Madras High Court Orders Removal of ‘SUGAR POP’ Device Mark, Finds Wrongful Registration Due to Registrar’s Lack of Due Diligence
Madras High Court Orders Removal of ‘SUGAR POP’ Device Mark, Finds Wrongful Registration Due to Registrar’s Lack of Due Diligence
Introduction
The Madras High Court allowed a rectification petition filed by Sugar Brands Pvt. Ltd. and directed removal of the “SUGAR POP” device mark from the Register of Trade Marks. The Court held that the impugned mark had been entered without sufficient cause as the Registrar failed to conduct a proper conflict search despite the petitioner’s existing prior registrations.
Factual Background
Sugar Brands Pvt. Ltd., the owner of the established “SUGAR COSMETICS” brand, asserted prior use of the mark “SUGAR” in relation to cosmetic products since 1 February 2015. The company relied on legal use certificates, invoices from 2016 onwards, and evidence of continuous commercial use.
The respondent, Sugar Pop Bath and Body LLP, had secured registration of the “SUGAR POP” device mark in respect of identical or closely similar goods, including soaps, perfumes, and cosmetics. The petitioner contended that the dominant and essential feature of both marks was the word “SUGAR,” thereby creating a likelihood of deception and confusion in the same line of trade.
Procedural Background
The petitioner approached the High Court through a rectification petition seeking removal of the rival mark from the register. The challenge was primarily based on prior use, deceptive similarity, and wrongful registration owing to lack of due diligence by the Trade Marks Registry.
Issues
1. Whether the “SUGAR POP” device mark was wrongly entered on the Register without sufficient cause.
2. Whether failure of the Registrar to conduct due diligence in searching conflicting marks justified rectification.
3. Whether adoption of the dominant element “SUGAR” for identical goods created deceptive similarity.
Contentions of the Parties
The petitioner argued that it was the prior adopter and continuous user of the “SUGAR” formative marks in the cosmetics industry and that the respondent’s registration for identical goods was deceptively similar. It further submitted that the Registrar’s search report had incorrectly recorded absence of conflicting marks despite several prior registrations in its favour.
The respondent relied on its registration and claimed use from 2018. However, no sufficient material was shown to displace the petitioner’s claim of prior and extensive use.
Reasoning and Analysis
The bench of Justice Senthilkumar Ramamoorthy found that the petitioner had clearly established prior use from 2015, whereas the respondent’s use claim commenced only in 2018. It noted that both parties dealt in substantially similar, if not identical, cosmetic products.
A significant factor weighed by the Court was the failure of the Registrar to exercise due diligence. The examination report’s search results incorrectly stated that no conflicting marks existed, despite multiple prior registrations in favour of the petitioner. The Court held that this omission directly led to wrongful registration of the impugned mark.
The Court further observed that the dominant and memorable component of the petitioner’s marks was the word “SUGAR.” Adoption of the same dominant feature by the respondent in respect of identical goods was likely to mislead consumers and cause confusion in the marketplace. Accordingly, the Court concluded that the mark had been entered on the register without sufficient cause and that rectification was fully warranted.
Decision
The High Court allowed the rectification petition and directed removal of Trade Mark No. 4074848 (“SUGAR POP” device mark) from the Register of Trade Marks within four weeks.
In this case the plaintiff was represented by Advocates K.Prem Chandar, Chitra Subbiah and S.Yeseswini for Anand & Anand. Meanwhile the defendant was represented by CGSC K Subbu Ranga Bharathi.
