Delhi High Court Upholds Fizik's Rights: Fizifreak Trademark Cancellation
Delhi High Court Upholds Fizik's Rights: Fizifreak Trademark Cancellation
Introduction
In the matter of Selle Royal Group S.P.A. versus Ace Footmark (P) Ltd. & Anr., the Delhi High Court delivered a decision that addressed significant issues of trademark cancellation and infringement. This decision demonstrates the court's commitment to protecting intellectual property rights, especially in circumstances where earlier use and adoption of a trademark is critical.
Factual Background
The petitioner, Selle Royal Group S.P.A., is a global company founded in Italy in 1956, engaged in the manufacture and sale of bicycle accessories, saddles, handlebars, jackets, etc. The company adopted and has been continuously using the trademark "fi’zi:k" since 1995 for high-performance saddles and since 1997 for shoes and other footwear. The petitioner has registered its trademark "fi’zi:k" in numerous jurisdictions across the world, including India.
Procedural Background
The respondent, Ace Footmark (P) Ltd., filed an application for registration of the mark "FIZIFREAK" under Class 25 of the Trade Marks Act on June 26, 2014, which was granted on September 7, 2017. The petitioner sought cancellation of the registration of the mark "FIZIFREAK" on the ground that it is identical and/or confusingly similar to its trademark "fi’zi:k".
Issues Involved
1. Trademark Cancellation: Whether the registration of the mark "FIZIFREAK" should be canceled due to its similarity to the petitioner's trademark "fi’zi:k".
2. Prior Adoption and Use: Whether the petitioner is the prior adopter and user of the trademark "fi’zi:k".
Contentions of the Parties
Petitioner's Contentions: The petitioner argued that the respondent's mark "FIZIFREAK" is a deliberate attempt to exploit the petitioner's goodwill and reputation by creating confusion in the minds of the general public. The petitioner emphasized its prior adoption and use of the trademark "fi’zi:k" and its registration in numerous jurisdictions across the world.
Respondent's Contentions: The respondent did not appear before the court to contest the petition.
Reasoning and Analysis
The court conducted a detailed analysis of the marks in question and observed that the respondent's mark "FIZIFREAK" is visually, structurally, phonetically, and conceptually similar to the petitioner's registered trademarks "fi’zi:k" and "FREE:K". The court noted that the petitioner's trademark "fi’zi:k" is a coined word, which is neither generic to the trade of footwear nor descriptive or suggestive of the products of the petitioner.
The court presided by Justice Saurabh Banerjee inferred that the respondent is a habitual offender, having filed applications for registration of marks such as "CRUZE" (similar to "CHEVROLET CRUZE") and "TOYOYO" (similar to "TOYOTA"). The court observed that the adoption of the impugned mark "FIZIFREAK" by the respondent is shrouded in mystery and appears to be a deliberate attempt to exploit the petitioner's goodwill and reputation.
Final Decision
The Delhi High Court directed the Registrar of Trademarks to cancel the registration of the mark "FIZIFREAK" and remove it from the Register of TradeMarks. The court held that the respondent's adoption and registration of the mark "FIZIFREAK" is a deliberate attempt to exploit the petitioner's goodwill and reputation. The judgment was pronounced on 28 May, 2025.
Law Settled
The judgment showcases the court's commitment to protecting intellectual property rights, particularly in cases where prior adoption and use of a trademark are crucial. The court's decision emphasizes the importance of maintaining distinct and non-confusing trademarks to safeguard the interests of the prior adopter and user.
In this case the plaintiff was represented by team Anand & Anand led by Mr. Dhruv Anand, Ms. Udita Patro, Ms. Vaishali Sharma and Ms. Nimrat Singh, Advocates.
