INDIA: IPAB Rules in favour of Chivas' 100 PIPERS Trademark
In an order issued by India’s Intellectual Property Appellate Board (IPAB) on March 3, 2015, the mark ROYAL PIPERS of Khoday Breweries Ltd. was struck off the Register following a rectification application by Chivas Holdings (IP) Private Limited (ORA/38/2012/TM/CH).
Khoday Breweries Ltd. had applied for registration of the trademark ROYAL PIPERS in 1998 and it was entered in the Register in 2005. Chivas Holdings Ltd., which is a multinational brand that has been known for its Scotch Whisky for decades, had been using the trademark 100 PIPERS since 1949 and registered the same in India in July 1964.
One of the main contentions of Chivas was that the impugned mark was deceptively similar to Chivas’s own well-established brand of Whisky. Since both parties’ marks related to alcoholic beverages, Chivas contended that Khoday had failed to justify that the adoption and registration of the impugned trademark was bona fide. Chivas also accused Khoday of being a habitual infringer by highlighting numerous registration attempts which the company had made in the past that were proved to be infringing the rights of other trademark holders (Diageo Brands B.V. and Ors. v. Khoday Breweries Ltd, I.A. No. 16758/2010 and I.A. No. 1908/2012 in CS (OS) No. 2510/2010 (Delhi) September 3, 2014).
The IPAB finally ordered removal of the mark ROYAL PIPERS on the basis of a letter of withdrawal filed by Khoday to the IPAB Registry on December 5, 2014. Hence, the final ruling was in favor of Chivas Holdings Ltd. and ROYAL PIPERS was ordered to be removed within three weeks from the Trade Marks Register.
The decision reiterates that the Trade Marks Registry is serious about providing effective protection to old and well-known brands in India and should be welcomed by brand owners across the globe.
Contributor: Amrit Sandhu, Chadha & Chadha, New Delhi
Verifier: Neha Chugh, IPR International Services, New Delhi
"This article first appeared here http://www.inta.org/INTABulletin/Pages/India_7014.aspx in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”