Madras High Court Enforces ‘Use It or Lose It’ Rule in ‘PREMIO’ Trademark Case

Madras High Court Enforces ‘Use It or Lose It’ Rule in ‘PREMIO’ Trademark Case

Introduction

The Madras High Court has ordered removal of the trademark “PREMIO” registered in favour of Wipro Enterprises Private Limited. The Court held that prolonged non-use of the mark for over five years rendered it vulnerable to cancellation under the Trade Marks Act, 1999.

Factual Background

The rectification plea was filed by Crompton Greaves Consumer Electricals Limited, a leading manufacturer of fans, lighting products and home appliances. Crompton stated that in 2020, it decided to launch ceiling fans under the brand name “PREMION” and accordingly applied for trademark registration.

During examination, Crompton discovered that Wipro held an earlier registration for “PREMIO” in Class 11 (lighting products). This registration, granted in 2013 with a user claim dating back to 2011, was cited as an obstacle to Crompton’s application. Crompton asserted that despite registration, Wipro had never commercially used the “PREMIO” mark.

Procedural Background

Crompton Greaves approached the Madras High Court seeking rectification and removal of the “PREMIO” mark from the Trade Marks Register. The matter was heard by Justice N. Senthilkumar, who delivered judgment on December 16, 2025.

Issues

1. Whether Wipro had put the “PREMIO” trademark to genuine commercial use.

2. Whether continuous non-use for more than five years attracted Section 47 of the Trade Marks Act.

3. Whether Crompton’s adoption of a similar mark disentitled it from seeking rectification.

Contentions of the Parties

Petitioner: Crompton contended that Wipro’s “PREMIO” mark had never been used in the market. It relied on affidavits from electrical goods dealers across India, all of whom stated that no products bearing the “PREMIO” mark were sold or available. Crompton argued that the registration had remained unused for well over five years and lacked any bona fide intention to use, warranting removal under Section 47.

Respondent: Wipro opposed the plea, asserting that it was the registered proprietor of the “PREMIO” mark and that Crompton had adopted a deceptively similar mark with full knowledge of the existing registration. It argued that mere non-use was insufficient to cancel a registered trademark.

Reasoning and Analysis

Justice Senthilkumar rejected Wipro’s defence, noting that no evidence of actual commercial use had been placed on record. The Court observed that Wipro had failed to produce sales figures, advertisements, invoices, or even product samples to demonstrate use of the mark after registration.

Significantly, the Court also noted that Wipro had not taken any steps to restrain Crompton’s use of the “PREMION” mark, which further undermined its claim of bona fide intent. On the evidence before it, the Court found that the mark had remained unused for more than five years and that the statutory requirement of genuine use was not met. The Court held that trademark rights cannot be allowed to remain on the register in terrorem, blocking honest traders without any corresponding commercial exploitation.

Decision

The Madras High Court allowed Crompton Greaves’ rectification petition and held that Wipro’s “PREMIO” trademark was liable to be removed under Section 47 of the Trade Marks Act, 1999. The Court directed the Trade Marks Registry to cancel and remove the mark from the Register of Trade Marks.

In this case the petitioner was represented by Mr. Hemant Daswani, Advocate. Meanwhile the respondent was represented by Mr. Gladys Daniel, Advocate.