Delhi High Court Reinforces Limitations of "Section 11(1) and 11(2)" for Non-Earlier Trademarks

Delhi High Court Reinforces Limitations of "Section 11(1) and 11(2)" for Non-Earlier Trademarks

The Delhi High Court recently reiterated in Kia Wang v. The Registrar of Trademarks & Anr. that Sections 11(1) and 11(2) of the Trademarks Act are inapplicable when the mark in question is not an "earlier trade mark."

In 2014, the Petitioner and his wife founded ROCKPAPA, a brand that designs, manufactures, and distributes children's products, such as headphones, pencil boxes, and school bags. The Petitioner is actively involved in product design, manufacturing, and research, with a focus on headphones, audio equipment, stereo headphones, high-fidelity loudspeakers, earphones, and audio speakers. The Petitioner also registered the domain www.rockpapa.com in the same year to sell and promote the products. The Petitioner claimed that their products are popular worldwide, including in Australia, Canada, Europe, the United States, and India. The Petitioner also sells their products through Amazon and has registered the ROCKPAPA trademark in various countries.

In 2020, Respondent No. 2 applied for and obtained registration of the contested mark in India. In 2021, the Petitioner became aware of the registration and filed this petition to remove the contested mark and rectify the Register of Trade Marks under Sections 47, 57, and 125 of the Trade Marks Act, 1999 (the Act).

The Petitioner challenged the registration on the following grounds: The Petitioner is the first to adopt and use the trademark, which means he has a stronger claim over the contested mark than Respondent No. 2. Therefore, the registration of the trademark by Respondent No. 2 cannot stand; The Contested mark lacks distinctiveness and is incapable of distinguishing the goods or services in respect of which it is registered from goods or services of another. It fails to meet the requirements outlined in Section 9(1)(a) of the Act; The contested mark possesses an inherent capacity to deceive the public and create confusion due to its resemblance to the Petitioner's mark. Consequently, it requires removal, according to Section 9(2)(a) read with Section 57 of the Act, from the Register; The contested mark bears a deceptive or confusing resemblance to the Petitioner's trademark, particularly concerning similar goods within the same class. This creates a substantial risk of the public either being confused or associating it with the Petitioner's mark. Thus, this registration contravenes Section 11(1) of the Act; Respondent No. 2's trademark registration infringes Section 11(2) of the Act because the Petitioner's trademark is a well-known mark. The use of a deceptively similar trademark by Respondent No. 2 harms the distinctiveness of the Petitioner's well-known mark, and The use of the contested mark by Respondent No. 2 requires prohibition under the common law of passing off in accordance with Section 11(3) of the Act.

The Petitioner argued that he was the first to adopt and use the trademark, which means he has a stronger claim over the contested mark than Respondent No. 2. Therefore, the registration of the trademark by Respondent No. 2 cannot stand.

The contested mark is also not distinctive and is incapable of distinguishing the goods or services in respect of which it is registered from goods or services of another. It fails to meet the requirements outlined in Section 9(1)(a) of the Act.

Additionally, the contested mark possesses an inherent capacity to deceive the public and create confusion due to its resemblance to the Petitioner's mark. Consequently, it requires removal, according to Section 9(2)(a) read with Section 57 of the Act, from the Register.

Furthermore, the contested mark bears a deceptive or confusing resemblance to the Petitioner's trademark, particularly concerning similar goods within the same class. This creates a substantial risk of the public either being confused or associating it with the Petitioner's mark. Thus, this registration contravenes Section 11(1) of the Act.

Finally, Respondent No. 2's trademark registration infringes Section 11(2) of the Act because the Petitioner's trademark is a well-known mark. The use of a deceptively similar trademark by Respondent No. 2 harms the distinctiveness of the Petitioner's well-known mark.

The Court issued notices to the Registrar of Trademarks and Sachin Garg, the proprietor of Pooja Creations. Since Respondent No. 2 did not appear, the Court proceeded ex parte against them.

The Court stated that the fundamental connection between Section 11(1) and Section 11(2) is identity or similarity with an "earlier trademark." This term is defined in the Explanation following Section 11(4). The Court found that the Petitioner failed to establish their case under any of the categories listed in the Explanation. This is because the Petitioner's trademark is not registered in India, nor is it the subject of an application under Section 18, Section 36E, or Section 154 of the Act.

Additionally, the Court noted that the Petitioner's mark is not a "well-known trademark" as defined in Section 2(1)(zg) of the Act. The Petitioner did not adequately allege in their pleadings that their mark satisfies all the requirements to qualify as a well-known trademark, as provided by Section 11(6) of the Act. Furthermore, the Registrar or any Court has not declared the contested mark to be a well-known trademark.

Relying on the decision in BPI Sports LLC v. Saurabh Gulati and Another, the Court held that the Petitioner's trademark does not qualify as an "earlier trademark" within the scope of Section 11(1) and 11(2), and these provisions do not assist the Petitioner (see para 14-16).

The Court observed that the Petitioner successfully established that he is the prior user of the contested mark and has been using the mark since 2014. The Court cast a glance at several decided judgements and outlined the following points regarding the issue of prior use: The test is--who is 'first in the market' when the trademarks are similar; and A 'prior user' enjoys a superior right to a registrant of the trademark.

The Court also found that the Petitioner successfully established prior use of the contested mark since 2014. Citing several precedents, the Court outlined the following key principles regarding prior use:

The Court further noted that a mere comparison of the trademarks shows their similarity, and Respondent No. 2 is using the contested trademark for identical goods, leading to two conclusions: the likelihood of confusion among the public due to the similarity of trademarks and the identity of the goods of the parties, resulting in an impact on the reputation and goodwill of the Petitioner; and the contested mark is at risk of having its registration cancelled under Section 11(10)(ii) of the Act, which requires the Registrar of Trade Marks to consider whether either the applicant or the opponent acted in bad faith during the trademark registration process, affecting its rights related to the trademark.

The Court observed that bad faith constitutes an unfair practice, stemming from a dishonest intention and a deliberate wrongful act. It determined that Respondent No. 2's adoption of the Petitioner's similar mark for identical goods, including the use of the word in the same colour, font, and style as part of the device mark, was carried out with a dishonest intention. It is clear that in an act of bad faith, Respondent No. 2 registered the mark to exploit the goodwill of the Petitioner, making the contested mark subject to cancellation.

The Court held that removing the contested mark from the Register is also essential to maintaining the integrity of the Register. Quoting the reasoning in Khoday Distilleries Limited v. Scotch Whisky Association and Others, the Court stated that it is in the public interest to keep the Register free of deceptive or misleading marks.

The Court directed the Registrar of Trademarks to remove the device mark registered under number 4400360 in Class 09 in favour of Respondent No. 2 and rectify the Register to maintain its integrity.