Headnote
Trade Marks Act, 1999 – Section 57 – Rectification of Register – Prior user – Deceptive similarity – Bad faith adoption – Identical goods – Phonetic and visual similarity.
Held, registration of a trademark is liable to be cancelled where the registrant is not the true proprietor and the mark has been adopted dishonestly in derogation of prior user rights. Continuous and extensive prior use of a mark from an earlier date confers superior proprietary rights, which override a subsequent registration obtained on a “proposed to be used” basis. Where competing marks are identical or deceptively similar in their essential features and are used for identical goods, the likelihood of confusion is presumed. In the absence of any defence or evidence from the registered proprietor, uncontroverted pleadings and material demonstrating prior adoption, goodwill, and reputation are sufficient to infer bad faith. Upholding the sanctity of the trademark register, the Court directed rectification under Section 57 of the Act and ordered removal of the impugned mark, reaffirming that the register cannot be allowed to shelter dishonest or non-bona fide entries.
Court’s decision
The Delhi High Court allowed a rectification petition filed under Section 57 of the Trade Marks Act, 1999 and directed removal of the trademark “BSM” registered in Class 11 from the Register of Trade Marks. The Court held that the petitioner was the prior adopter and continuous user of the mark and that the respondent’s registration was obtained dishonestly for identical goods. The impugned trademark was ordered to be cancelled.
Facts
The petitioner is engaged in the business of processing, marketing, and selling lighting and LED products falling in Class 11. The family business commenced in 2014 under the mark “BSM”. In 2015, the petitioner’s late husband applied for registration of device marks incorporating “BSM” in Classes 9 and 11. While the Class 11 application was later abandoned, the Class 9 mark was granted registration.
Subsequently, in 2021, the petitioner applied for registration of a device mark incorporating “BSM” in Class 11, claiming user since April 2014. During the pendency of that application, the petitioner discovered that Respondent No. 1 had secured registration of the word mark “BSM” in Class 11 on a “proposed to be used” basis in 2021. The discovery occurred when Respondent No. 1 filed a notice of opposition against the petitioner’s trademark application.
Alleging dishonest adoption and likelihood of confusion, the petitioner approached the Delhi High Court seeking rectification of the Register.
Issues
The central issues before the Court were whether the petitioner was the prior user of the mark “BSM”, whether the impugned registered mark was deceptively similar and used for identical goods, and whether the entry relating to the impugned mark was wrongly remaining on the Register warranting rectification under Section 57 of the Trade Marks Act.
Petitioner’s arguments
The petitioner contended that the mark “BSM” had been coined and adopted in 2014 and had been used continuously and extensively in relation to lighting products. It was argued that substantial goodwill and reputation had been built through exhibitions, trade fairs, social media promotion, and steadily increasing sales turnover. The petitioner submitted that the impugned mark was identical and deceptively similar in all respects and was registered much later on a “proposed to be used” basis without any bona fide justification. Reliance was placed on settled principles governing prior user rights and deceptive similarity.
Respondent’s arguments
Respondent No. 1 failed to file any reply or written submissions despite repeated opportunities and was proceeded ex parte. The Trade Marks Registry, impleaded as a formal party, submitted that it would abide by the directions of the Court.
Analysis of the law
The Court analysed the scope of rectification under Section 57 of the Trade Marks Act and reiterated that the Register must reflect only valid and bona fide proprietary claims. Prior user rights, being superior in nature, override statutory registration obtained subsequently. The Court emphasised that in cases involving identical marks for identical goods, the test of deceptive similarity is easily satisfied, and confusion is presumed.
The absence of any rebuttal from the registered proprietor further strengthened the petitioner’s case, as uncontroverted pleadings supported by documentary evidence are deemed admitted.
Precedent analysis
The Court relied on decisions such as Parle Products v. J.P. & Co. and Sun Pharma Laboratories v. Lupin Ltd., which lay down that marks must be compared based on their overall and essential features, and that phonetic similarity is a crucial factor, particularly where goods are identical. The Court also relied on Russell Corporation Australia v. Ashok Mahajan, where rectification was ordered on the ground of bad faith adoption.
Court’s reasoning
Applying these principles, the Court found that the petitioner had established prior adoption and continuous use of the mark “BSM” since 2014. The impugned mark was found to be identical and registered later for identical goods. Given the petitioner’s established goodwill and the respondent’s failure to justify adoption or use, the Court inferred bad faith. Allowing such a registration to remain would undermine the integrity of the trademark register and prejudice the rights of a bona fide prior user.
Conclusion
The rectification petition was allowed, and the Trade Marks Registry was directed to remove the impugned trademark “BSM” registered in Class 11 from the Register of Trade Marks. The Court reaffirmed that trademark law protects honest adoption and prior use, not opportunistic registrations.
Implications
The judgment reinforces the primacy of prior user rights in Indian trademark law and serves as a warning against registering marks without bona fide intent to use. It underscores that ex parte proceedings will not shield dishonest registrations and that courts will actively cleanse the Register to preserve its sanctity.
Case-law references
- Parle Products (P) Ltd. v. J.P. & Co. – Test of deceptive similarity based on overall impression.
- Sun Pharma Laboratories Ltd. v. Lupin Ltd. – Importance of phonetic similarity and essential features.
- Russell Corporation Australia Pty. Ltd. v. Ashok Mahajan – Rectification ordered for bad faith adoption.
FAQs
1. Can a registered trademark be cancelled in favour of a prior user?
Yes. Prior user rights prevail over subsequent registration under Indian trademark law.
2. Is reply by the registered proprietor mandatory in rectification proceedings?
Failure to file a reply can result in pleadings being treated as admitted and the mark being cancelled.
3. What constitutes bad faith in trademark adoption?
Adopting an identical or deceptively similar mark for identical goods without justification, especially despite knowledge of a prior user, amounts to bad faith.