Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 24.12.2025
+ C.O. (COMM.IPD-TM) 251/2024 & I.A. 47352/2024
CASETAGRAM LIMITED .....Petitioner
versus
TUSHAR MALHOTRA TRADING AS M/S. NUKKADS
& ANR. .....Respondents
Advocates who appeared in this case
For the Petitioner : Mr. Gaurav Gogia and Mr. Mayank Saraf,
Advocates.
For the Respondents : Ms. Nidhi Raman along with Mr. Om Ram
and Mr. Mayank Sansanwal, Advocates for
Respondent No.2.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
JUDGMENT
TEJAS KARIA, J
INTRODUCTION:
1. The present Petition has been filed under Sections 47, 57 and 125 of
the Trade Marks Act, 1999 (“ Act ”) seeking removal of the Mark
‘CASETIFY’ (“ Impugned Mark ”) bearing No. 3306261 in Class 35 from
the Register of Trade Marks (“ Register ”).
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 1 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
2. Notice was issued in the present Petition on 06.12.2024, granting the
Respondents four weeks’ time to file their Reply. Thereafter, vide order
dated 07.04.2025, Respondent No. 1 was granted additional four weeks to
file Reply to the present Petition and at the request of learned counsel for the
Parties, the Parties were referred to the Delhi High Court Mediation and
Conciliation Centre for exploring the possibility of an amicable settlement.
However, as the Mediation was not successful, the Petition was taken up for
consideration on merits.
SUBMISSIONS ON BEHALF OF THE PETITIONER:
3. The learned Counsel for the Petitioner made the following
submissions:
3.1. The Petitioner was incorporated on 01.11.2011 in Hong Kong and
is engaged in the business of manufacturing and trading of range
of phone cases offering customers the option to personalize their
phone cases using photographs from their Instagram accounts, and
other electronic accessories adapted for electronic equipment,
namely, cell phones, tablet computers, laptop computers, music
player, video player, battery chargers (“ Petitioner’s Products ”).
3.2. The Petitioner is known worldwide for the Mark ‘CASETIFY’ also
represented through its distinctive labels
‘
’ , ‘
’ ,
‘
’ , ‘
’ , ‘
’ ,
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 2 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
‘
’ , ‘
’ , ‘
’ and
‘
’ (“ Petitioner’s Mark ”).
3.3. The Petitioner adopted Petitioner’s Mark in the year 2014 in
respect of the Petitioner’s Products and has been continuously,
extensively and uninterruptedly used ever since. The Petitioner has
been carrying on its business in India since the year 2012,
however, the presence and usage of the Petitioner’s Mark in India
can be traced since 2014. The Petitioner is lawful and registered
proprietor of the Petitioner’s Mark in relation to Petitioner’s
Products in Class 09 having Registration No. 3878274 of the
Petitioner’s Mark since 2018 by way of the below Device Mark:
3.4. The Petitioner’s Products are sold globally as well as in India
through its website, www.casetify.com (“ Petitioner’s Website” )
since the year 2014; and the Domain Name of the Petitioner’s
Website was registered in the year 2013.
3.5. The Petitioner’s Products under the Petitioner’s Mark are also
available for sale and promotion through popular e-commerce
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 3 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
platforms, such as www.amazon.com, www.ubuy.co.in, and
www.indiamart.com making them easily accessible to a broad
consumer base. Apart from the presence of the Petitioner’s
Products on the internet, the Petitioner’s Marks are also being used
by the Petitioner on various mobile application platforms like
Android and iOS and have acquired considerable goodwill and
reputation thereof. The Petitioner has built up a valuable trade
under the Petitioner’s Mark.
3.6. By virtue of continuous and pervasive use of the Petitioner’s Mark
in respect of the Petitioner’s Products, considerable sales,
promotional activities, events and collaboration thereof, the
Petitioner’s Mark is identified as the source indicator of the
Petitioner’s Products and services by the general public and
relevant section of the trade, on account of which the Petitioner is
entitled to the sole, exclusive and undisturbed use of the
Petitioner’s Mark in respect of the Petitioner’s Products and
services worldwide, including in India.
3.7. The Petitioner’s Mark has gained secondary significance during
the course of trade in relation to the Petitioner’s Products and
qualifies as a well-known Trade Mark within the meaning of
Section 2(1)(zg) of the Act. Any mark / trade name / copyrights /
domain name that is similar or identical to the Petitioner’s Mark is
likely to create confusion and cause financial harm and damage the
Petitioner’s goodwill and reputation and, therefore, the Petitioner
is entitled to protection against any unauthorized use of the
Petitioner’s Mark.
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 4 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
3.8. In the month of November 2022, during a routine search through
the Trade Mark Registry for any infringing marks, the Petitioner
came across the application of Respondent No. 1 bearing No.
3306261 (“ Impugned Application ”) for the Word Mark
‘CASETIFY’ (“ Impugned Mark ”) in Class 35 for the services
online / offline retailing, wholesaling and trading of mobile and its
accessories, laptop and its accessories and electronic items and
house hold appliances (“ Impugned Services ”).
3.9. On a perusal of the Impugned Application, the Petitioner
discovered that the Impugned Application was filed on 11.07.2016
claiming user since 15.05.2014. However, no document regarding
the use of the Impugned Mark was attached with the Impugned
Application. The Impugned Mark was published in the Trade Mark
Journal No. 1773-0 on 28.11.2016 and the registration was granted
on 19.04.2017.
3.10. The Petitioner, thereafter, served a Cease and Desist Notice to
Respondent No. 1 on 10.11.2022, calling upon Respondent No. 1
to immediately cease and desist from the unauthorized use, if any,
of the Impugned Mark. The Petitioner also included a requisition
for the assignment of the Impugned Mark in favor of the Petitioner.
However, no response was received from Respondent No. 1
demonstrating Respondent No. 1’s disregard for the Petitioner’s
rights and claims addressed in the Cease and Desist Notice.
3.11. The user claim of 15.05.2014 by Respondent No. 1 under the
Impugned Application is fraudulent as to the best of Petitioner’s
knowledge and research / due diligence, Respondent No. 1 is not
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 5 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
using the Impugned Mark anywhere on the internet, nor on the
physical addresses. The Petitioner also verified the records of
Respondent No. 2 to search for documents in support of the user
claim of Respondent No. 1. However, no user affidavit was filed
by Respondent No. 1 along with the Impugned Application or
thereafter.
3.12. The Petitioner further conducted an online search on various e-
commerce websites, but the Petitioner found no use of the
Impugned Mark by Respondent No. 1 across any e-commerce
websites. The Petitioner also did a cursory search over various
search engines including Google and Microsoft Bing, however the
Impugned Mark related to Respondent No. 1 was not available in
any search results.
3.13. Respondent No. 1 has in a dishonest and mala fide manner
obtained registration for the Impugned Mark that is confusingly /
deceptively similar to the Petitioner’s Mark. The Impugned Mark
bears a high degree of resemblance with the Petitioner’s Mark such
that when viewed as a whole, the Impugned Mark seem to be
arising out of or connected / affiliated with the Petitioner.
Respondent No. 1 has made a conscious attempt to come as close
to the Petitioner’s Mark both in terms of conceptual and visual
representation of the Impugned Mark.
3.14. Reliance was placed on decisions of this Court in Kiranakart
Technologies Private Limited vs Mohammad Arshad & Anr. ,
Neutral Citation- 2025:DHC:1500, Roppen Transportation
Services Private Limited vs Nipun Gupta & Anr. , Neutral
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 6 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
Citation: 2025:DHC:270 and DORCO Co. Ltd. v. Durga
Enterprises , 2023 SCC OnLine Del 1484 to submit that the
Impugned Mark is liable to be removed from the Register on
grounds of non-user under Section 47(l)(a) and Section 47(1)(b) of
the Act, as Respondent No. 1 applied for the registration of the
Impugned Mark without any bona fide intention on its part to use
the Impugned Mark and there has been no bona fide use of the
Impugned Mark by Respondent No. 1 for the time being up to the
date of three months before the date of the Impugned Application
or even after the lapse of almost five years after the registration of
the Impugned Mark, till date.
3.15. Respondent No. 1 has mala fide intention to hoard the Impugned
Mark and create confusion and deception in the minds of the
general public with respect to its association with the Petitioner.
Due to alleged activities of Respondent No. 1, the Petitioner is
prevented from the honest usage of the Impugned Mark for which
the Petitioner is in fact a prior adopter and has superior rights over
the Petitioner’s Mark. As a result, the Petitioner would suffer
damages, injuries and irreparable loss to its goodwill and
reputation, if the Impugned Mark is allowed to stand in the
Register.
3.16. Respondent No. 1, by falsely claiming the use of the Impugned
Mark since 2014, engaged in deceptive practices and the act of
making false statements to Respondent No. 2 during the process of
the Impugned Application is a serious violation of the integrity and
fairness expected in legal proceedings. The misrepresentation of
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 7 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
the facts as exhibited by Respondent No. 1 before Respondent No.
2 is a grave offense and constitutes a valid ground for the
cancellation of the Impugned Mark under the provisions of the
Act.
3.17. Section 18(1) of the Act mandates that an applicant must be a bona
fide proprietor of the trade mark at the time of filing the
application. In the case of the Impugned Mark, the false claims
made by Respondent No. 1 concerning the use of the Impugned
Mark indicate a lack of bona fide intention to use the Impugned
Mark in commerce. Respondent No. 1’s actions suggest that the
Impugned Application was filed with the intention to unjustly
mislead Respondent No 2. This contravention of Section 18(1) of
the Act forms a basis for the cancellation of the Impugned Mark
from the Register.
3.18. The maintenance of the Impugned Mark on the Register, in the
absence of genuine use and based on false statements, is
detrimental to the public interest as it clutters the Register with
marks that do not serve their intended purpose of identifying the
origin of goods or services.
3.19. Respondent No. 1 has recorded himself as the subsequent
registered proprietor fraudulently by concealments based on false
claims and documents. Therefore, Respondent No. 1 is not entitled
to the benefit of Section 12 of the Act, as there are no honest or
concurrent use or any other special circumstances as may justify
the registration of the Impugned Mark.
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 8 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
3.20. Respondent No. 1 with malicious intent filed the Impugned
Application for services falling under Class 35 and not under Class
09, which is a core class for mobile cases and accessories to avoid
any objections from Respondent No. 2.
3.21. The Impugned Mark is liable to be removed from the Register
under the common law of passing off by virtue of Section 11 (3) of
the Act as the Impugned Mark has slavishly imitated the
Petitioner’s Mark which can potentially lead to consumer
confusion that the Impugned Mark is affiliated with or endorsed by
the Petitioner, which is not the case.
3.22. The registration of the Impugned Mark has caused unwanted and
undue hardship to the Petitioner and the Impugned Mark ought to
be cancelled / removed / expunged on grounds of bad faith of
adoption and infringement of the Petitioner’s rights. Therefore, to
uphold the integrity of the Register, it is imperative that the
registration of the Impugned Mark be cancelled by expunging the
Impugned Mark from the Register.
SUBMISSIONS ON BEHALF OF THE RESPONDENTS:
4. Despite being afforded repeated opportunities, Respondent No. 1 has
not filed Reply to the present Petition, and none appeared on behalf of
Respondent No. 1.
5. The learned counsel appearing for Respondent No. 2 submitted that
Respondent No. 2 is a pro forma party and would abide by the decision
passed by this Court.
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 9 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
ANALYSIS AND FINDINGS:
6. In the absence of Reply to the present Petition by Respondent No. 1,
the averments made in the present Petition remain uncontroverted.
7. The material placed on record shows that Respondent No. 1 has not
used the Impugned Mark in relation to the Impugned Services since its
registration on 11.07.2016. The Petitioner’s physical and online
investigations, supported by the Investigator’s Affidavit dated 03.12.2024,
demonstrate that Respondent No. 1 has no commercial presence under the
Impugned Mark.
8. The observations of a Coordinate Bench of this Court in DORCO Co.
Ltd. ( supra ), rendered in the context of a plea of ‘non-user’ and the absence
of a specific denial thereof are applicable, wherein it is held that where
allegations of non-use are not specifically denied, the same are deemed to be
admitted, rendering the Impugned Mark liable to be removed from the
Register under Section 47(1)(b) of the Act.
9. Section 47(1)(b) of the Act provides that a registered mark is liable to
be removed from the Register where up to a date three months before the
date of the Application, a continuous period of five years from the date on
which the trade mark is actually entered in the Register or longer has elapsed
during which there was no bona fide use thereof in relation to those goods or
services by any proprietor thereof.
10. Thus, unless the non-use is explained by way of special
circumstances, the mark would be liable to be removed for non-use. In the
present case, no special circumstances have been cited and, therefore, the
Impugned Mark would be liable to be removed on the ground of non-use
itself. The material placed on record shows that the Impugned Application
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 10 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
records a user claim since 15.05.2014. However, the absence of proof of use,
and the unrebutted averments of non-use make the Impugned Mark liable to
be removed under Section 47(1)(b) of the Act.
11. In the present case, the allegations of ‘non-user’ against Respondent
No. 1 stand admitted in the absence of a specific denial of the same.
Accordingly, the Impugned Mark is liable to be removed from the Register
on account of ‘non-user’ as contemplated under Section 47(1)(b) of the Act.
12. In view of the above, the present Petition is allowed and Respondent
No. 2, the Registrar of Trade Marks, Delhi is directed to remove / cancel /
rectify the Impugned Mark ‘CASETIFY’ registered in favour of Respondent
No. 1 in Class 35 bearing No. 3306261 from the Register of Trade Marks.
13. A copy of this Order is directed to be sent to the Trade Mark Registry
at e-mail: llc-ipo@gov.in for compliance.
TEJAS KARIA, J
DECEMBER 24, 2025
hk
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 11 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
% Judgment delivered on: 24.12.2025
+ C.O. (COMM.IPD-TM) 251/2024 & I.A. 47352/2024
CASETAGRAM LIMITED .....Petitioner
versus
TUSHAR MALHOTRA TRADING AS M/S. NUKKADS
& ANR. .....Respondents
Advocates who appeared in this case
For the Petitioner : Mr. Gaurav Gogia and Mr. Mayank Saraf,
Advocates.
For the Respondents : Ms. Nidhi Raman along with Mr. Om Ram
and Mr. Mayank Sansanwal, Advocates for
Respondent No.2.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
JUDGMENT
TEJAS KARIA, J
INTRODUCTION:
1. The present Petition has been filed under Sections 47, 57 and 125 of
the Trade Marks Act, 1999 (“ Act ”) seeking removal of the Mark
‘CASETIFY’ (“ Impugned Mark ”) bearing No. 3306261 in Class 35 from
the Register of Trade Marks (“ Register ”).
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 1 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
2. Notice was issued in the present Petition on 06.12.2024, granting the
Respondents four weeks’ time to file their Reply. Thereafter, vide order
dated 07.04.2025, Respondent No. 1 was granted additional four weeks to
file Reply to the present Petition and at the request of learned counsel for the
Parties, the Parties were referred to the Delhi High Court Mediation and
Conciliation Centre for exploring the possibility of an amicable settlement.
However, as the Mediation was not successful, the Petition was taken up for
consideration on merits.
SUBMISSIONS ON BEHALF OF THE PETITIONER:
3. The learned Counsel for the Petitioner made the following
submissions:
3.1. The Petitioner was incorporated on 01.11.2011 in Hong Kong and
is engaged in the business of manufacturing and trading of range
of phone cases offering customers the option to personalize their
phone cases using photographs from their Instagram accounts, and
other electronic accessories adapted for electronic equipment,
namely, cell phones, tablet computers, laptop computers, music
player, video player, battery chargers (“ Petitioner’s Products ”).
3.2. The Petitioner is known worldwide for the Mark ‘CASETIFY’ also
represented through its distinctive labels
‘
’ , ‘
’ ,
‘
’ , ‘
’ , ‘
’ ,
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 2 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
‘
’ , ‘
’ , ‘
’ and
‘
’ (“ Petitioner’s Mark ”).
3.3. The Petitioner adopted Petitioner’s Mark in the year 2014 in
respect of the Petitioner’s Products and has been continuously,
extensively and uninterruptedly used ever since. The Petitioner has
been carrying on its business in India since the year 2012,
however, the presence and usage of the Petitioner’s Mark in India
can be traced since 2014. The Petitioner is lawful and registered
proprietor of the Petitioner’s Mark in relation to Petitioner’s
Products in Class 09 having Registration No. 3878274 of the
Petitioner’s Mark since 2018 by way of the below Device Mark:
3.4. The Petitioner’s Products are sold globally as well as in India
through its website, www.casetify.com (“ Petitioner’s Website” )
since the year 2014; and the Domain Name of the Petitioner’s
Website was registered in the year 2013.
3.5. The Petitioner’s Products under the Petitioner’s Mark are also
available for sale and promotion through popular e-commerce
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 3 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
platforms, such as www.amazon.com, www.ubuy.co.in, and
www.indiamart.com making them easily accessible to a broad
consumer base. Apart from the presence of the Petitioner’s
Products on the internet, the Petitioner’s Marks are also being used
by the Petitioner on various mobile application platforms like
Android and iOS and have acquired considerable goodwill and
reputation thereof. The Petitioner has built up a valuable trade
under the Petitioner’s Mark.
3.6. By virtue of continuous and pervasive use of the Petitioner’s Mark
in respect of the Petitioner’s Products, considerable sales,
promotional activities, events and collaboration thereof, the
Petitioner’s Mark is identified as the source indicator of the
Petitioner’s Products and services by the general public and
relevant section of the trade, on account of which the Petitioner is
entitled to the sole, exclusive and undisturbed use of the
Petitioner’s Mark in respect of the Petitioner’s Products and
services worldwide, including in India.
3.7. The Petitioner’s Mark has gained secondary significance during
the course of trade in relation to the Petitioner’s Products and
qualifies as a well-known Trade Mark within the meaning of
Section 2(1)(zg) of the Act. Any mark / trade name / copyrights /
domain name that is similar or identical to the Petitioner’s Mark is
likely to create confusion and cause financial harm and damage the
Petitioner’s goodwill and reputation and, therefore, the Petitioner
is entitled to protection against any unauthorized use of the
Petitioner’s Mark.
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 4 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
3.8. In the month of November 2022, during a routine search through
the Trade Mark Registry for any infringing marks, the Petitioner
came across the application of Respondent No. 1 bearing No.
3306261 (“ Impugned Application ”) for the Word Mark
‘CASETIFY’ (“ Impugned Mark ”) in Class 35 for the services
online / offline retailing, wholesaling and trading of mobile and its
accessories, laptop and its accessories and electronic items and
house hold appliances (“ Impugned Services ”).
3.9. On a perusal of the Impugned Application, the Petitioner
discovered that the Impugned Application was filed on 11.07.2016
claiming user since 15.05.2014. However, no document regarding
the use of the Impugned Mark was attached with the Impugned
Application. The Impugned Mark was published in the Trade Mark
Journal No. 1773-0 on 28.11.2016 and the registration was granted
on 19.04.2017.
3.10. The Petitioner, thereafter, served a Cease and Desist Notice to
Respondent No. 1 on 10.11.2022, calling upon Respondent No. 1
to immediately cease and desist from the unauthorized use, if any,
of the Impugned Mark. The Petitioner also included a requisition
for the assignment of the Impugned Mark in favor of the Petitioner.
However, no response was received from Respondent No. 1
demonstrating Respondent No. 1’s disregard for the Petitioner’s
rights and claims addressed in the Cease and Desist Notice.
3.11. The user claim of 15.05.2014 by Respondent No. 1 under the
Impugned Application is fraudulent as to the best of Petitioner’s
knowledge and research / due diligence, Respondent No. 1 is not
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 5 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
using the Impugned Mark anywhere on the internet, nor on the
physical addresses. The Petitioner also verified the records of
Respondent No. 2 to search for documents in support of the user
claim of Respondent No. 1. However, no user affidavit was filed
by Respondent No. 1 along with the Impugned Application or
thereafter.
3.12. The Petitioner further conducted an online search on various e-
commerce websites, but the Petitioner found no use of the
Impugned Mark by Respondent No. 1 across any e-commerce
websites. The Petitioner also did a cursory search over various
search engines including Google and Microsoft Bing, however the
Impugned Mark related to Respondent No. 1 was not available in
any search results.
3.13. Respondent No. 1 has in a dishonest and mala fide manner
obtained registration for the Impugned Mark that is confusingly /
deceptively similar to the Petitioner’s Mark. The Impugned Mark
bears a high degree of resemblance with the Petitioner’s Mark such
that when viewed as a whole, the Impugned Mark seem to be
arising out of or connected / affiliated with the Petitioner.
Respondent No. 1 has made a conscious attempt to come as close
to the Petitioner’s Mark both in terms of conceptual and visual
representation of the Impugned Mark.
3.14. Reliance was placed on decisions of this Court in Kiranakart
Technologies Private Limited vs Mohammad Arshad & Anr. ,
Neutral Citation- 2025:DHC:1500, Roppen Transportation
Services Private Limited vs Nipun Gupta & Anr. , Neutral
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 6 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
Citation: 2025:DHC:270 and DORCO Co. Ltd. v. Durga
Enterprises , 2023 SCC OnLine Del 1484 to submit that the
Impugned Mark is liable to be removed from the Register on
grounds of non-user under Section 47(l)(a) and Section 47(1)(b) of
the Act, as Respondent No. 1 applied for the registration of the
Impugned Mark without any bona fide intention on its part to use
the Impugned Mark and there has been no bona fide use of the
Impugned Mark by Respondent No. 1 for the time being up to the
date of three months before the date of the Impugned Application
or even after the lapse of almost five years after the registration of
the Impugned Mark, till date.
3.15. Respondent No. 1 has mala fide intention to hoard the Impugned
Mark and create confusion and deception in the minds of the
general public with respect to its association with the Petitioner.
Due to alleged activities of Respondent No. 1, the Petitioner is
prevented from the honest usage of the Impugned Mark for which
the Petitioner is in fact a prior adopter and has superior rights over
the Petitioner’s Mark. As a result, the Petitioner would suffer
damages, injuries and irreparable loss to its goodwill and
reputation, if the Impugned Mark is allowed to stand in the
Register.
3.16. Respondent No. 1, by falsely claiming the use of the Impugned
Mark since 2014, engaged in deceptive practices and the act of
making false statements to Respondent No. 2 during the process of
the Impugned Application is a serious violation of the integrity and
fairness expected in legal proceedings. The misrepresentation of
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 7 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
the facts as exhibited by Respondent No. 1 before Respondent No.
2 is a grave offense and constitutes a valid ground for the
cancellation of the Impugned Mark under the provisions of the
Act.
3.17. Section 18(1) of the Act mandates that an applicant must be a bona
fide proprietor of the trade mark at the time of filing the
application. In the case of the Impugned Mark, the false claims
made by Respondent No. 1 concerning the use of the Impugned
Mark indicate a lack of bona fide intention to use the Impugned
Mark in commerce. Respondent No. 1’s actions suggest that the
Impugned Application was filed with the intention to unjustly
mislead Respondent No 2. This contravention of Section 18(1) of
the Act forms a basis for the cancellation of the Impugned Mark
from the Register.
3.18. The maintenance of the Impugned Mark on the Register, in the
absence of genuine use and based on false statements, is
detrimental to the public interest as it clutters the Register with
marks that do not serve their intended purpose of identifying the
origin of goods or services.
3.19. Respondent No. 1 has recorded himself as the subsequent
registered proprietor fraudulently by concealments based on false
claims and documents. Therefore, Respondent No. 1 is not entitled
to the benefit of Section 12 of the Act, as there are no honest or
concurrent use or any other special circumstances as may justify
the registration of the Impugned Mark.
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 8 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
3.20. Respondent No. 1 with malicious intent filed the Impugned
Application for services falling under Class 35 and not under Class
09, which is a core class for mobile cases and accessories to avoid
any objections from Respondent No. 2.
3.21. The Impugned Mark is liable to be removed from the Register
under the common law of passing off by virtue of Section 11 (3) of
the Act as the Impugned Mark has slavishly imitated the
Petitioner’s Mark which can potentially lead to consumer
confusion that the Impugned Mark is affiliated with or endorsed by
the Petitioner, which is not the case.
3.22. The registration of the Impugned Mark has caused unwanted and
undue hardship to the Petitioner and the Impugned Mark ought to
be cancelled / removed / expunged on grounds of bad faith of
adoption and infringement of the Petitioner’s rights. Therefore, to
uphold the integrity of the Register, it is imperative that the
registration of the Impugned Mark be cancelled by expunging the
Impugned Mark from the Register.
SUBMISSIONS ON BEHALF OF THE RESPONDENTS:
4. Despite being afforded repeated opportunities, Respondent No. 1 has
not filed Reply to the present Petition, and none appeared on behalf of
Respondent No. 1.
5. The learned counsel appearing for Respondent No. 2 submitted that
Respondent No. 2 is a pro forma party and would abide by the decision
passed by this Court.
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 9 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
ANALYSIS AND FINDINGS:
6. In the absence of Reply to the present Petition by Respondent No. 1,
the averments made in the present Petition remain uncontroverted.
7. The material placed on record shows that Respondent No. 1 has not
used the Impugned Mark in relation to the Impugned Services since its
registration on 11.07.2016. The Petitioner’s physical and online
investigations, supported by the Investigator’s Affidavit dated 03.12.2024,
demonstrate that Respondent No. 1 has no commercial presence under the
Impugned Mark.
8. The observations of a Coordinate Bench of this Court in DORCO Co.
Ltd. ( supra ), rendered in the context of a plea of ‘non-user’ and the absence
of a specific denial thereof are applicable, wherein it is held that where
allegations of non-use are not specifically denied, the same are deemed to be
admitted, rendering the Impugned Mark liable to be removed from the
Register under Section 47(1)(b) of the Act.
9. Section 47(1)(b) of the Act provides that a registered mark is liable to
be removed from the Register where up to a date three months before the
date of the Application, a continuous period of five years from the date on
which the trade mark is actually entered in the Register or longer has elapsed
during which there was no bona fide use thereof in relation to those goods or
services by any proprietor thereof.
10. Thus, unless the non-use is explained by way of special
circumstances, the mark would be liable to be removed for non-use. In the
present case, no special circumstances have been cited and, therefore, the
Impugned Mark would be liable to be removed on the ground of non-use
itself. The material placed on record shows that the Impugned Application
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 10 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45
records a user claim since 15.05.2014. However, the absence of proof of use,
and the unrebutted averments of non-use make the Impugned Mark liable to
be removed under Section 47(1)(b) of the Act.
11. In the present case, the allegations of ‘non-user’ against Respondent
No. 1 stand admitted in the absence of a specific denial of the same.
Accordingly, the Impugned Mark is liable to be removed from the Register
on account of ‘non-user’ as contemplated under Section 47(1)(b) of the Act.
12. In view of the above, the present Petition is allowed and Respondent
No. 2, the Registrar of Trade Marks, Delhi is directed to remove / cancel /
rectify the Impugned Mark ‘CASETIFY’ registered in favour of Respondent
No. 1 in Class 35 bearing No. 3306261 from the Register of Trade Marks.
13. A copy of this Order is directed to be sent to the Trade Mark Registry
at e-mail: llc-ipo@gov.in for compliance.
TEJAS KARIA, J
DECEMBER 24, 2025
hk
Signature Not Verified
C.O. (COMM.IPD-TM) 251/2024 Page 11 of 11
Signed By:NEELAM
SHARMA
Signing Date:24.12.2025
20:00:45