Court’s Decision
The Bombay High Court, in a major verdict reinforcing integrity in trademark law, expunged the Indian registration of the “LE SHARK” trademark held by the Respondents under Registration No. 466002 (Class 25: clothing, footwear, accessories), finding the registration fraudulent, dishonest, and unsupported by bona fide use.
Justice R.I. Chagla held that the Respondents’ mark was an identical copy of the Petitioner’s European registrations dating back to 1985, and that fabricated invoices were relied upon to falsely claim use in India. The Court concluded:
“The impugned trademark is the fruit of fraud and borne out of dishonest intentions. It is difficult to purify its use subsequently.”
Accordingly, the Court directed that the Respondents’ trademark be removed from the Register of Trade Marks under Sections 47(1)(a), 47(1)(b), and 57 of the Trade Marks Act, 1999, and imposed costs for abuse of the statutory system.
Facts
The dispute concerned ownership of the “LE SHARK” brand, originally conceived in 1984 in the United Kingdom by Le Shark Limited. The Petitioner, a successor through multiple assignments (via Hamsard 2353, Grabal Alok, and S.R.G. Apparel Plc), owned global registrations across Europe for the stylized “LE SHARK” logo with a shark device.
The Respondent, however, applied for and obtained registration of an identical mark in India in 1987 “on a proposed-to-be-used basis,” despite having earlier acted as manufacturers for Aldgate Warehouse, an affiliate of the Petitioner’s predecessor.
The Petitioner discovered the conflicting mark only in 2016, when its own Indian application (No. 2904714) was refused citing the Respondents’ prior registration. It then filed this Rectification Petition in 2018, initially before IPAB (later transferred to the High Court post-abolition of the Tribunal).
The Respondents defended their registration as longstanding (since 1987) and claimed continuous use supported by invoices. However, several invoices were proven fabricated, being issued to entities not yet incorporated on the stated dates.
Issues
- Whether the Respondents had bona fide intention and use of the impugned “LE SHARK” mark as required under Sections 47(1)(a) and 47(1)(b) of the Trade Marks Act, 1999.
- Whether the registration was obtained fraudulently and liable to be rectified under Section 57.
- Whether the Petitioner, being a foreign proprietor, qualified as an “aggrieved person” with locus standi to seek rectification.
- Whether alleged procedural defects (power of attorney, delay, or maintainability) could invalidate the Petition.
Petitioner’s Arguments
The Petitioner argued that the Respondents dishonestly copied its internationally registered LE SHARK mark, including the same font, graphic device, and layout first registered in the U.K. in 1985. It contended there was no bona fide intention or use, as the mark was filed on a “proposed to be used” basis and never commercially exploited in India.
Counsel Rohan Kadam pointed out glaring inconsistencies in the Respondents’ evidence: several invoices dated 2006 were issued to Isha Crafts Pvt. Ltd., a company incorporated only in 2009, proving fabrication.
He relied on:
- Aktiebolaget Volvo v. Volvo Steels Ltd. (1997 SCC OnLine Bom 578) – identical adoption implies dishonest intent.
- Jayant Industries v. Indian Tobacco Co. (2022 SCC OnLine Bom 64) – fabricated documents disentitle relief.
- Infosys Technologies Ltd. v. Jupiter Infosys Ltd. ((2011) 1 SCC 125) – defining “aggrieved person.”
He argued that delay is no bar to rectification since non-use is a continuing cause of action, citing Fedders Lloyd Corporation Ltd. v. Fedders Corporation (2005 ILR 1 Del 478).
Respondent’s Arguments
Counsel Lakshyaved Odhekar contended that the Respondents’ trademark was validly registered since 1987 and continuously renewed for over three decades. He argued the Petitioner had no Indian presence, started using the brand only in 2014, and had no proof of trans-border reputation in Indiaordjud (25).
The Respondents claimed that their mark was independently coined and extensively used, producing invoices from 1990 onwards as proof of business. They also questioned the Petitioner’s locus, the validity of its power of attorney, and delay in filing.
Citing Eagle Potteries Pvt. Ltd. v. Eagle Flask Industries (1992 SCC OnLine Bom 490), they argued that burden of proving non-use lies on the applicant. They also relied on Milmet Oftho Industries v. Allergan Inc. ((2004) 12 SCC 624), asserting that multinational entities without operations in India cannot throttle local traders.
Analysis of the Law
The Court analyzed Sections 47 and 57 of the Trade Marks Act. Under Section 47(1)(a), rectification can be ordered if there was no bona fide intention or use up to three months before the application. Section 47(1)(b) deals with five years of continuous non-use, while Section 57 empowers removal for “sufficient cause,” including fraudulent registration.
Justice Chagla emphasized that fraudulent adoption taints the mark irreparably. Once dishonest intent is proved, subsequent use cannot legitimize the registration. The Court drew from La Societe Anonyme des Parfums Le Galion v. Jean Patou Inc. (U.S. App. Lexis 9252), holding that sporadic or de minimis use does not amount to bona fide use.
He noted:
“When a mark is born out of fraud, it is difficult to purify its use subsequently.”
Precedent Analysis
In addressing the issue of fraudulent registration and dishonest adoption, the Court drew strength from a series of authoritative precedents that collectively underscore a consistent judicial stance — that fraud vitiates all acts and cannot confer any legal right.
The first case referred to was Aktiebolaget Volvo v. Volvo Steels Ltd., 1997 SCC OnLine Bom 578, wherein the Bombay High Court had held that the adoption of an identical or deceptively similar mark by a party aware of another’s established reputation constitutes prima facie dishonesty. The Court in that case emphasized that “the intention to trade upon another’s reputation is the most significant test of dishonesty.” Applying this principle, Justice Chagla observed that the Respondents’ adoption of the “LE SHARK” logo — an arbitrary and distinctive mark already in international use since 1985 — could not be explained on any rational basis other than deliberate imitation.
Court’s Reasoning
The Court found overwhelming evidence of dishonest adoption and fabrication. It noted:
- The identical graphic shark logo was copied from Petitioner’s 1985 European mark.
- Respondents’ invoices were fabricated and lacked corroborating proof of sales or deliveries.
- No plausible explanation was provided for adopting a unique and fanciful term like “Le Shark.”
On maintainability, the Court dismissed objections regarding the power of attorney, holding them curable defects that cannot defeat substantive justice.
The Court also clarified that Section 47 applies irrespective of prior registration under the repealed 1958 Act, since the mark had been renewed under the 1999 Act and remained “subject to its provisions.”
Conclusion
The Bombay High Court allowed the Rectification Petition and ordered removal of the Respondents’ trademark from the Register.
It held that the mark was adopted with dishonest intent, supported by fabricated documentation, and therefore “wrongly remaining on the Register without sufficient cause.” The judgment restores the integrity of the trademark registry and reiterates that statutory monopoly cannot be abused to block rightful proprietors.
“The Court is obligated to summarily throw out parties who rely on fabricated materials. Fraud strikes at the root of all rights.”
Implications
This ruling fortifies India’s stance against trademark squatting and fraudulent registrations, ensuring that global proprietors with genuine rights are protected even in cross-border contexts. It underscores that:
- Fraud vitiates registration, and fabricated use cannot sustain a mark.
- Good faith and continuous use remain the cornerstone of trademark protection.
- Procedural defects (like minor errors in authority) cannot defeat justice in fraud-based disputes.