Unused ‘PFC’ Mark Cannot Ride On Football Club’s Goodwill: Delhi High Court

Unused ‘PFC’ Mark Cannot Ride On Football Club’s Goodwill: Delhi High Court

Introduction

The Delhi High Court has ordered the removal of the trademark “PFC” registered in favour of Posshusa Apparels India Private Limited, holding that the mark was deceptively similar to the trademarks of Punjab Football Club and had remained unused since registration. The Court found that the continued presence of the mark on the Register was likely to mislead the public and amounted to an attempt to ride on the football club’s goodwill.

Factual Background

Punjab FC Private Limited is a professional football club based in Mohali and has been operating since 2017. Over the years, it has built significant goodwill and reputation in its trademarks “PUNJAB FC,” “PUNJAB FOOTBALL CLUB,” and “PFC.” The club holds registered trademarks for “PUNJAB FC” and its device mark in Class 41, covering training and sporting services, and has made substantial investments in brand promotion and identity building.

The dispute arose when Punjab FC discovered that Posshusa Apparels India Private Limited had obtained registration of the mark “PFC” in Class 25 for clothing and apparel on a proposed-to-be-used basis.

Procedural Background

Punjab FC approached the Delhi High Court seeking rectification of the trademark register under the Trade Marks Act, contending that the respondent’s “PFC” registration was deceptively similar to its own marks and was liable to be removed on grounds of non-use and dishonest adoption.

Despite being duly served, Posshusa Apparels chose not to appear in the proceedings. The matter, therefore, proceeded ex parte before the Court.

Issues

1. Whether the trademark “PFC” registered in favour of Posshusa Apparels was deceptively similar to Punjab FC’s registered trademarks.

2. Whether the adoption of the mark by the apparel company was dishonest and intended to ride on the club’s goodwill.

3. Whether non-use of the mark provided an independent ground for cancellation under the Trade Marks Act.

Contentions of the Parties

Punjab FC argued that “PFC” is an integral and distinctive part of its brand identity and is closely associated with the football club in the minds of the public. It submitted that registration of the identical acronym by an apparel company was likely to cause confusion and create a false association with the club.

The petitioner further contended that the mark had been registered on a proposed-to-be-used basis and that there was no evidence of actual use since registration, rendering it liable to cancellation for non-use. The respondent did not appear to contest the proceedings or rebut the allegations.

Reasoning and Analysis

The High Court noted that the respondent had earlier secured registration of an identical “PFC” mark in another class, which had already been cancelled by a coordinate bench. In that decision, the Court had found the marks to be phonetically and visually similar and had observed that the respondent’s conduct suggested an attempt to exploit the football club’s goodwill.

Applying the same reasoning, the Court held that the “PFC” mark registered in Class 25 was deceptively similar to Punjab FC’s trademarks. It observed that the adoption of the mark appeared dishonest and was likely intended to create an association with the football club and benefit from its established reputation.

The Court also attached significance to the fact that the registration was obtained on a proposed-to-be-used basis. Since the respondent failed to place any material on record to demonstrate actual use of the mark after registration, the allegation of non-use remained unrebutted. The Court held that this constituted an independent and additional ground for cancellation under the Trade Marks Act.

Decision

The Delhi High Court allowed Punjab FC’s rectification petition and directed that the trademark “PFC” registered in favour of Posshusa Apparels India Private Limited be removed from the Register of Trade Marks. The Court held that the mark was deceptively similar to Punjab FC’s trademarks and that its continued registration, coupled with non-use, could not be sustained.

In this case the petitioner was represented by Mr. Ayush Dey, Advocate.