Delhi High Court Cancels ‘FIZIFREAK’ Trademark for Deceptive Similarity to ‘fi’zi:k’ and ‘FREE:K’ — “The Mark Incorporates Both Phonetic and Visual Elements of Petitioner’s Trademarks”

Court’s Decision

The Delhi High Court allowed the petition and directed the Registrar of Trademarks to cancel the registration of the mark ‘FIZIFREAK’, holding that it was deceptively similar to the petitioner’s trademarks ‘fi’zi:k’ and ‘FREE:K’. The Court found that the respondent had dishonestly adopted a mark combining features of both trademarks of the petitioner to cause confusion and exploit its goodwill. It concluded that:

“The adoption and registration of the impugned mark FIZIFREAK… appears to be a deliberate attempt… to exploit the petitioner’s goodwill and reputation.”

Facts

• The petitioner, an Italian company engaged in bicycle accessories and footwear manufacturing, has been using the trademark ‘fi’zi:k’ since 1995 (for saddles) and 1997 (for footwear).
• The products are available in India through authorized distributors since 2004 and on the website www.fizik.com.
• ‘fi’zi:k’ is registered in India (since 12.07.2019), and another mark, ‘FREE:K’, is registered in the EU.
• Respondent No. 1 applied for registration of the mark ‘FIZIFREAK’ in Class 25 (footwear, clothing) on 26.06.2014, claiming use from 01.06.2014.
• The registration lapsed on 26.06.2024 and had not been renewed till the date of the judgment.

Issues

1. Whether the mark ‘FIZIFREAK’ is deceptively similar to the trademarks ‘fi’zi:k’ and ‘FREE:K’.
2. Whether the respondent’s registration was liable to be cancelled under Section 11(3) of the Trade Marks Act, 1999.
3. Whether non-renewal of the impugned mark within the statutory period justified its cancellation.

Petitioner’s Arguments

• The impugned mark is a dishonest combination of the petitioner’s ‘fi’zi:k’ and ‘FREE:K’ trademarks and is phonetically, visually, and conceptually similar.
• The petitioner is the prior user, both globally and in India, predating the respondent’s claimed user date of 01.06.2014.
• The respondent has a history of bad faith filings, including similar applications like ‘CRUZE’ (similar to ‘CHEVROLET CRUZE’) and ‘TOYOYO’ (similar to ‘TOYOTA’).
• Despite notice, the respondent failed to renew the registration or appear in court, showing mala fides.
• Cited judgments:
  • H&M Hennes & Mauritz AB v. HM Megabrands Pvt. Ltd. — similarity and confusion.
  • Alfred Dunhill Ltd. v. R.P.S. Chawla — prior rights and infringement.
  • Vishesh Films v. Super Cassettes Industries — scope of protection of device marks.
  • Tata Sons Ltd. v. Prakash Yadav — habitual bad faith filers should be penalised.

Respondent’s Arguments

• None. The respondent remained unrepresented despite service via WhatsApp and email. The Court proceeded ex parte.

Analysis of the Law

• Section 11(1)(b) of the Trade Marks Act prohibits registration of marks likely to cause confusion due to similarity with earlier marks.
• Section 11(3)(a) bars registration where use would amount to passing off an unregistered trademark.
• Section 11(3)(b) protects against use which would violate rights under existing law.
• Even though ‘fi’zi:k’ was registered in India after the respondent’s mark, the petitioner established prior use and goodwill through global and Indian market presence.
• Trademark law protects coined marks, which deserve stronger protection against similar marks.

Precedent Analysis

• The Court relied on:
  • N.R. Dongre v. Whirlpool Corporation — prior use and trans-border reputation.
  • Cadbury UK Ltd. v. Lotte India Corporation Ltd. — online visibility as proof of reputation.
  • H&M v. HM Megabrands — registration barred when mark is deceptively similar.
  • Alfred Dunhill and Tata Sons — bad faith and passing off justify cancellation even if prior registration exists.

Court’s Reasoning

• The mark ‘FIZIFREAK’ incorporates both elements — phonetically and visually — of the petitioner’s marks ‘fi’zi:k’ and ‘FREE:K’.
• The petitioner’s marks are coined and distinctive, entitled to heightened protection.
• The adoption by the respondent appeared mala fide, aimed at capitalising on the goodwill of the petitioner’s brands.
• The respondent’s repeated registration attempts for deceptively similar marks indicated habitual bad faith conduct.
• Since the respondent failed to renew the mark and didn’t contest the petition, averments made by the petitioner stood unrebutted.

Conclusion

The Delhi High Court directed:

“Registrar of Trademarks… to proceed for cancellation of the impugned mark FIZIFREAK… and remove the impugned mark FIZIFREAK from the Register of Trade Marks.”

No costs were imposed.

Implications

• The judgment reinforces the high standard of protection granted to coined and internationally reputed trademarks.
• Habitual bad faith filers risk cancellation even if their marks were earlier registered.
• Prior and trans-border use continues to be a strong basis for protection, even in absence of early domestic registration.
• Online visibility and distribution channels can help establish goodwill and prior use.

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