ALLIED BLENDERS AND DISTILLERS LIMITED vs BOUTIQUE SPIRIT BRANDS PRIVATE LIMITED & ANR.
$~6 & 7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 166/2023
ALLIED BLENDERS AND DISTILLERS LIMITED …..Petitioner
Through: Mr. Pravin Anand with Mr. Shrawan
Chopra, Mr. Achyut Tewari and
Mr. Aayush Maheshwari, Advocates.
(M): 8604633567
versus
BOUTIQUE SPIRIT BRANDS PRIVATE LIMITED &
ANR. …..Respondents
Through: None.
7
+ C.O. (COMM.IPD-TM) 167/2023
ALLIED BLENDERS AND DISTILLERS LIMITED …..Petitioner
Through: Mr. Pravin Anand with Mr. Shrawan
Chopra, Mr. Achyut Tewari and
Mr. Aayush Maheshwari, Advocates.
(M): 8604633567
versus
BOUTIQUE SPIRIT BRANDS PRIVATE LIMITED &
ANR. …..Respondents
Through: None.
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
O R D E R
% 10.02.2025
MINI PUSHKARNA, J (ORAL)
1. The present petitions are filed under Section 57 of the Trade Marks Act, 1999 (the Act) seeking cancellation of registration no. 4544212 in Classes 32, and registration no. 4544211 in Class 33 for the mark, BSB MYRON in the name of respondent no. 1 and rectification of the Trade Marks Register under Rule 7 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.
2. It is to be noted that the petitioner herein has also filed a suit, i.e. CS (COMM) 395/2023, titled as Allied Blenders and Distillers Limited Versus Boutique Spirit Brand Private Limited, against respondent no. 1, i.e., defendant in the suit, for infringement of their registered mark, KYRON, against the usage of the impugned mark, MYRON by defendant/respondent no.1.
3. An interim order dated 01st June, 2023 was passed by this Court restraining the defendant/respondent no. 1 from using the marks, MYRON, BSB MYRON or any other mark, which includes the word MYRON for Indian Made Foreign Liquor (IMFL) or for any other allied or cognate goods. The said interim order was made absolute pending disposal of the suit vide order dated 18th December, 2023.
4. This Court notes that respondent no. 1 was first issued notice in the present petitions on 01st June, 2023. Subsequently, vide order dated 04th September, 2023, the Court directed the petitioner to effect service upon respondent no. 1 by way of email, affixation and publication in one English and one Hindi newspaper, having circulation in the area where the respondent is located. Consequently, the respondent no. 1 was duly served by way of publication on 20th December, 2023, the factum of which is recorded in the order dated 18th December, 2023.
5. Despite service, none appeared for respondent no. 1, on account of which, the right to file reply in the petitions was closed vide order dated 01st March, 2024. The respondent no. 1 has failed to make an appearance or put forth any pleadings before this Court. Hence, in view thereof, this Court has proceeded to finally hear the matter.
6. In both the petitions, respondent no. 2, i.e., Registrar of Trade Marks, is a formal party.
7. Facts, as canvassed in the petitions, are as follows:
7.1 The petitioner is engaged in the business of inter alia manufacturing and marketing of alcoholic beverages, including IMFL. The said beverages are sold under different trademarks and labels, i.e. KYRON, OFFICER’S CHOICE, OFFICER’S CHOICE BLUE, CLASS VODKA, LORD & MASTER, CALYPSO, SUMO, 1OOO GUINEAS & JOLLY ROGER, OFFICER’S CLUB, CLUB CLASS, STERLING RESERVE, etc.
7.2. The petitioner adopted the mark, KYRON during the year 2010, which is being used openly, continuously, extensively, consistently and exclusively by the petitioner since 2012, for which the petitioner holds registrations in Classes 9, 32 and 33. Further, the origination of the mark KYRON is from the Greek mythological character “CHIRON” who symbolizes strength, thereby, making the said mark as distinctive and arbitrary, for alcoholic beverages in Classes 32 and 33.
7.3 The respondent no. 1 is dealing in alcoholic beverages under the impugned mark, BSB MYRON registered in both Class 32 under registration no. 4544212 dated 28th January, 2021 and in Class 33 under registration no. 4544211 dated 29th January, 2021, on a proposed to be used basis.
7.4 The mark of the respondent no. 1 is identical as that of the petitioner. The petitioner came across the impugned mark of respondent no. 1 in March, 2023, and thereafter, the present rectification petitions have been filed.
8. On behalf of the petitioner, the following submissions have been made:
8.1 The petitioners goods under the mark KYRON are sold all around the country, and have acquired impeccable and formidable reputation and goodwill in relation to its goods, merchandise and business. Further, the petitioners brandy sold under the said mark has become very popular amongst the trade and public, and has become a source identifier for the petitioners products.
8.2 By virtue of its quality, characteristics and distinctive packaging, the petitioners products sold under its KYRON marks, have been awarded the Superior Taste Award in 2021 by the International Taste Institutes Jury of the worlds best Chefs and Sommeliers. Further, the petitioner was also awarded the Monde Selection Award 2022 by the International Institute for Quality Selections, Brussels, Belgium.
8.3 The petitioner has made substantial sales under their mark, KYRON and has incurred large expenditure for sales and promotion of the products bearing the petitioners mark, KYRON. Further, the petitioner has promoted its products through sponsorship events such as KYRON Pondicherry, Kochi, and Hyderabad Fashion Week, as well as through posters, videos, etc.
8.4 The petitioner, on account of continuous and extensive use of the mark, KYRON all over the world, enjoys a reputation and goodwill in the market and with the consumers, who exclusively associate the mark with the petitioner in India and abroad.
8.5 The petitioner has spent considerable time, effort and monetary resources in securing registrations of the mark, KYRON worldwide, including, India.
8.6 Further, the petitioner has also placed on record the status of pending applications of the petitioner before the Trade Marks Registry, wherein, opposition proceedings are pending, for the label and not over the brand, as such.
8.7 The essential and dominant feature of the respondent no. 1s mark is the word, MYRON in the impugned mark, BSB MYRON which is deceptively similar and a substantial reproduction the petitioners mark, KYRON. Further, respondent no. 1 is in the same industry and operates its mark under the same Classes, i.e. 32 and 33, for the segment of goods identical to that of the petitioner, which shows the mala fide and dishonest adoption by respondent no. 1 in use of the impugned mark, which is substantially similar to that of the petitioners mark.
8.8 The word, MYRON used by respondent no. 1 is deceptively similar to the petitioners mark, KYRON, thus, the same would cause confusion for an average consumer, considering that products of both the parties are the same. Further, the petitioner has coined the word, KYRON and is the prior adopter of the same. Therefore, on account of the deception, dishonest adoption and subsequent user of respondent no. 1, the mark of respondent no. 1 ought to be removed from the Register of Trade Marks.
8.9 Respondent no. 1 has registered the mark, BSB MYRON in Classes 32 and 33, however, its manner of use of the said mark is only as MYRON and the acronym, BSB has been rendered inconspicuous owing to its reduced font size and separated placement. The same indicates clear intention of mischief on part of respondent no. 1, which is bound to cause confusion between the petitioners products and that of the respondent no. 1.
9. I have heard learned counsel for the petitioner and perused the record.
10. At the outset, this Court notes the submission of learned counsel for the petitioner that they have no grievance with respect to respondent no. 1 using only the mark, BSB without the word MYRON included in their mark.
11. The petitioner is the registered owner of several trademarks with the mark KYRON, that are valid and subsisting, out of which, the earliest application for registration is dated 12th November, 2010. The registrations in favour of the petitioner are reproduced, as under:
12. The petitioner has placed on record a certified CA Certificate dated 24th May, 2023, indicating their usage and sales under the mark KYRON from the years 2012-2013 to 2022-2023 in export and pan India. The sales of petitioners product bearing the KYRON mark, are indicated in the following table, as given in the petition:
13. Further, the petitioner has also placed on record another certified CA Certificate dated 24th May, 2023, indicating the expenditure incurred by the petitioner for sales and business promotion for products bearing the mark, KYRON in the years 2011-12 to 2022-23, which is reproduced as under:
14. The issue for consideration before this Court is whether the mark of respondent no. 1, BSB MYRON is deceptively similar to that of the petitioners mark, KYRON.
15. It is to be noted that both the parties are in an identical business of selling alcoholic beverages, and their marks are registered under the same Classes, i.e. 32 and 33. Further, both parties are selling the product, i.e. brandy, under their respective marks, which are reproduced as under:
PETITIONERS MARK
RESPONDENT NO. 1S MARK
KYRON
BSB MYRON
16. Perusal of the marks makes it evident that, the essential and dominant feature of respondent no. 1s mark is the word MYRON, as is indicated in the manner of usage and display of the mark by respondent no. 1 in the label used for their product. Photograph of the label in respondent no. 1s product, is as under:
17. The label as used by respondent no. 1, shows that the word MYRON has been displayed in a large font size with a glaring font, while the acronym, BSB is displayed in a much smaller font size at the top in comparison, making it exceedingly inconspicuous. An average consumer, when coming across the said display/label, would certainly be focussed on the word MYRON, due to its manner of glaring display, and owing to the discreet font size and placement of the acronym, BSB, which appears to be the impression attempted to be made by respondent no. 1 through their label in the product. The respondent no. 1, despite seeking registration of the complete word mark, BSB MYRON, has surreptitiously rendered the appearance of the acronym BSB otiose due its manner of display. The same is indicative of the dishonest intention on part of respondent no. 1, as despite seeking registration for the complete word, BSB MYRON, the manner of usage in the product prima facie appears to be clandestine.
18. Further, it is also made out that the word, MYRON is deceptively similar to the petitioners word mark, KYRON, by manner of its appearance along with the phonetic similarity. Therefore, respondent no. 1 by the approach of its use of the impugned mark, has evidently endeavoured to bring its mark, as close to that of the petitioners mark. This is clearly in view of the petitioners presence in a similar business in India and abroad since 2012. It is apparent that the mark of respondent no. 1, MYRON is deceptively similar to the petitioners mark, KYRON and is likely to cause confusion.
19. This Court in the case of Lakme Limited Versus Subhash Trading and Others, 1996 SCC OnLine Del 585, while elucidating on the aspect of phonetic similarity between marks and its likelihood to cause confusion, held as follows:
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12. In the case of K.R. Chinna Krishna Chettiar v. Sri Ambal & Co., (1969) 2 SCC 131: AIR 1970 SC 146 it has been held that the resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no resemblance between the two marks that does not matter when there is a close affinity of sound between the distinctive features of the two marks. The Supreme Court further pointed out that merely because the distinctive words used in both the marks have distinctive meaning it cannot be said that the phonetic resemblance does not lead to confusion, when it is likely that majority of the customers are not capable of understanding the fine distinction between the meanings of the two words. In the same case the Supreme Court was called upon to consider whether there is striking similarity and affinity of sound between the words AMBAL and ANDAL. After considering various decisions, the Supreme Court held that there is a close affinity of sound between the words AMBAL and ANDAL.
13. Similarly in the case of Ruston v. Zamindara Engg. (supra) the Supreme Court came to consider whether there was resemblance between the words RUSTON and RUSTAM, and on consideration of various decisions came to uphold the decision of the High Court that there was deceptive resemblance between the words RUSTON and RUSTAM and therefore, the use of the bare word RUSTAM constituted clear infringement of the plaintiff’s trade mark RUSTON.
14. In this context I may also appropriately refer to a decision of a Division Bench of this Court in Hitachi Ltd. v. Ajay Kr. Agarwal, 1996 PTC (16) (DB). In that case the Court was considering whether there is a similarity between the two trade marks HITACHI and HITAISHI. The Court, after considering the facts and circumstances of the case and the various decisions of this Court as also of the Supreme Court held that the question as to whether there is a similarity between the two trade marks has to be approached from the point of view of an average man with imperfect memory and that even though the two trade marks, one written in English and the other written in Hindi may not be visually similar because of the difference in script but undoubtedly there is a marked phonetic similarity and therefore, the words HITACHI and HITAISHI are pronounced almost in the same way and an average or ordinary purchaser will not be able to know the difference between the two when he goes to the market to buy the said product. This is likely to cause deception and confusion in his mind. It is further held that to the purchasers and traders these would sound alike and they would be pronounced in the same way, and therefore, applying the test of ear the Court was of the view that there is real danger of deception and confusion being caused by the two marks because of the similarity in the two marks HITACHI and HITAISHI.
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16. The specific case of the plaintiff is that the plaintiff is the registered proprietor of the trade mark LAKME and the work Designer is registered in the name of the plaintiff w.e.f. 1951; whereas the trade mark LIKE ME of the defendants is stated to be used from the year 1988 as stated by the defendants in their written statement. The Counsel for the defendants during the course of his arguments stated that it is the specific case of the defendants in the written statement itself that the defendants have nothing to do with the trade mark LAKSME & SWEETY DESIGNER and that the said trade marks are not being used by the defendants. The defendants however, admit of using the trade mark LIKE ME. But according to the said defendants the said trade mark LIKE ME, its get-up, design and colour scheme and over-all appearance is different from the product of the plaintiff and accordingly there can be no action of any passing off in respect of the said article. Therefore, it is necessary to find out as to whether the trade mark LIKE ME adopted by the defendants is phonetically similar to the registered trade mark LAKME of the plaintiff and the use of the former is likely to cause deception and confusion in the minds of the traders and general public inasmuch as the goods of the defendants would be taken as the goods of the plaintiff. The Counsel for the defendants submitted that there is no phonetic resemblance between the two words and that in the word LIKE ME there are altogether six letters as against five in the trade mark of the plaintiff LAKME. Further there is a hyphen in between the words LIKE and ME. The words LIKE ME coined by the defendants actually convey a message and therefore, there could be no confusion and deception.
17. The two words with which we are concerned in the present case although may convey a different meaning and also not contain the same letters yet in my opinion both the words bear a close resemblance to the ears. When both the words are articulated, it would be difficult for an ordinary prudent man to distinguish between the two sounds produced by the two words. Applying the test of phonetic resemblance as laid down by the Supreme Court I am of the view that there is a striking resemblance between the two words and there is a real danger of deception and confusion being caused by the two marks in view of the similarity and affinity of sounds between the words LIKE ME and LAKME.
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(Emphasis Supplied)
20. In the present case, the impugned mark of respondent no. 1, BSB MYRON is deceptively similar to that of the petitioners mark, KYRON. Moreover, the parties are dealing in the same business and selling the same product, thereby catering to the same customer base.
21. This Court in the case of Heifer Project International Versus Heifer Project India Trust, 2024 SCC OnLine Del 2847, while holding that an impugned mark that is nearly identical, along with a business that is operating in the same areas and targeting the same segments of the public, would be certain to cause deception and confusion among the general public, has held as follows:
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30. Indeed, the present case is a classic instance of triple identity. The Impugned trademarks are nearly identical, as are the areas of operation, and the segments of the public they target. Therefore, the Defendants’ use of these nearly identical and deceptively similar marks is certain to cause deception and confusion among the general public. Besides, the Defendants have persistently engaged in activities that unlawfully exploit Plaintiff’s reputation and goodwill. Even after the termination of their contractual relationship and the explicit withdrawal of rights to use the Plaintiff’s trademarks and logos, Defendants have unauthorisedly continued use of their deceptively similar marks. This defiance not only violates the agreement but also misleads the public and the relevant stakeholders regarding the nature of Defendants’ affiliation with Plaintiff. Defendants have further compounded their infringement by falsely representing their relationship with Plaintiff. They have insinuated to the public and stakeholders that they remain affiliated or integrally connected with Plaintiff, thereby undermining Plaintiff’s brand/trademark integrity and causing confusion about its unique identity in the marketplace. Defendants lack any legal right or justification to the use of contested marks, or applying for their registration of identical marks for conducting any business activities.
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(Emphasis Supplied)
22. At this stage, it would be pertinent to consider the usage of the respective marks by the parties. This Court notes that the earliest registration of the petitioner for the mark, KYRON in Class 32 dates back to the year 2012, dated 7th July, 2012. The registration certificate to that effect, is reproduced as under:
23. Further, the earliest registration of the petitioner for the mark KYRON in Class 33, also dates back to the year 2012, dated 1st May, 2012, which is reproduced as under:
24. On the other hand, the application of the respondent no. 1 for registration of the mark, BSB MYRON in Class 32 under registration no. 4544212, is dated 25th June, 2020, on a proposed to be used basis. The screenshot of the status of registration of respondent no. 1, is reproduced as under:
25. Likewise, the date of the application for registration of the mark in favour of the respondent no. 1 under registration no. 4544211 in Class 33 is dated 25th June, 2020, on a proposed to be used basis, which is reproduced as under:
26. Perusal of the status of the aforesaid registrations, bring to light that the petitioner has its earliest registrations under Classes 32 and 33 in the year 2012, while the respondent no. 1 has filed its applications in the same Classes for its mark in the year 2020, which were subsequently registered in the year 2021. It is also to be noted that the petitioner has placed on record several documents, i.e. CA Certificates dated 24th May, 2023 showing the sales and expenditure along with promotional materials and campaigns undertaken by the petitioner for their products, showing their continuous and prior use of their mark, KYRON. Further, the petitioner has also placed on record invoices for sale of its goods under the mark KYRON, the earliest invoice being of the year 2012. Thus, it is manifest that in view of the materials placed on record, and the non-contest on part of respondent no. 1, the petitioner is the prior user with the mark KYRON. The respondent no. 1, is clearly the subsequent user, that also on a proposed to be used basis, and has failed to place on record any usage of its mark, BSB MYRON.
27. Thus, this Court in the case of Kia Wang Versus Registrar of Trademarks and Another, 2023 SCC OnLine Del 5844, while dealing with similar facts, wherein the respondent had failed to appear and refute any claims of the petitioner, and upon the petitioner proving their prior user, held that the right of a prior user is superior in comparison to a subsequent user, and cancelled the mark of the respondent. The relevant paras are as under:
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17. Having examined the matter further, this Court is of the view that Petitioner has been able to substantiate his case of prior user of the trademark which was coined and adopted by the Petitioner in 2014 and for which he subsequently secured the domain name www.rockpapa.com. To buttress the case of prior user, learned counsel relied upon the judgments in Milmet Oftho (supra), Neon Laboratories (supra) and S. Syed Mohideen (supra). In Milmet Oftho (supra), the Supreme Court held that the ultimate test should be, who is first in the market, where the trademarks are similar. In Neon Laboratories (supra) the Supreme Court observed that first user rule is a seminal part of the 1999 Act and in fact recognized that the right of a prior user is superior to a registrant of the trademark, reiterating and reaffirming the law declared in S. Syed Mohideen (supra). Therefore, it is a well settled principle of Trademark law that a prior user’s rights will override the rights of a subsequent user even though the latter’s mark may be a registered trademark. Petitioner has categorically pleaded use of the trademark from 2014 and claimed that the same is prior to that of Respondent No. 2, who despite being impleaded as a party by the Petitioner and being served with the notice of this petition, chose to remain absent, instead of contesting the position. In the absence of a reply controverting the pleadings, the same have to be treated as admitted albeit in this case Petitioner has been able to show prior user. Therefore, in wake of prior use of the trademark by the Petitioner, coupled with several registrations abroad, in support of which registration certificates, whose validity is unrefuted and unrebutted, have been filed, as well as the continuous and uninterrupted use of the mark in course of trade in respect of the goods aforementioned, the trademark has become distinctive of the goods of the Petitioner and is associated with him.
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20. Clearly, bad faith is an unfair practice involving lack of honest intention, a conscious doing of wrong and not just a mistake. It includes dealings which fall short of standards of acceptable commercial behaviour. When one examines the adoption of the impugned trademark by Respondent No. 2 in the present case, there is little doubt that there was a dishonest intention in adopting Petitioner’s similar mark for identical goods including the word in the same colour, font and style, as a part of the device mark. The dishonest intention is with a view to encash on the goodwill of the trademark of the Petitioner and this gets pronounced by the fact that Respondent No. 2 has allowed the petition to go uncontested without even appearing in the matter, leave alone filing any counter statement or evidence to rebut even the prior user. Therefore, the impugned trademark is liable to be cancelled and removed from the Register of Trade Marks rectifying the Register.
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(Emphasis Supplied)
28. Thus, in view of the above, the mark of respondent no. 1, i.e. BSB MYRON is held to be deceptively and phonetically similar to the mark of the petitioner, i.e. KYRON, and therefore is likely to cause confusion being under the same Classes, i.e. 32 and 33, especially, on account of the similar products, business and segment of customers that the parties deal in. Further, it is established that the petitioners mark has the prior user, and therefore, the impugned mark of the respondent no. 1, is liable to be removed from the Register of Trade Marks.
29. This Court notes the submission of learned counsel appearing for the petitioner that the petitioner gives up its prayer for costs. Further, this Court records the submission made on behalf of the petitioner that the petitioner has no objection to the use of the mark BSB by the respondent no. 1.
30. Accordingly, the following directions are issued:
30.1 The trademark registration no. 4544212 in Class 32 for the mark, BSB MYRON, registered in favour of respondent no. 1, is hereby cancelled.
30.2 The trademark registration no. 4544211 in Class 33 for the mark, BSB MYRON, registered in favour of respondent no. 1, is hereby cancelled.
30.3 The Registrar of Trade Marks is directed rectify, remove and expunge the aforesaid entries from the Register of Trade Marks.
31. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in, for compliance.
32. The present petitions are, accordingly, disposed of, with the aforesaid directions.
MINI PUSHKARNA, J
FEBRUARY 10, 2025
Corrected & Released on: 22nd February, 2025
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C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 2 of 19