Legrand France & Ors. vs Bhawani Singh & Anr.

$~18
* IN THE HIGH COURT OF DELHI AT NEW DELHI
th
% Date of Decision: 13 April, 2026
+ C.O. (COMM.IPD-TM) 197/2024
LEGRAND FRANCE & ORS. .....Petitioners
Through: Ms. Mamta Rani Jha, Mr. Akhil
Saxena, Ms. Palak Batra and Ms. Aashna Arora,
Advocates.

versus
BHAWANI SINGH & ANR. .....Respondents
Through: Ms. Rukhmini Bobde, CGSC with
Mr. Vinayak Aren and Ms. Aishwarya, Advocates
for R-2.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J. (ORAL)
1. This rectification petition is filed on behalf of the Petitioners under
Section 47(1)(a) read with Sections 57, 11(1), 11(2), 11(3)(a), 11(10), 18
and 29 of the Trade Marks Act, 1999 (‘1999 Act’) for removal/rectification
of the trademark ‘MLOGRAND’ bearing Registration No. 4182910 in
Class 09 from the Register of Trade Marks.
2. To the extent necessary, the facts are that Petitioners belong to
Legrand Group, France which is a global specialist in electrical and digital
building infrastructure offering high value added products and solutions for
commercial, residential and industrial buildings providing a comprehensive
range of products sub-divided into 7 major product categories such as user
interface, energy distribution, building systems, cable management, digital
infrastructure, UPS and installation components. Presently, Petitioners
Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:27.04.2026
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operate five business divisions in India under the names ADLEC,
NUMERIC, VALRACK, INDO ASIAN and LEGRAND. Petitioners
function as manufacturers, importers and exporters, merchants and traders,
dealings in all kinds of electrical and light engineering goods including
products under the mark LEGRAND.
3. It is stated that origin of Petitioner No.1 dates back to 1865 with
setting up of a porcelain workshop on the ‘route de Lyon’ in France. In
1904, the business was bought over by Frederic Legrand, Charles Alary and
Jean Joquel to become the Legrand, Alary and Joquel Company and since
then LEGRAND has been part of company’s name/trade name of the
Petitioners. Presently, Legrand Group comprises of 200 subsidiaries and
associate companies and partners and has its presence in nearly 90 countries
with product distribution in close to 180 countries, with a global workforce
of 36,700 employees.
4. It is stated that trademark LEGRAND is a unique and arbitrary
trademark which does not denote all connote any description, characteristics
or quality of the goods offered by the Petitioners under the said trademark
and is inherently distinctive. LEGRAND has been extensively, continuously
and uninterruptedly used since its adoption. To distinguish its goods and
business, Petitioner No.1 adopted the unique and distinctive logo
in 1968. Further, in 1974, Petitioner No.1 redefined the
logo/trademark and introduced
.
5. It is stated that Petitioner No.1 brought its business under the mark
LEGRAND for electrical products such as fuse gears, switch gears etc., to
India in 1996 with acquisition of MDS Switchgear Pvt. Ltd., which was
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By:KAMAL KUMAR
Signing Date:27.04.2026
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incorporated in 1961 as Morarji Dorman Smith Pvt. Ltd. and later renamed
to Legrand (India) Pvt. Ltd., in 2004 which amalgamated with Petitioner
No.3 w.e.f. 01.04.2011. Petitioners have been using the mark in India since
at least 1996 and Petitioners No.1 and 2 have jointly applied and obtained
various trademark registrations in the mark LEGRAND and associated trade
dress and have also consented to the use of the mark and packaging by
Petitioner No.3. The earliest registration of LEGRAND in India dates back
to 1986 in Class 09. Relevant registrations in the name of Petitioner No.1 are
as follows:-

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6. It is stated that Petitioners No.1 and 2 have been granted registration
in the trademark including distinctive trade dress/packaging in India, as
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follows and all registrations are valid and subsisting:-

7. It is stated that Petitioner No.1 has obtained registrations for
LEGRAND across various jurisdictions as follows:-


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8. It is stated that on account of long and continuous use, extensive
marketing and sale campaigns through worldwide distribution networks,
including in India as also owing to painstaking quality control, the electrical
products sold under LEGRAND have acquired enviable goodwill and
reputation amongst the members of trade and public at large and the brand is
associated only and only with the Petitioners. The extent of goodwill
acquired by the brand is evident from the sales turnover and promotional
expenses incurred by Petitioner No.3 for the period 2012-2023 as follows:-

9. It is stated that the formidable goodwill and reputation of mark
LEGRAND can also be gauged from the extensive following and popularity
on various social media platforms as follows:-

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10. It is stated that Respondent No.1 is an individual who has obtained
registration of the impugned mark MLOGRAND under registration no.
4182910 dated 21.05.2019 in Class 09. The registration is illegal and
deserves to be cancelled both under Sections 47 and 57 of the 1999 Act. The
impugned mark was registered on 21.05.2019 on ‘proposed to be used’
basis and investigations carried out by the Petitioners revealed that
Respondent No.1 never commenced any bona fide commercial use of the
mark since its inception. The registration was sought only to block the
Register and constitutes ‘trafficking in trademarks’ rendering it liable for
removal.
11. It is stated that MLOGRAND is phonetically, structurally and visually
similar to the prior adopted, used, registered and popularly known mark
LEGRAND of the Petitioners. Respondent No.1 has merely substituted the
letter ‘E’ with letter ‘O’ in LEGRAND and added letter ‘M’ at the
beginning, which are insufficient for distinguishing the impugned mark.
Petitioners’ mark has French origin and pronunciation of MLOGRAND is
virtually identical to French pronunciation of LEGRAND and lack of bona
fides of Respondent No.1 is further evident from the fact that it subsequently
applied for registration of device mark
in Class 09 vide
application no. 5638919 which is identical to Petitioners’ logo in terms of
color combination and device element placed as prefix, to which Petitioner
No.3 filed opposition and the mark was abandoned, as Respondent No.1 was
unable to defend the opposition.
12. Learned counsel for the Petitioners submits that Petitioners belong to
the Legrand Group which is a global specialist in electrical and digital
building infrastructure since the past 60 years and Petitioner No.3 is the
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By:KAMAL KUMAR
Signing Date:27.04.2026
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subsidiary of Legrand S.A. and is principally engaged in manufacturing all
kinds of electrical goods, light engineering goods and allied goods.
LEGRAND is a unique and arbitrary trademark and inherently distinctive
and was internationally adopted in 1968 and has been used in India since
1996. Petitioners No.1 and 2 are registered proprietors of LEGRAND and its
several variants and have consented to the use of the mark by Petitioner
No.3. Due to extensive use LEGRAND has become synonymous with
Petitioners and registration of the mark gives statutory rights to the
Petitioners to its exclusive use.
13. It is urged that Respondent No.1’s adoption of MLOGRAND is a
dishonest adoption and registration of a structurally, phonetically and
visually deceptively similar mark cannot stand and must be cancelled.
Respondent No.1 has appropriated the dominant suffix GRAND in its
entirety and merely substituted the vowels ‘E’ and ‘O’ while adding the
prefix ‘M’. Reliance is placed on the judgments of the Supreme Court in:
Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13;
Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals
Laboratories, 1964 SCC OnLine SC 14; Parle Products (P) Ltd. v. J.P. &
Co., Mysore, 1972 SCC OnLine SC 69; and Corn Products Refining Co. v.
Shangrila Food Products Ltd., 1959 SCC OnLine SC 11. Addition of the
letter ‘M’ is phonetically insignificant. In the course of trade, MLOGRAND
is likely to be slurred and pronounced similar to LEGRAND, causing
inevitable confusion. Reliance is placed on the judgment of the Supreme
Court in M/s K.R. Chinna Krishna Chettiar v. Sri Ambalal & Co, Madras
and Another, 1969 SCC OnLine SC 191 and of this Court in Fybros
Electric Private Limited v. Vasu Dev Gupta Trading As Vasu Electronics
and Another, 2023 SCC OnLine Del 3179.
Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:27.04.2026
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14. It is argued that the mark MLOGRAND covers identical goods in
Class 09 i.e., electrical apparatus, with common trade channels and
consumer base and likelihood of confusion cannot be ruled out. For all these
reasons the mark is liable to be removed from the Register of Trade Marks
in light of Section 11(1) of the 1999 Act.
15. It is further argued that the mark also deserves to be removed owing
to its non-use from the time of its adoption and registration on 21.05.2019
and Respondent No.1 has clearly obtained registration only to traffic in the
trademark. Respondent No.1 has consciously chosen to stay away from
these proceedings and has been proceeded ex parte and hence, the plea of
non-user is deemed to be admitted in the absence of a specific denial, as held
by this Court in Ankit Aggarwal v. Gupta Casting Fvl. Ltd., 2023 SCC
OnLine Del 2343 and DORCO Co. Ltd. v. Durga Enterprises and Another,
2023 SCC OnLine Del 1484; and by the IPAB in Shell Transource
Limited v. Shell International Petroleum Company Ltd., 2012 SCC
OnLine IPAB 35.
16. Respondent No.1 is ex parte and Respondent No.2/Registrar of Trade
Marks has not filed any response to the petition. Counsel for Respondent
No.2 orally defends the registration and submits that the impugned mark
was correctly registered as there is no deceptive similarity in the mark of the
Petitioners and the impugned mark.
17. Heard counsels for the parties.
18. Respondent No.1 was set ex parte on 15.01.2026 as he failed to
appear despite being served by publication. No steps were taken for recall of
the order and Respondent No.1 has not joined the proceedings thereafter and
no reply has been filed to contest this petition. Hence, the averments in the
petition are deemed to be admitted including those related to non-user of
Signature Not Verified
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By:KAMAL KUMAR
Signing Date:27.04.2026
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MLOGRAND. It would be relevant to refer to a passage from the judgement
of this Court in DORCO (supra), which is as follows:-
……
“19. In the judgment in Shell Transource Limited v. Shell International
Petroleum Company Ltd., 2012 SCC OnLine IPAB 29, it was observed by
the IPAB that the onus of proving “non-user” is on the person who pleads
the same. However, when the applicant pleads “non-user”, the respondent
must specifically deny it. Therefore, in the absence of a specific denial, it
was held that the allegations of “non-user” stood admitted.”

19. The same view has been taken by this Court in Kiranakart
Technologies Private Limited v. Mohammad Arshad, 2025 SCC OnLine
Del 1401. Perusal of the Section 47(1)(b) of the 1999 Act leaves no doubt
that a registered trademark is liable to be taken off the Register of Trade
Marks if up to a date three months prior to the date of filing of the
rectification petition, the same is not used in relation to the goods/services in
respect of which it is registered for a continuous period of at least five years
from the date on which the mark is entered in the Register of Trade Marks.
Dealing with the issue of non-use of a registered mark by a registered
proprietor, this Court in Russell Corp Australia Pty. Limited v. Ashok
Mahajan and Another, 2023 SCC OnLine Del 4796, held as follows:-
“25. In the context of non-use, it is the settled legal position that use has
to be genuine use in the relevant class of goods and services. 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, in these facts, the mark would be
liable to be removed on the ground of non-use itself.”
[Emphasis supplied]

20. Both in Kiranakart (supra) and Russell (supra), this Court also
observed that if investigation by independent investigator reveals that
impugned mark was not used for goods or services in the Class for which it
is registered and a categorical stand is taken in the petition, which is not
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By:KAMAL KUMAR
Signing Date:27.04.2026
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disputed or refuted by the Respondent, the mark is liable to be removed
owing to non-use. In this context, I may refer to a passage from Kiranakart
(supra) as follow:-
“12. A Coordinate Bench of this Court, in Russell Corp Australia Pty Ltd.
v. Shri. Ashok Mahajan, (2023) 4 HCC (Del) 301, had observed as
follows:
“22. A perusal of the impugned mark in the present case would show
that the application for the said impugned mark was filed on 27th
February, 2007 and the same was granted on 18th March, 2010. The
mark relates to sporting articles. The affidavit of the investigator
would show that the clear information received from the
Respondent was that the mark ‘SHERRIN’ was discontinued since
the year 2010. The present petition was filed in the year 2020
before the IPAB. This affidavit filed by the investigator as also the
petition has gone unrebutted by the Respondent. Thus, the
requirement of the period of five years & three months stands
satisfied.
…
24. … Under such circumstances, in the absence of denial by the
Respondent, the Court has no reason to disbelieve the pleadings as
also the investigator's affidavit on record. The Respondent has
chosen not to appear in the matter despite being served. Specific
court notice was issued even to the lawyer/trademark agent of the
Respondent.
[Emphasis supplied]

21. In the present case, Petitioners have categorically pleaded in the
petition that Respondent No.1 is not using MLOGRAND as per online
investigation and information received from the marketing team of the
Petitioners. Sans any reply to the petition, the averment of non-use is
deemed to be admitted and on this ground alone, the impugned mark
deserves to be removed from the Register.
22. Petitioners are also right in contending that MLOGRAND is
phonetically, structurally and visually a colorable imitation of Petitioners’
LEGRAND. Respondent No.1 has made every effort to come as close as
possible and copy the mark LEGRAND, which is registered in favour of
Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:27.04.2026
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Petitioners No.1 and 2 in India as also in other jurisdictions and has earned
an enviable goodwill and reputation, evident from the revenues, promotional
expenses, social media popularity etc. Respondent No.1 has merely
substituted the letter ‘E’ with the letter ‘O’ and the dominant part of the
mark GRAND has been entirely subsumed. The letter ‘M’ as a prefix is
insignificant and insufficient to distinguish the rival marks. Petitioners have
also flagged and rightly so, that the word Legrand has its origin in French
and the French pronunciation of LEGRAND and MLOGRAND is identical.
Respondent No.1 also applied for registration of device mark
in Class 09, which further evidences his mala fide and
dishonest intention to adopt the impugned mark and establish an association
with the Petitioners so as to cause confusion amongst the members of
public. On Petitioners filing opposition, Respondent No.1 abandoned the
application. There is a clear overlap in the goods/services under the rival
marks and trade channels and consumer base would naturally be common
and hence, confusion amongst members of trade, members of public and
potential consumers is inevitable. None of these averments in the petition
are refuted. On an overall conspectus of the facts, I am of the view, that
registration of the impugned mark deserves to be cancelled.
23. Accordingly, this petition is allowed, cancelling the registration of the
impugned mark MLOGRAND registered under no. 4182910 dated
21.05.2019 in Class 09. Respondent No.2 is directed to remove the
impugned mark from the Register of Trade Marks and rectify the Register to
maintain its purity. The necessary exercise shall be completed within two
months from today.

Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:27.04.2026
11:51:52
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24. Petition stands disposed of in the aforesaid terms.



JYOTI SINGH, J
APRIL 13, 2026/YA/VP
Signature Not Verified
Digitally Signed
By:KAMAL KUMAR
Signing Date:27.04.2026
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