T' which were called
'T' Marks, this would not prevent the applicants' mark, which for the first time combines the common feature of each class the applicants' mark is a
Diamond T"" mark. Learned Judge of the Chancery Division therefore stated that this is actual distinctive of the applicants vehicles and therefore he
is entitled to registration.
""In the matter of ""FORD-WERKE AG.'s Application for a Trade Mark""-
[Vol. L XXII] RPC -191 The mark had its essential features, the letters ""F"" and ""K"" in interlaced ovals. In this case, the Court held that minor features
do not add anything to the inherent non-distinctiveness of the mark.
DISCLAIMER:
The Old Trade Marks Act contains Section 17 which deals with registration of trade marks subject to disclaimer that if a mark contains a part
which is not subject of a separate application or which is not separately registered or contains matter common to the trade or is non-distinctive, then
while testing whether a trade mark shall be entered and or shall remain on the register, the tribunal may insist on a disclaimer which means that the
proprietor shall either disclaim the right to the exclusive of said part or of all any portion of such matter. There is a proviso to the section.
In the new Act, the provisions relating to disclaimer were removed instead the present Section 17 refers to such marks or part of such marks
which were earlier described in Section 17 for the purposes of disclaimer and states that ""the registration of the mark which contains such a part shall
not confer any exclusive right in such part
i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
ii) which is not separately registered by the proprietor as a trade mark;
or
b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the trade mark so registered.
In the present case both counsel mainly argued on the words i.e. OFFICER'S CHOICE vis-Ã -vis ORIGINAL CHOICE or vice-versa. The
device or description of the label did not find a part in the arguments. So while deciding whether the mark of JD should be removed we will consider
only the words. According to the learned Senior Counsel appearing for JD, since the word CHOICE had been disclaimed, we should compare the
word OFFICERS & ORIGINAL and it was plain that no one would confuse one for the other. The learned Senior Counsel for ABD submitted that
the whole mark should be taken into account. Now we will see what are the deciding judgments in this regard.
In Ashok Chandra Rakhit Ltd. the effect of disclaimer has been explained. Though the act in question was the earlier Act, this judgment clarified
all confusion relating to disclaimer. In the above case, the Hon'ble Calcutta High Court reversed the Controller's decision rectifying the register by
including the disclaimer of the word 'Shree'. The disclaimer said that the registration of the trade mark shall give no right to the exclusive use of the
word 'Shree'. The Supreme Court held that the power of the Tribunal to insist upon a disclaimer is conditional on the existence of one or more of the
situations described in Section 17(a)(b) or (c) of the (Old) Act. The Registrar must find that there are part or matters included in the trade mark to the
exclusive use of which the proprietor is not entitled. The Supreme Court then observed that the purpose of the section does not confer any benefit on
the rival traders or the general public, but defines the rights of the proprietor. The Supreme Court observed that many proprietor had made
exaggerated claim to the exclusive use of parts or matters contained in the trade mark though expressly disclaimed. The Supreme Court stated that
the real purpose of requiring a disclaimer is to define the rights of the proprietor and to minimize even if it cannot wholly eliminate the possibility of
extravagant and unauthorized claims being made upon registration. The Supreme Court further stated that the disclaimer is only for the purpose of the
Act. It does not affect the rights of the proprietor except such as arise out of registration. In short, the disclaimed parts or matters are not within the
protection of the statute. The Supreme Court also stated that it is true that where a distinctive label is registered as a whole, such registration cannot
possibly give any exclusive right to the proprietor of the mark to the use of any particular word or name contained therein apart from a mark as a
whole. And they quoted LORD Esher that ""the truth is that the label does not consist of each particular part of it but consists of the combination of the
mark"".
In this case OFFICER'S CHOICE is the earlier mark did not give the proprietor namely ABD the exclusive right to the word CHOICE. But that
does not mean that we should eschew CHOICE and consider only whether 'ORIGINAL' was similar or deceptively similar to 'OFFICERS'. We
accept the submissions of the learned Senior Counsel for ABD that the mark must be taken as a whole. The registration certificate does not contain
disclaimers. The labels are not expected to publicize the disclaimers. When the customers asks for the goods, he only knows what he wants is
'OFFICERS CHOICE"" or ""ORIGINAL CHOICE"" as the case may be and not just 'OFFICER' or 'ORIGINAL'. Let us take the case of a mark
which contains two words, both of which are required to be disclaimed. Does it mean the proprietor has no right to be protected in spite of the
registration? It only means he has a right to the mark as a whole, containing both the words. Suppose a person gets registration of the mark RED
DOLL and is required to disclaim both RED and DOLL and along comes a competitor who chooses the mark RED ALL. Can Red All be heard to
say that since RED has been disclaimed, you compare DOLL & ALL. In the circumstances of the case one might find RED DOLL and RED ALL,
deceptively/ phonetically similar, in spite of the disclaimer of the word RED and the proprietor of 'RED DOLL' would be entitled to relief. On the
other hand, suppose the competitor markets his product as 'RED GATE'. Now the owner of 'RED DOLL' cannot say since I have registered the
'RED DOLL' and his mark also starts with the word RED, his mark can go. Of course, here, the situation will be different if the labels were identical.
We make it clear we are doing this hypothetical comparison only on the basis of the words alone. Therefore, we have to see the rival marks as a
whole, taking 'OFFICER'S CHOICE' on the one hand and the ORIGINAL CHOICE on the other hand. If we do that, we do not see any confusion or
deceptive similarity. It is seen from the evidence before us that 'CHOICE' is a popular word on the trade mark Registry especially in the case of
alcoholic manufacturers. Perhaps, JD wanted a name which indicates that his was the original stuff, these are all boastful claims made by many
manufacturers. In any case, we are not required to go into that.
The mark that has to be removed in ORA143/2008/TM/CH is Application No. 722161 registered in 2007. It was contended on behalf of the
learned senior counsel for JD, that ABD knew about its label and had objected to the Central Excise Authorities. They had lost before the Central
Excise Authorities, and they had not challenged this order by way of any writ petition and JD naturally thought that they could proceed with
manufacture and marketing of the goods and have grown multifold in these several years since commencement. At this juncture, to remove the mark
would not be correct. According to the learned Counsel, acquiescence clearly came in the way. He has cited several judgments in his arguments.
Learned counsel appearing for ABD on the other hand submitted that JD knew about the earlier mark of ABD since they had protested both
before the Central Excise Authority and had also sent legal notice. Any growth with full knowledge of the objection cannot strengthen JD's case. We
have referred earlier to the decisions cited by both the sides. The power to rectify marks arises only after the mark is registered, because the
grievance relates to absence or omission from the register of any entry or entry made without sufficient cause or any entry wrongly remaining in the
register or an error or defect in the entry. The objection made by ABD to the Central Excise Authority is accepted. It is true that ABD had not
challenged the order. But after the application of JD's mark was advertised before acceptance on 25.09.2003, ABD filed a TM-44 seeking extension
to file the notice of opposition. The notice of opposition was not taken up because by inadvertence an unsigned cheque was sent towards fees for the
TM -44. Story of the ill-fated notice of opposition need not be dealt here suffice to state the fate that against the refusal to take notice of opposition,
ABD filed an appeal that was dismissed by the IPAB and the matter went all the way upto Supreme Court and ended in failure. The mark was
registered on 17.07.2007 and its rectification has been filed in 2008. The conduct of ABD does not appear to be of a party who is lying quietly
allowing the rival to prosper and acquiescing in a mark which it finds objectionable. In Ram Dev Food products cited above, the conduct described
was one allowing another to invade one's rights or advance a course of conduct which is in consistent with the claim of ownership to the Trade Mark.
We do not think that ABD can be accused of allowing JD to invade its rights, on the other hand we find that it has been voicing its opposition
vehemently. It is true that the unsigned cheque resulted in the rejection of the opposition. There has to be a deliberate act of acquiescence and an act
of inadvertence that results in failure cannot be described as acquiescence. We do not find ABD guilty of acquiescing in the continuance of JDs mark
in the register nor is there any delay.
EVIDENCE OF CONFUSION:
We have before us a confusion test report prepared by GFK Mode Private Limited. The market surveyors were informed that due to similarity in
looks of OFFICER'S CHOICE and 'ORIGINAL CHOICE' there will be confusion among consumers. Therefore, the surveyors' client ABD
commissioned them to this test. They conducted the survey in Jaipur and Kolkata and it is not disputed that in Jaipur & Kolkata, the JD's product had
not yet been introduced. According to the learned Senior Counsel for JD, this is an exercise in futility, since conducting the survey in a place where
they had not introduced their mark, would not lead us anywhere. On the other hand, the learned Senior Counsel appearing for ABD would submit that
the confusion recorded by the Survey even in places where JDs product had not been introduced precisely proved the point. The key finding of the
Survey is that the presence of 'ORIGINAL CHOICE' was creating confusion and that ""it can be concluded that if 'ORIGINAL CHOICE' is
introduced in the market where it is not currently present. It could create confusion among the customers of 'OFFICERS CHOICE'. This report was
prepared in 2007. In addition to this report, affidavits have also been filed on behalf of both sides. The affidavit filed by BDA or ABD is only to the
effect that the deponents have not come across any mark identical to ABD's mark and that this mark is only associated with ABD's predecessors
namely BDA. The affidavits filed by JD are to the effect that they sell both the brands and there has been no confusion. By these affidavits filed by
JD, many are not dated, but in three of the documents we find a date which is of the year 2007. These affidavits filed by JD are identical and it is
clear that those deponents have signed prepared affidavits given to them by JD. The affidavits filed by ABD do not really resolve the question of
confusion. As regards the report filed by the professional surveyor, it would have been preferable, had it been marked by the person who could have
explained how he conducted the survey. But we only have this document. Even if we accept this document, we do not know whether the presence of
the mark had caused confusion. All that we know is that even before the mark was marketed in Jaipur & Kolkata, one surveyor had conducted a
survey and had given a finding that there is likelihood of confusion. We have stereo-typed affidavits undoubtedly of dealers who deal in both the
products that they have not come across any confusion. With this evidence in hand, we look at the marks ourselves. When the marks are taken as a
whole as they should be, we do not think that 'ORIGINAL CHOICE' and 'OFFICERS CHOICE' are in any way identical, or that there is likelihood of
confusion. In this regard, the Bali case is very apt. In that case Bali & Berlei were the marks. In fact they are much more close to each other than
'OFFICERS CHOICE and 'ORIGINAL CHOICE' will ever be. We bear in mind the reality that customers in India are all not familiar with English
and the standards of comparison adopted by English Courts may not be suitable in India. But we can properly take note of the fact that the three
English words in this case which are ""OFFICER"", ""ORIGINAL"" and ""CHOICE"" are used even by persons who are not very conversant with English.
Therefore, the Target Consumer who is not very fluent in English will easily know the difference between 'OFFICERS CHOICE' and 'ORIGINAL
CHOICE'. In Bali, the Court said that ""no one but an illiterate and very careless person will mistake one for the other"". Here even an illiterate person
can distinguish between sounds and Officer'S Choice is nowhere near Original Choice.
Documents produced before us to show are the sales record of whisky. We find that in 2002, 3.15 million cases of 'OFFICER'S CHOICE' were
sold. 'ORIGINAL CHOICE' came into the market in 2004. 'OFFICERS CHOICE' was selling 3.30 million and 'ORIGINAL CHOICE' was selling
2.28 million cases. The Sales of 'OFFICERS CHOICE' was growing. Till 2006, it was at 5.01 and the sale of 'ORIGINAL CHOICE' also was
growing and in 2006 it was at 4.12. It was admitted and not disputed that both the parties are now marketing their goods in bottles which are totally
unlike each other. Therefore, it is clear that each brand has its own consumer group, and brand images with faithful following. Before the Hon'ble
Delhi High court the comparative chart of the sales of both brands in Crates was produced. And we see that in 2007, the 'ORIGINAL CHOICE'
sales was 4773005 crates and 'OFFICERS CHOICE' sales was 5085367 crates. Both the judgments of the learned Single Judge as well as the
Division Bench clearly indicated that the issue of deceptive similarity would be decided by IPAB. Yet the following paragraph in the judgment is a
valuable guidance in this jurisdiction too.
Law does not require to list out similarities and the dis-similarities by making a check list because the consumer is not expected to do so while buying a
product. The test is to have a glance at the two competing labels and as a reasonable and a prudent person forming an opinion whether there is a
chance of deception and/or confusion. Inherent in this test is the cognitive faculties of a judge impromptu telling the judicial mind whether the imprints
in the brain have resulted in a confusion.
In the judgments cited before us, we find that in Caprihans (India) Private Ltd. Division Bench of the High Court has held that the it is for the Court to
decide whether there is any deceptive similarity and that this is not to be intended to be understood as minimizing the weight of the evidence but what
the judicial opinion is regarding deceptive similarity & confusion. On weighing the evidence and the material evidence before us, we find that there is
no deceptive similarity or confusion. Both the marks are capable of standing independent on each other.
Next we come to the Technical objection.
TECHNICAL OBJECTION
There is technical objection whether the Counter statement file by JD ought to have been received and whether it is non-est in the eye of law.
Form-C was issued by the IPAB to JD on 28.07.2008. It was received by them on 08.08.2008. In September, 2008 Vakalat was filed and Form -3
was filed seeking extension of time. On 04.12.2008, the IPAB has addressed a communication to the Counsel for JD stating that if the defects are not
rectified within 15 days, the Counter Statement will be treated as abandoned. JD's counsel sent a reply on 20.12.2008 stating that JD had filed the
Counter Statement within the time granted by IPAB upto 27.10.2008, the extension of time sought for by JD from 29.09.2008 was granted and time
was granted upto 27.10.2008. In their letter dated 20.10.2008, the Counsel for the JD had stated that the Counter Statement was dispatched by the
Counsel on 25.10.2008. And it was because of the Diwali holidays, the Courier had delivered it beyond time. And there was no delay on their part. On
13.01.2009, the IPAB had sent a letter requiring the Counsel for JD to file Form-3 for extension of time over 28.10.2008. In response to this on
06.02.2009, the Counsel for JD had sought for extension of time for four months from 28.10.2009 to 27.02.2009. By order dated 13.02.2009, the
Counsel for JD was informed that the C.S. was taken on file.
In this regard, we must record here that till 18.07.2011 it appears to have been the practice in this Board that extension of time was granted by the
Deputy Registrar. On the other hand, Rule 14 of (Intellectual Property Appellate Board) Procedure Rules, 2003 requires that the Appellate Board
should be satisfied if there is sufficient cause for extending the time. As per Section 2(a) of the Act, ""Appellate Board"" means the Appellate Board
established under Section 83 and we have stated in our order (ORA/267 /2009/TM/CH)-""Shri Shyam Singh Vs Shri Manohar Singh & Another"" that
this power to extend the time is within the sole discretion of IPAB and it cannot be delegated to the Deputy Registrar. This order can only be
prospective and we cannot nullify all that had transpired before our order. We do not think there is any jurisdictional error in receiving the Counter
Statement filed by JD.
TENDENCY TO ABBREVIATE:
It is the case of ABD that where alcoholic beverages are concerned, the tendency is to abbreviate and he has produced some bar menus where
the word 'OC' is used. The mark in question is not OC. It is 'ORIGINAL CHOICE. To remove a mark on the ground that there is a tendency to
abbreviate the mark, we require strong evidence from the consumers and the retailers that 'ORIGINAL CHOICE' and 'OFFICERS CHOICE' were
in fact abbreviated as 'OC' thus resulting in confusion. No such evidence is produced. On the basis of certain sheets of paper, which appear to be bar
menus which are not even marked through the bar tenders or hotel owners we cannot accept this ground.
THE FALSE CASE OF ABD:
It is apparent and undisputable that the assignment deed was dated 26.02.1991. One party had signed in October, 1990, the other party had signed
in December, 1990. In the application (TM-1) the date of user was shown as 1986. The question is whether before the rights were assigned; the
assignee could claim the user of the assignor and whether it was not a false statement. The question that was also raised is if a false statement is
made by a party in a judicial and quasi-judicial proceedings, will he be entitled to any relief though as on date there may not be any controversy in this
regard. We have already referred to the judgments where it has been held how a fraud is to be proved and the intention to deceive must be proved. In
this case M/s. Cruickshank & Co., the assignor and BDA (the predecessor of ABD) were both in the hands of brothers who fell out later. The
Learned Senior Counsel for ABD stated that at the time of the deed of assignment, it was understood that the assignment would go through and it was
expected that the formalities will be over. In this context, the Suit No. 1800/1993 filed by M/s. Cruickshank & Co. against BDA becomes relevant. It
is seen from this that M/s. Cruickshank & Co. and BDA were subsidiarised and related companies. Being the Managing Director of Shaw Wallace &
Co, K.R. Chhabria had the control of the Shaw Wallace Group.
In paragraph 40 of the plaint, it is stated that on 20.02.1990, there was a resolution passed by the Board of Directors of BDA and by resolution
dated 24.04.1990 signed by the Board of Directors of M/s. Cruickshank & Co. that the trade marks brand names and labels would be transferred. Of
course, in this they refer to some game plan of Mr. K.R. Chhabria. But we are not concerned with that. We are concerned with the fact that these
resolutions were there.
In paragraph 42, there is reference to de-subsidiarisation of BDA. In paragraph 44, it is stated that even after de-subsidiarisation, BDA was
managed as a company of M/s. Shaw Wallace Group without any intervention by any person until April, 1992. It is stated in the same paragraph that
all the Directors of BDA since 1988 to April 1992 were employees of Shaw Wallace. It is stated in the same paragraph, ""actual day today affairs of
BDA Breweries Limited were looked after and controlled by the Officers of M/s. Cruickshank & Co."" When this was the position it is not surprising
that when the date of user had to be mentioned, they had mentioned the date of user M/s. Cruickshank & Co. We are not saying that it is accurate or
correct, we are only saying that this statement was made by M/s. Cruickshank & Co. & Directors and there does not appear to have been any
intention of defrauding. Therefore, this objection is also rejected.
STATEMENT MADE BY JD IN THE OPPOSITION PROCEEDINGS.
JD had cited grounds of similarity and confusion in their opposition proceedings against ABD's mark. So it is ABD's case that they are estopped
from opposing ABD reaching removal of their mark on the same grounds. The Learned Senior Counsel on behalf of JD submitted that applications
have been filed for amending the two opposition, and that it was a mistake. It is evident why that stand has been taken in the opposition. All that we
can say is rather than including every ground of attack available in the statute, considered decisions must be taken regarding the appropriate ground of
attack. We are reminded of the demon in the myth who sought a boon that anyone touching his head must burn. And ended up as ashes by touching
his own head. Hoist with one's own petard one might say. We have already decided that 'ORIGINAL CHOICE' and 'OFFICERS CHOICE' are not
deceptively similar to each other and are not likely to confuse the public. We have also rejected all the technical objection raised by one against each
other. All the MPs are closed. In the result, both applications are dismissed.