Trademark was registered with an intention to tarnish the image of '100 Pipers' and with malafide intention
Intellectual Property Appellate Board, Chennai has ordered removal of trademark ‘Royal Pipers' registered by Khoday Breweries, Bengaluru following opposition from global Scotch Whisky major Chivas Holdings (IP), Ltd
Chennai: The Intellectual Property Appellate Board, Chennai has ordered removal of trademark ‘Royal Pipers’ registered by Khoday Breweries, Bengaluru following opposition from global Scotch Whisky major Chivas Holdings (IP), Ltd. The Khoday Breweries had registered the trademark resembling a popular brand ‘100 Pipers’ of Chivas Holdings, Scotland, United Kingdom. In the petition, Chivas Holdings submitted that the trademark ‘100 Pipers’ has been used continuously across the globe since 1949. On account of long and continuous usage, the trademark became a well known brand signifying ‘scotch whisky’ originating from Chivas Holdings, Scotland, UK. The brand has been associated with firm and became a quintessential part of the company.
The ‘100 Pipers’ trademark was registered in India on July 1964 under class of wine, spirit and liquor products. The firm inspired from tradition of Pipers regiment in Scottish Army in the past had adopted 100 Pipers. The Pipers playing musical instruments had encouraged Scottish Army during battle.
The brand secured global popularity and good will. The reputation achieved by the brand can be gauged from the fact that the firm had shipped 26.2 million units (each containing 9 litre) between June 2000 to July 2010 and 18.5 million units across the globe in 2010. The firm had shipped over 1.25 million units between June 2000 to July 2010 and 0.22 million to India. However, the Bengaluru based Khoday Breweries, had dishonestly adopted and using trade mark ‘Royal Pipers’ under the similar category. ‘Royal Pipers’ trademark visually, structurally and phonetically resembles the trademark of ‘100 Pipers’.
Chivas Holdings said the Khoday Breweries had not disclosed any plausible justification for adopting and registering the Royal Pipers. Both the goods belonged to alcoholic beverages category. Adopting similar trademark would cause confusion in the mind of consumers at large. Such trademark registered and remaining in the Trademark Registry, violates the provisions of section 11 (1) of Trademark Act 1999 and liable to be removed. The trademark was registered with an intention to tarnish the image of ‘100 Pipers’ and with malafide intention.
The firm also accused that Khoday Breweries was a habitual infringer of several popular brands belonged to Chivas Holdings and others reputed firms across the globe. It adopted and registered several brands resembling trademarks of products owned by other companies. Denying all the allegations Khoday Breweries submitted that the Chivas Holdings cannot claim exclusive right over the trademark involving Pipers, The company, which remained in deep slumber, woken up 13 years after registering the trademark Royal Pipers. It has no locus standi to file the petition challenging the TM.
The bench comprising its Chairman Justice K.N. Basha and technical member, (Trademarks) Sanjeev Kumar Chaswal said that Khoday Breweries sent a letter dated December 5, 2014 to the Registry of Intellectual Property Appellate Board stating that they were not interested to pursue the registration of the trade mark “Royal Pipers”, which was renewed upto December 10, 2018. The bench said “in view of this, the Registrar of Trade Marks has been directed to remove the impugned trade mark “Royal Pipers” from the trademark registry in three weeks.”
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