Prabha Sridevan, J. - (1.) 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.
(2.) 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.
(3.) 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.;