Pernod Ricard which owns registered trademarks such a Imperial Blue and Imperial Red in India had moved the IPAB with a rectification application for removal of the Imperial Gold pointing out that the impugned mark was phonetically and structurally similar to their mark and will cause confusion among the customers. Agreeing to Pernod’s contentions, the IPAB ordered the removal of mark, against which Rhizome Distilleries moved the high court.
The bench of chief justice Sanjay Kishan Kaul and.justice T S Sivagnanam observed that the overall structural and phonetic similarity was a determinative factor, which looms large in the instant case. The added matter – namely the addition of the mark Rhizome’s as a prefix to Imperial Gold was of no consequence. “Therefore, we hold that Pernod Ricard has an exclusive right to use of combination of Imperial with the word that describes colour either as a prefix or a suffix. From the documents, which were placed before the IPAB, it is seen that though the Rhizome Distilleries claimed that they have marketed their products as Rhizome’s Imperial Gold, the sale invoices raised by the company to the AP Beverages Corporation Ltd describes the products as ‘Imperial Gold ‘ branded whisky and not ‘Rhizome’s Imperial Gold,” the bench said.
Pernod Ricard is a company incorporated under the laws of France, engaged in the business of manufacturing and distribution of wines and spirits with their presence in many countries. In order to accord statutory protection to its trade mark Imperial Blue, the company obtained registration of the mark in countries including Benelux and Nepal in 1997 and 1999 respectively.
That apart, the company had obtained registration for the trade mark Imperial Red in class 32 and 5, and Imperial Blue in classes 9, 32 and 33. Elaborating on the reputation acquired and enjoyed by the trade mark Imperial Blue, the company argued that the said trade mark falls in the category of well known trade marks and requires protection of wider extent and beyond limitation or constriction of category of goods or services.