Court’s decision
The Madras High Court set aside the order of the Intellectual Property Appellate Board (IPAB) that had rectified the registration of the whisky trademark OFFICER’S CHOICE at the instance of the rival brand ORIGINAL CHOICE. The High Court held that the IPAB had committed a fundamental error by dissecting the rival marks and failing to undertake a holistic comparison mandated under trademark jurisprudence. The Court found that the two marks, viewed as entire composite expressions, were neither deceptively similar nor capable of confusing consumers. Restoring the registration, the Court held that a descriptive common word such as “CHOICE” cannot be monopolised and the essential feature of the competing marks differs both visually and structurally.
Facts
The dispute arose between two major whisky manufacturers—one selling its long-standing spirit under the trademark OFFICER’S CHOICE, launched in the late 1980s, and the other using the trademark ORIGINAL CHOICE for its whisky brand. Both marks had been co-existing in the market for decades with massive independent sales, promotions, and goodwill. The manufacturer of ORIGINAL CHOICE filed rectification petitions before the IPAB alleging deceptive similarity and claiming that the continued presence of OFFICER’S CHOICE on the register violated the Trade Marks Act. The IPAB allowed the rectification, relying heavily on the shared element “CHOICE” and holding that the latter part of the marks created a likelihood of confusion. The manufacturer of OFFICER’S CHOICE challenged the rectification before the High Court.
Issues
The High Court examined multiple interconnected questions:
• Whether the IPAB erred by dissecting the marks and analysing only the common suffix “CHOICE”, instead of applying the settled principle of comparison of marks as a whole.
• Whether the word “CHOICE” is descriptive, laudatory, or common to trade, and thus incapable of exclusive protection.
• Whether long concurrent use of both marks in the market without confusion supports retaining the registration.
• Whether IPAB failed to apply the anti-dissection rule and the dominant feature test properly.
• Whether rectification was justified after decades of peaceful market co-existence.
Petitioner’s arguments
The petitioner argued that the IPAB had fundamentally misapplied trademark law by isolating the common word “CHOICE,” which is purely laudatory and widely used by traders. The essential and dominant element of the petitioner’s mark was “OFFICER’S,” creating a strong visual, phonetic, and conceptual distinction. They emphasised that both brands had been co-existing in the Indian market for over 30 years without any actual confusion among consumers, which negated any theory of deceptive similarity. The petitioner contended that long, honest concurrent use, enormous sales, and distinctive get-up all supported protection of the mark. They argued that the IPAB’s approach contradicted Supreme Court jurisprudence.
Respondent’s arguments
The respondent argued that the shared suffix “CHOICE” created an overall similar structure between the marks and that the public was likely to associate ORIGINAL CHOICE whisky with OFFICER’S CHOICE whisky. They submitted that the two marks had similar rhythm, cadence, and phonetic impression. The respondent asserted that the petitioner could not claim exclusivity over “OFFICER’S CHOICE” because its adoption was not inherently distinctive. The respondent emphasised that the petitioner’s dominant portion, in their view, was “CHOICE” and that the use of the same suffix in identical goods created a likelihood of confusion and deception.
Analysis of the law
The Madras High Court reiterated the foundational rules of trademark comparison:
- Marks must be compared as a whole.
- The anti-dissection rule prohibits isolating parts of composite marks.
- Dominant feature analysis must be applied cautiously without ignoring the mark in its entirety.
- Descriptive or common trade elements cannot control the comparison.
The Court emphasised that consumers encounter marks in an overall, imperfect fashion—not by splitting them syllable by syllable. When examined comprehensively, “OFFICER’S CHOICE” and “ORIGINAL CHOICE” differ in structure, meaning, and commercial impression. The shared element “CHOICE” is merely laudatory and non-distinctive, incapable of generating confusion by itself.
Precedent analysis
The High Court relied on multiple Supreme Court and High Court rulings, the most prominent being Cadila Healthcare, emphasising phonetic, structural, and conceptual comparison. It also referred to the anti-dissection principle laid down in Amritdhara Pharmacy, holding that the broad and salient features of the marks matter more than microscopic comparison. The Court applied the principle that common descriptive words cannot be monopolised, drawing from earlier cases on laudatory trademarks. It further noted that long concurrent use is strong evidence of absence of confusion, a principle reinforced in several judgments where courts declined to disturb old registrations when both marks co-existed peacefully in the marketplace.
Court’s reasoning
The Court found that IPAB’s rectification order was legally erroneous because it treated the suffix “CHOICE” as the dominant feature while completely ignoring the prefix “OFFICER’S,” which was distinctive and gave the mark its identifying character. The Court held that “CHOICE” is a laudatory term suggesting nothing more than the consumer’s selection and is common to numerous marks. The Court also found that the public had never been confused despite decades of intense commercial presence of both whisky brands. The High Court further reasoned that removing a long-standing mark from the register requires strong evidence of deception, not speculative assumptions. Since the marks differ in appearance, idea, and phonetics, rectification was unjustified.
Conclusion
The Madras High Court restored the registration of the whisky trademark OFFICER’S CHOICE and set aside the IPAB order that had rectified it. The Court reaffirmed that trademark protection depends on the overall commercial impression of a mark and that laudatory and descriptive suffixes cannot dominate the comparison. The judgment strengthens the anti-dissection rule, confirms that coexistence without confusion is legally relevant, and clarifies that rectification cannot be allowed on the basis of speculative similarity. The petition was allowed, and the trademark OFFICER’S CHOICE retained on the register.
Implications
This ruling is a powerful reaffirmation of the principle that trademark comparison must be holistic and consumer-centric, not mechanical. It protects long-standing brands from rectification attempts rooted in partial or superficial similarities. It also clarifies that descriptive or laudatory components—especially common trade terms—cannot be monopolised. The decision will significantly guide trademark disputes in the alcohol, FMCG, and lifestyle sectors, where shared descriptive suffixes and prefixes are common. It also limits the IPAB’s approach to “dominant feature” analysis, ensuring that tribunals do not over-emphasise common parts of marks at the cost of distinctiveness.