Mr. Aayush Maheshwari, Advocates. vs BOUTIQUE SPIRIT BRANDS PRIVATE LIMITED &

Judgment

1. The present petitions are filed under Section 57 of the Trade Marks Act, 1999 (“the Act”) seeking cancellation of registration no. 4544212 in Classes 32, and registration no. 4544211 in Class 33 for the mark, „BSB MYRON‟ in the name of respondent no. 1 and rectification of the Trade Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 1 of 19

Marks Register under Rule 7 of the Delhi High Court Intellectual Property Rights Division Rules, 2022.

2. It is to be noted that the petitioner herein has also filed a suit, i.e. CS (COMM) 395/2023, titled as Allied Blenders and Distillers Limited Versus Boutique Spirit Brand Private Limited, against respondent no. 1, i.e., defendant in the suit, for infringement of their registered mark, „KYRON‟, against impugned mark, „MYRON‟ defendant/respondent no.1. 3. An interim order dated 01st June, 2023 was passed by this Court restraining the defendant/respondent no. 1 from using the marks, „MYRON‟, „BSB MYRON‟ or any other mark, which includes the word „MYRON‟ for Indian Made Foreign Liquor (“IMFL”) or for any other allied or cognate goods. The said interim order was made absolute pending disposal of the suit vide order dated 18th December, 2023.

4. This Court notes that respondent no. 1 was first issued notice in the present petitions on 01st June, 2023. Subsequently, vide order dated 04th September, 2023, the Court directed the petitioner to effect service upon respondent no. 1 by way of email, affixation and publication in one English and one Hindi newspaper, having circulation in the area where the respondent is located. Consequently, the respondent no. 1 was duly served by way of publication on 20th December, 2023, the factum of which is recorded in the order dated 18th December, 2023.

5. Despite service, none appeared for respondent no. 1, on account of which, the right to file reply in the petitions was closed vide order dated 01st March, 2024. The respondent no. 1 has failed to make an appearance or put forth any pleadings before this Court. Hence, in view thereof, this Court has Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 2 of 19 proceeded to finally hear the matter.

6. In both the petitions, respondent no. 2, i.e., Registrar of Trade Marks, is a formal party.

7. Facts, as canvassed in the petitions, are as follows:

7.1 The petitioner is engaged in the business of inter alia manufacturing and marketing of alcoholic beverages, including IMFL. The said beverages are sold under different trademarks and labels, i.e. KYRON, OFFICER'S CHOICE, OFFICER'S CHOICE BLUE, CLASS VODKA, LORD & MASTER, CALYPSO, SUMO, 1OOO GUINEAS & JOLLY ROGER, OFFICER'S CLUB, CLUB CLASS, STERLING RESERVE, etc.

7.2. The petitioner adopted the mark, „KYRON‟ during the year 2010, which is being used openly, continuously, extensively, consistently and exclusively by the petitioner since 2012, for which the petitioner holds registrations in Classes 9, 32 and 33. Further, the origination of the mark „KYRON‟ is from the Greek mythological character "CHIRON" who symbolizes strength, thereby, making the said mark as distinctive and arbitrary, for alcoholic beverages in Classes 32 and 33.

7.3 The respondent no. 1 is dealing in alcoholic beverages under the impugned mark, „BSB MYRON‟ registered in both Class 32 under registration no. 4544212 dated 28th January, 2021 and in Class 33 under registration no. 4544211 dated 29th January, 2021, on a „proposed to be used‟ basis.

7.4 The mark of the respondent no. 1 is identical as that of the petitioner. The petitioner came across the impugned mark of respondent no. 1 in March, 2023, and thereafter, the present rectification petitions have been filed. Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 3 of 19

8. On behalf of the petitioner, the following submissions have been made:

8.1 The petitioner‟s goods under the mark „KYRON‟ are sold all around the country, and have acquired impeccable and formidable reputation and goodwill in relation to its goods, merchandise and business. Further, the petitioner‟s brandy sold under the said mark has become very popular amongst the trade and public, and has become a source identifier for the petitioner‟s products.

8.2 By virtue of its quality, characteristics and distinctive packaging, the petitioner‟s products sold under its „KYRON‟ marks, have been awarded the Superior Taste Award in 2021 by the International Taste Institute‟s Jury of the world‟s best Chefs and Sommeliers. Further, the petitioner was also awarded the Monde Selection Award 2022 by the International Institute for Quality Selections, Brussels, Belgium.

8.3 The petitioner has made substantial sales under their mark, „KYRON‟ and has incurred large expenditure for sales and promotion of the products bearing the petitioner‟s mark, „KYRON‟. Further, the petitioner has promoted its products through sponsorship events such as KYRON Pondicherry, Kochi, and Hyderabad Fashion Week, as well as through posters, videos, etc.

8.4 The petitioner, on account of continuous and extensive use of the mark, „KYRON‟ all over the world, enjoys a reputation and goodwill in the market and with the consumers, who exclusively associate the mark with the petitioner in India and abroad.

8.5 The petitioner has spent considerable time, effort and monetary resources in securing registrations of the mark, „KYRON‟ worldwide, Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 4 of 19 including, India.

8.6 Further, the petitioner has also placed on record the status of pending applications of the petitioner before the Trade Marks Registry, wherein, opposition proceedings are pending, for the label and not over the brand, as such.

8.7 The essential and dominant feature of the respondent no. 1‟s mark is the word, „MYRON‟ in the impugned mark, „BSB MYRON‟ which is deceptively similar and a substantial reproduction the petitioner‟s mark, „KYRON‟. Further, respondent no. 1 is in the same industry and operates its mark under the same Classes, i.e. 32 and 33, for the segment of goods identical to that of the petitioner, which shows the mala fide and dishonest adoption by respondent no. 1 in use of the impugned mark, which is substantially similar to that of the petitioner‟s mark.

8.8 The word, „MYRON‟ used by respondent no. 1 is deceptively similar to the petitioner‟s mark, „KYRON‟, thus, the same would cause confusion for an average consumer, considering that products of both the parties are the same. Further, the petitioner has coined the word, „KYRON‟ and is the prior adopter of the same. Therefore, on account of the deception, dishonest adoption and subsequent user of respondent no. 1, the mark of respondent no. 1 ought to be removed from the Register of Trade Marks.

8.9 Respondent no. 1 has registered the mark, „BSB MYRON‟ in Classes 32 and 33, however, its manner of use of the said mark is only as „MYRON‟ and the acronym, „BSB‟ has been rendered inconspicuous owing to its reduced font size and separated placement. The same indicates clear intention of mischief on part of respondent no. 1, which is bound to cause confusion between the petitioner‟s products and that of the respondent no. 1. Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 5 of 19

9. I have heard learned counsel for the petitioner and perused the record.

10. At the outset, this Court notes the submission of learned counsel for the petitioner that they have no grievance with respect to respondent no. 1 using only the mark, „BSB‟ without the word „MYRON‟ included in their mark.

11. The petitioner is the registered owner of several trademarks with the mark „KYRON‟, that are valid and subsisting, out of which, the earliest application for registration is dated 12th November, 2010. The registrations in favour of the petitioner are reproduced, as under: Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 6 of 19

12. The petitioner has placed on record a certified CA Certificate dated 24th May, 2023, indicating their usage and sales under the mark „KYRON‟ from the years 2012-2013 to 2022-2023 in export and pan India. The sales of petitioner‟s product bearing the „KYRON‟ mark, are indicated in the following table, as given in the petition:

13. Further, the petitioner has also placed on record another certified CA Certificate dated 24th May, 2023, indicating the expenditure incurred by the petitioner for sales and business promotion for products bearing the mark, „KYRON‟ in the years 2011-12 to 2022-23, which is reproduced as under: Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 7 of 19

14. The issue for consideration before this Court is whether the mark of respondent no. 1, „BSB MYRON‟ is deceptively similar to that of the petitioner‟s mark, „KYRON‟.

15. It is to be noted that both the parties are in an identical business of selling alcoholic beverages, and their marks are registered under the same Classes, i.e. 32 and 33. Further, both parties are selling the product, i.e. brandy, under their respective marks, which are reproduced as under: PETITIONER’S MARK RESPONDENT NO. 1’S MARK KYRON BSB MYRON

16. Perusal of the marks makes it evident that, the essential and dominant feature of respondent no. 1‟s mark is the word „MYRON‟, as is indicated in the manner of usage and display of the mark by respondent no. 1 in the label used for their product. Photograph of the label in respondent no. 1‟s product, is as under:

17. The label as used by respondent no. 1, shows that the word „MYRON‟ has been displayed in a large font size with a glaring font, while the acronym, „BSB‟ is displayed in a much smaller font size at the top in comparison, making it exceedingly inconspicuous. An average consumer, Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:22.02.2025 21:42:18 C.O.(COMM.IPD-TM) 166/2023 & C.O. (COMM.IPD-TM) 167/2023 Page 8 of 19 when coming across the said display/label, would certainly be focussed on the word „MYRON‟, due to its manner of glaring display, and owing to the discreet font size and placement of the acronym, „BSB‟, which appears to be the impression attempted to be made by respondent no. 1 through their label in the product. The respondent no. 1, despite seeking registration of the complete word mark, „BSB MYRON‟, has surreptitiously rendered the appearance of the acronym „BSB‟ otiose due its manner of display. The same is indicative of the dishonest intention on part of respondent no. 1, as despite seeking registration for the complete word, „BSB MYRON‟, the manner of usage in the product prima facie appears to be clandestine.

18. Further, it is also made out that the word, „MYRON‟ is deceptively similar to the petitioner‟s word mark, „KYRON‟, by manner of its appearance along with the phonetic similarity. Therefore, respondent no. 1 by the approach of its use of the impugned mark, has evidently endeavoured to bring its mark, as close to that of the petitioner‟s mark. This is clearly in view of the petitioner‟s presence in a similar business in India and abroad since 2012. It is apparent that the mark of respondent no. 1, „MYRON‟ is deceptively similar to the petitioner‟s mark, „KYRON‟ and is likely to cause confusion.

19. This Court in the case of Lakme Limited Versus Subhash Trading and Others, 1996 SCC OnLine Del 585, while elucidating on the aspect of phonetic similarity between marks and its likelihood to cause confusion, held as follows: “xxx xxx xxx