Arun C. Mohan, a practising IP lawyer before the Madras High Court has sent us this interesting post regarding the mark 'Rhizome's Imperial Gold' which was under litigation before the IPAB and subsequently the Madras High Court. This is yet another judgement in the long-running litigation in India between Rhizome and Pernod Richard S.A over the mark 'Imperial' in various permutations and combinations. Arun adds the disclaimer that his firm represented Pernod Richard S.A. in this matter
Madras High Court overrules IPAB on 'Rhizome Imperial Gold'
Arun C. Mohan
The Madras High Court has recently delivered a very remarkable order in a writ petition against an order of the IPAB. The order can be found here. (unreported) Image from here.
The mark in dispute was “RHIZOME’S IMPERIAL GOLD” vesting with M/s Rhizome Distilleries. The applicant (M/s Pernod Richard, France) before the IPAB was the proprietor of the well known mark “IMPERIAL BLUE”. Pernod Richard also held other registrations including “IMPERIAL RED”. There were also infringement proceedings before the Delhi High Court and Supreme Court instituted by Pernod Richard, at the end of which there was no injunction operative on Rhizome from using “RHIZOME’S IMPERIAL GOLD”. The DHC made some interesting observations as to the word ‘Imperial’ being sui genris in arriving at such a conclusion.
The IPAB however, cancelled Rhizome’s mark “RHIZOME’S IMPERIAL GOLD” on the grounds 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'.
Rhizome appealed against the Order before the Madras High Court. The Madras High Court reversed the order of the IPAB. The Court made the following observations in this Order which will have far reaching consequences in petitions before the IPAB:
1. The grounds embodied under sections 9 and 11 are available to the persons only at the time when they raise objection for registering the trademark. The said principles cannot be applied for rectification of the registration.
2. Observations/findings on interim applications in proceedings before a court in infringement/passing off would have bearing in IPAB proceedings.
3. Submissions/filings made before other statutory authorities, which are not opposed, could amount to acquiescence and latches for the purpose of TM law.
4. Other IP rights such as a registered copyright would have effect in a rectification proceeding.
I find that the observations on ss 9&11 seem to be a complete game-changer. Besides the usual suspects (ss 47, 57, 68 and 77), we tend to rely extensively on the principles in ss 9&11, to provide the “meat & potatoes” of any argument before the IPAB. This observation severely curtails the scope of many arguments before the IPAB. It also throws many existing applications in a flux, as they have extensively relied on ss 9 and/or 11 to make out a case for allowing/dismissing rectifications before the IPAB. This observation creates a rather cumbersome dichotomy on objections to be raised against marks, pre-registration and post-registration. This observation, if given finality, would greatly increase the onus on proprietors of marks to keep a watch on TM journals to oppose applications appropriately. This Order could have an avalanche effect on other orders of the IPAB till date, which have extensively relied on ss 9 and 11 to come to findings.
On the other observation of the Court, as to the applicability of interim applications, with due respect, is rather difficult to live with. In evidentiary terms, the IPAB functions as a court of 1st instance. It ought not to be influenced by proceedings which are constantly susceptible to change. Assuming the IPAB relies on an interim application to come to certain findings, and the interim application is reversed in trial, where does that leave the IPAB order? Would a review have to be filed then? Or the interim application is set aside by another interim application? I believe that the IPAB’s present stance that it will not be influenced by interim applications is very right. This allows the Board to make a free and unprejudiced decision strictly upon the set of facts before it. Given that IPAB proceedings are generally parallel to infringement proceedings, this Order restricts the possibility of an IPAB order which would conflict with an interim order of a Court. Is this a good thing?