Decided on January 20,2016

The Intellectual Property Appellate Board And Ors. Respondents


R.F.NARIMAN, J. - (1.) Leave granted. The respondent No.4 is a corporation incorporated under the laws of the United States of America. It is an ultimate subsidiary of Pernord Ricard S.A., which is engaged in the business of manufacturing and marketing a variety of alcoholic beverages worldwide. It claims that it has coined and adopted the trademark 'BLENDERS PRIDE' through its licensee M/s Seagram Company Limited in the year 1973. According to respondent No.4, on account of extensive sales and marketing worldwide, the trademark 'BLENDERS PRIDE' has come to acquire a tremendous reputation in various countries including India. In order to secure its proprietary rights in the said trademark, respondent No.4 had applied for and was granted registration of the said trademark in more than 50 countries and has been selling 'BLENDERS PRIDE' whisky in India through its licensee Seagram India Private Limited since 1995. It has also applied for registration of the trademark 'BLENDERS PRIDE' under two applications in class 33 which are pending registration. The appellant's application for registration of an identical trademark 'BLENDERS PRIDE' was advertised in the Trademarks Journal Mega -I. This journal was published on 7 th October, 2003. Respondent No.4 had filed Form TM -44 seeking extension of one month's time for filing its notice of opposition against the appellant's application on 6.1.2004, i.e. within the statutory period of three months. On 19.1.2004, respondent No.4 had filed its notice of opposition before the Trade Marks Registry, New Delhi and the same was numbered as DEL -160325. On 16.2.2004, the Trade Marks Registry issued a notice to the appellant inviting its counter statement to the said notice of opposition, and had stated that if the counter statement was not filed within time, the trademark application would be deemed to be abandoned. However, when the matter stood thus, respondent No.4 came to know on 20.1.2005 that a trademark registration certificate bearing No.618414 had been issued to the appellant on 13.1.2004 itself. Immediately, however, through its attorneys, respondent No.4 informed the Trade Marks Registry about the pending opposition proceedings which were yet to be disposed of.
(2.) Since no communication was received from the Registry, respondent No.4 filed a writ petition before the Delhi High Court being Writ Petition Nos. 2712 and 2713 of 2005. Meanwhile, on 16.2.2005, a show cause notice was issued by the Registrar under Section 57(4) of the Trade Marks Act, 1999 to the appellant, in which it was said that the registration certificate had been issued wrongly, and since the said trademark was wrongly on the register of trademarks, it was proposed to rectify the register under Section 57(4) as per representation made by the attorneys of respondent No.4.
(3.) Meanwhile, the writ petition filed by respondent No.4 to remove the trademark from the register came up for hearing and was disposed of by an order dated 2.3.2005 with the observation that the Registrar shall proceed to decide the issues arising out of the show cause notice as expeditiously as possible and in accordance with law.;

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