Madras High Court Strikes Down 'Original Choice' Trademark, Rules in Favor of 'Officer's Choice'

The Madras High Court on Friday ruled in favour of Allied Blenders and Distillers Pvt. Ltd. (ABD), the maker of Officer's Choice whisky, and ordered the removal of John Distillers Ltd.'s (JDL) 'Original Choice' trademark from the register of trademarks. A Division Bench of Justice G Jayachandran and Justice Mummineni Sudheer Kumar in an order held that Original Choice was deceptively similar to Officer's Choice and that its registration violated the Trade Marks Act, 1999. The Court also confirmed that ABD's registration for Officer's Choice remains valid. The court found that the now-defunct Intellectual Property Appellate Board (IPAB) had erred in its 2013 order by comparing only the word elements of the rival marks instead of assessing the labels as a whole. Considering the long pendency of the case and the abolition of the IPAB, the Court decided to examine the marks itself instead of sending the matter back. The dispute arose as ABD, which sells whisky under the brand “Officer's Choice”, filed a rectification petition before the trademark registry seeking removal of JDL's “Original Choice” trademark, claiming it was phonetically and visually similar to its mark and likely to confuse consumers. In turn, JDL filed its own rectification plea against ABD's “Officer's Choice” mark, alleging that ABD had suppressed facts when seeking registration and that its 1990 registration application was filed before it had obtained ownership of the mark. The IPAB in 2013 dismissed both petitions, ruling that the marks were not deceptively similar. Both companies then approached the Madras High Court. The High Court first examined whether Allied Blenders and Distillers Pvt. Ltd. (ABD)'s 1990 application for the trademark Officer's Choice was valid. The Court found no element of fraud in ABD's application and noted that it was supported by proper board resolutions, an assignment agreement, and a subsequent deed of assignment with the original proprietor. On the other hand, the Court rejected John Distillers Ltd. (JDL)'s claim that its mark 'Original Choice' had co-existed peacefully with Officer's Choice. It held that the Intellectual Property Appellate Board (IPAB) had failed to exercise its powers under Section 57 of the Trade Marks Act to properly assess the validity of the registration. Referring to Sections 9(1)(a) and 9(2)(a) of the Act, the Bench emphasized that a trademark which lacks distinctiveness or is likely to deceive the public cannot be allowed to remain on the register.The court observed, “The enjoyment of the trademark 'Original Choice' by JDL been in continuous disturbance. Any wrongful adoption of a mark in violation of Section 9(1)(a) and 9(2)(a) of the Trade Marks Act is at the risk of the adopter. Having held that JDL's use of 'ORIGINAL CHOICE' is not a bona fide and honest, the mark is liable to be rectified.”The Court emphasized that the likelihood of confusion must be judged from the viewpoint of an average consumer with imperfect recollection, rather than by side-by-side comparison. It concluded that Original Choice lacked distinctiveness and was likely to deceive the public. Accordingly, the High Court ordered the rectification of the Original Choice trademark, set aside the IPAB's earlier dismissal of ABD's petition, and allowed ABD's writ petition in full. Consequently, the Court set aside the IPAB's dismissal of ABD's rectification petition and allowed the Writ Petition filed by ABD. Case Title: Allied Blenders and Distillers Pvt Ltd v. Intellectual Property Appellate Board & Ors.Citation: 2025 LiveLaw (Mad) 408 Case Number: W.P.Nos.19734 & 25296 of 2013 For Petitioner: Senior Advocate P S Raman and Advocate K Premchander For Respondent: Senior Advocate Sanjay Jain assisted by Advocates Sushant M Singh, A Ramji , R Sathish KumarClick Here To Read/Download The Order

Madras High Court Strikes Down 'Original Choice' Trademark, Rules in Favor of 'Officer's Choice'

Ayushi Shukla

This is a premium content
Available exclusively to
Our subscribers

INR 1099+GST

Tags

Ayushi Shukla

Madras High Court Strikes Down 'Original Choice' Trademark, Rules in Favor of 'Officer's Choice'

Ayushi Shukla

This is a premium content Available exclusively to Our subscribers

INR 1099+GST

Tags

Ayushi Shukla

This is a premium content
Available exclusively to
Our subscribers