Panasonic Holdings Corporation & Anr. vs Siddharth Vij & Anr.
- Court
- Delhi High Court
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 10.04.2026
Judgment delivered on: 05.06.2026
C.O. (COMM.IPD-TM) 171/2025, I.A. 18595/2025 & I.A. 18596/2025
+
PANASONIC HOLDINGS CORPORATION & ANR. .....Petitioners
versus
SIDDHARTH VIJ & ANR. .....Respondents
+ C.O. (COMM.IPD-TM) 172/2025, I.A. 18603/2025 & I.A. 18604/2025
PANASONIC HOLDINGS CORPORATION & ANR. .....Petitioners
versus
SIDDHARTH VIJ & ANR. .....Respondents
Advocates who appeared in this case:
For the Petitioners : Mr. Afzal B. Khan, Mr. Debjyoti Sarkar, Mr. Manosij
Mukherjee, Mr. Sharad Besoya, Ms. Manaya Jain and
Mr. Balkrishan Singh, Advocates.
For the Respondents : Mr. Mohan Vidhani, Mr. Dhruv Sikka, Ms. Mokshita
Gautam and Ms. Urvashi Arora, Advocates for R-1.
Ms. Nidhi Raman, CGSC with Mr. Om Ram and Ms.
Nikita Singh, Advocates for R-2.
CORAM:
HON’BLE MR. JUSTICE TUSHAR RAO GEDELA
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Signing Date:05.06.2026
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J U D G M E N T
TUSHAR RAO GEDELA, J.
1. Present petitions have been filed under Sections 47 and 57 of the Trade
Marks Act, 1999 seeking removal/cancellation of the entry in Trade Marks
Register with respect to the word mark ‘PONTA’ bearing trademark registration
no.4134589 [in C.O. (COMM.IPD-TM) 172/2025] and device mark ‘
bearing trademark registration no.4885149 in Class-9
[in CO(COMM.IPD-TM) 171/2025], registered in the name of respondent no.1.
2. With the consent of the parties, both the above petitions are being
disposed of vide this common judgment.
3. The petitioner no.1 is a company incorporated under the laws of Japan in
the year 1918 and claims to be engaged in manufacture, marketing and sale of
electrical products and operates across multiple business segments.
4. The petitioner claims to have entered in India in the year 1972 and by
virtue of certain relaxations in the Foreign Direct Investment by the Government
of India the petitioner no.1 through its subsidiaries and associated companies
started actively expanding its business operations in India.
5. It is stated that in order to expand its presence in India, the petitioner no.1
acquired the business of the ‘SHAH Family Group’ together with the goodwill
which included the trademarks such as ‘ANCHOR’, ‘PENTA’ and ‘ROMA’
amongst others, in the year 2007 for a consideration of 110 Crores.
6. The trademark application bearing no.516905 in Class-09 for the word
mark ‘PENTA’, which is the subject matter of the present petition, was filed by
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the predecessor-in-title on 18.09.1989. The petitioner claims using the said mark
continuously since then till date in respect of electrical switches, sockets,
regulators etc.
7. Petitioner claims that the trademark ‘PENTA’ has grown by leaps and
bounds since the time of acquisition and the petitioner no.2 has consistently
posted enormous sales figures for its business under the said mark. The
petitioner has furnished its sales turnover for the FY 2013-14 at approximately
Rs.3,26,02,33,791.19/- which grew to Rs.6,31,60,38,458.87/- in the year 2024 up
till November, 2024. Petitioner claims that it has a countrywide network of
authorized distributors, stockists, dealers and retailers who extend to various
States like Maharashtra, Gujarat, Rajasthan etc.
8. Petitioner stated that its products bearing the trademark ‘PENTA’ are also
available on various e-commerce platforms such as Flipkart, Amazon etc.
Petitioner also asserts that it spent a large amount of finances, resources and
efforts in marketing and popularizing its products. The promotions are also
carried out through websites, third-party online platforms, in print (both national
and regional) as well as on television throughout the country. Apart from the
offline presence, the petitioner also asserts significant presence online through
various social media platforms like Facebook, YouTube, Instagram, X (formerly
Twitter).
9. On the basis of the aforesaid, petitioner claims to enjoy substantial
goodwill and immense reputation in India. It also asserts that the high sales
turnover, extensive promotional activities, both offline and online, and the high
quality products manufactured by the petitioner cumulatively have associated the
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mark ‘PENTA’ with the products manufactured by the petitioner in the mind of
the general public as also trade circles.
10. Petitioner alleged that the respondent no.1 filed for the impugned
registration of the impugned mark ‘PONTA’ on 30.03.2019 in respect of electric
sockets, electric plugs, electric switches, multi-plugs etc. in Class-09. It is stated
by the petitioner that the application was wrongly granted registration on
22.02.2021. It is further stated that the application for registration of the
impugned mark was filed on a ‘proposed to be used’ basis and has never been
used in connection with the goods for which it stands registered.
11. It is stated that the Trade Marks Office issued an Examination Report
dated 21.05.2019 raising objections under Section 11 of the Trade Marks Act,
1999 (hereinafter referred to as “the Act”) citing the petitioner’s trademark
‘PENTA’ bearing no.516905 and 1054399. Petitioner stated that despite the
citation of the petitioner’s trademark, the respondent no.1’s application seeking
registration of the impugned mark ‘PONTA’ culminated into registration dated
22.02.2021.
12. Aggrieved by the said registration, the petitioner has filed the present
petitions under Sections 47 and 57 of the Act.
CONTENTIONS OF THE PETITIONER:-
13. Mr. Khan, learned counsel for the petitioner, argued as under:-
13.1. Learned counsel submitted that the petitioners are undisputedly the prior
adopters and users of the trademark ‘PENTA’ in India. In that, the mark
‘PENTA’ was applied for registration on 18.09.1989 in Class-09. Apart from
that, the petitioner also holds multiple registrations for the mark ‘PENTA’ and
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its variants. It is contended that since the impugned registration is itself applied
for on 30.03.2019 on a ‘proposed to be used’ basis, the said registration cannot
withstand the scrutiny of law and has to be cancelled/removed from the Register
of Trade Marks under the provisions of Section 57 of the Act.
13.2. Apart from the above, it was argued that the Examination Report dated
21.05.2019 was issued by the Trade Marks Registry raising an objection under
Section 11 and the trademark ‘PENTA’ of the petitioner was cited as an
objection. While referring to the response dated 21.05.2019, learned counsel for
the petitioner submitted that the respondent no.1 furnished a bald statement that
the marks ‘PENTA’ and ‘PONTA’ are different and, therefore, there would be
no question of any deceptive similarity, which may lead to confusion or
deception in the minds of the general public.
13.3. Dilating on the aforesaid stand taken by the respondent, learned counsel
for the petitioner contended that this Court is only to consider the deceptive
similarity and decide as to whether to continue to retain the trademark ‘PONTA’
of the respondent no.1 in the Register of Trade Marks. It was forcefully
contended that the mark ‘PONTA’ is visually, structurally and phonetically
similar/deceptively similar to the mark ‘PENTA’ of the petitioner. It was stoutly
argued that mere replacement of the letter “E” with the letter “O” would really
not create any substantial distinction between the two marks as to not confuse or
deceive the general public. Learned counsel contended that the goods being
identical, the trade circles, distribution channels and retailers ordinarily would be
common. According to him, the triple identity test stands satisfied and an
average consumer is likely to get confused or deceived while purchasing the
goods of the respondent no.1, believing them to be those of the petitioner or
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associated with it. In that context, learned counsel relied upon the judgments of
the Bombay High Court in Kamani Oil Industries Pvt. Ltd. vs. Bhuwaneshwar
Refineries Pvt. Ltd.:2014 SCC OnLine Bom 595 , Aktiebolaget Volvo of
Sweden vs. Volvo Steels Ltd. of Gujarat (India): 1997 SCC OnLine Bom 578,
Federal Express Corporation vs. Fedex Securities Pvt. Ltd. & Ors.: 2025 SCC
OnLine Bom 5056 and Delhi High Court in Mallcom (India) Ltd. vs. Shanti
Udyog Weldsafe Pvt. Ltd. & Ors.: 2024 SCC OnLine Del 2751 and Mallcom
(India) Ltd. & Anr. vs. Rakesh Kumar & Ors.: 2019 SCC OnLine 7646.
13.4. During the arguments, learned counsel for the petitioner had also handed
over a convenience compilation of documents relating to both the parties
containing various trademark registrations, the Chartered Accountant’s
certificate, the brochures of the products manufactured by the petitioner under
the mark ‘PENTA’, Invoices of sales under the said mark, advertisements in
various newspapers etc., commencing from the year 2002 onwards and the Legal
Proceedings Certificates of the respondent no.1 alongwith the Memorandum of
Understanding executed in favour of the respondent no.1.
13.5. Learned counsel contended that the respondent no.1 has dishonestly
adopted the mark ‘PONTA’ as the petitioner’s mark ‘PENTA’, by the time
respondent commenced its business, had already garnered substantial goodwill
and reputation in the market. In any case, he would contend that the petitioner
was the prior adopter and registrant of the mark ‘PENTA’ for identical goods.
He would contend that the respondent no.1 had clear knowledge of the
petitioner’s massive presence and popularity of the mark ‘PENTA’. Thus, the
respondent has no justification or explanation for having adopted and used the
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mark ‘PONTA’ which is deceptively similar to the registered mark ‘PENTA’ of
the petitioner.
13.6. Learned counsel also contended that the dishonesty of the respondent is
established by the fact that even in the Examination Report, the mark ‘PENTA’
of the petitioner was cited as an objection and yet, the respondent, without any
justification or explanation, pursued its application and got its mark ‘PONTA’
registered.
13.7. Learned counsel has also urged that the version of the respondent no.1 of
being inspired by the name “PAONTA SAHIB” from the famous Gurudwara is
also false for the reason that the revered Gurudwara is historically and
universally spelt as “PAONTA SAHIB” and not “PONTA”. According to him,
even if this version were to be accepted, the same would be liable for
cancellation under Section 9(2)(b) of the Act. According to learned counsel, the
deliberate misspelling by removing the letter ‘A’ to morph “PAONTA” into
‘PONTA’ is a calculated maneuver to structurally mimic the petitioner’s mark
‘PENTA’.
13.8. So far as the reliance on various native languages and expressions of other
countries is concerned, learned counsel would contend that while the respondent
no.1 has filed and referred to the meaning of the word “PONTA” in different
languages in the world, for the first time in its reply to the present petition, the
reply dated 25.05.2019 to the Examination Report dated 21.05.2019 was
conspicuous by the absence of reference to any such explanation regarding
language or meaning. Learned counsel would forcefully contend that the
response to the Examination Report is bereft of any reasons whatsoever and has
only two paragraphs. He would contend that in such a situation, this Court may
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not permit respondent no.1 from relying on such extraneous materials which
were not brought before the Registrar of Trade Marks to overcome the objections
under Section 11 of the Act. Learned counsel contended that these submissions
demonstrate the inconsistent and vacillating explanations for the adoption of the
trademark ‘PONTA’ and clearly demonstrates that the adoption is dishonest and
mala fide .
13.9. Lastly, learned counsel argued that while the trademark ‘PENTA’ of the
petitioner was explicitly cited in the Examination Report, however, overlooking
the objection raised by the Trade Marks Registry itself, in the absence of any
valid justification or explanation, the registration of the mark ‘PONTA’ is a clear
procedural deficiency and error on the part of respondent no.2 and thus, the grant
of registration of such mark itself ought to be construed as erroneous.
13.10. On the basis of the aforesaid documents and submissions, learned counsel
insisted that the respondent no.1’s registered mark ‘PONTA’ cannot continue to
remain on the Register of Trade Marks. Predicated on the above, learned counsel
would contend that the mark ‘PONTA’ of the respondent no.1 ought to be
removed from the Register of Trade Marks for contravention of Sections
11(3)(a) and 11(10)(ii) read with Sections 9 and 18 of the Act.
CONTENTIONS OF THE RESPONDENT NO.1:-
14. Appearing for the respondent, Mr. Vidhani, learned counsel vehemently
refuted the contentions of the petitioner and argued as under:
14.1. Learned counsel would contend that the respondent no.1 had applied for
registration of the word mark ‘PONTA’ on 30.03.2019 for manufacture of goods
in Class-9 in relation to electric sockets, electric plugs, electric switches etc. The
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respondent no.1 has also executed a Memorandum of Understanding (hereinafter
referred to as “MoU”) dated 10.08.2020 and 03.03.2021 licensing the trademark
‘PONTA’, both word and device mark , in Class-9 in
favour of his mother - Ms. Karishma Vig, proprietor of M/s. India Electrical
Industries for the purpose of manufacturing, marketing and selling goods under
the said mark.
14.2. Mr. Vidhani contended that the respondent no.1 and his family members
are devout followers of Sikh faith and deeply rooted in tradition. According to
him, given the background and the faith of respondent no.1 in the Sikh faith,
bonafidely and honestly adopted the trademark ‘PONTA’ by deriving inspiration
from the sacred and revered Gurudwara Shri Paonta Sahib. Thus, the adoption of
the mark ‘PONTA’ is genuine and a sincere expression of faith and reverence
intrinsically linked to the spiritual heritage.
14.3. Predicated on the aforesaid genuineness in adoption of the mark
‘PONTA’, the respondent no.1 claims protection under Section 12 of the Trade
Marks Act, being honest, bona fide and in good faith. Learned counsel
vehemently disputed the submission of the petitioner that only with an intention
to ride on the goodwill and reputation of the petitioner in the mark ‘PENTA’,
that the respondent no.1 has dishonestly adopted the mark ‘PONTA’. He would
contend that once the respondent no.1 has offered a genuine and bona fide reason
for adoption of the said mark, the petitioner cannot dispute the version of the
respondent no.1.
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14.4. Learned counsel contended that though the respondent no.1 had applied
for registration of the mark ‘PONTA’ on 30.03.2019 in Class-9 on a ‘proposed
to be used’ basis, the first commercial sale under the said mark took place on
14.08.2020 and since then, the respondent no.1 too has garnered substantial
goodwill and market recognition. In order to substantiate the contention, learned
counsel would refer to the annual turnover which was recorded at Rs.87,08,350/-
for FY 2020-21 and reached a turnover of Rs.3,06,56,040/- for FY 2024-25.
14.5. Other than that, learned counsel would also state that the respondent no.1
has, in the meanwhile, obtained BSI certifications, registration under the MSME
Ministry etc., to contend that the respondent no.1 is not a fly by night operator
and is an entity of repute and standing with turnover running into crores within a
short span of six years. Learned counsel also referred to the extensive
promotions and advertisements that the respondent has conducted to popularize
its high class products under the mark ‘PONTA’.
14.6. So far as the contention of the petitioner in respect of similarity/deceptive
similarity is concerned, Mr. Vidhani, learned counsel vehemently contended that
both the marks are phonetically, visually and structurally distinct. It was
contended that while the respondent no.1’s mark is derived from a sacred Sikh
institution, the expression “PENTA” of the petitioner is generic and commonly
used in trade. It was further contended that the substitution of the letter ‘E’ with
the letter ‘O’ does not render the marks identical nor would it create any
likelihood of confusion, association or deception among the relevant class of
consumers. As per the respondent no.1, the petitioner being a large and dominant
player in the industry is attempting to harass, intimidate and hinder small
business proprietors through unfounded and frivolous claims. It is contended that
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the petitioner has not placed on record a single shred of evidence to demonstrate
any evidence of consumer confusion or damage to its goodwill.
14.7. Lastly, learned counsel for the respondent no.1 copiously referred to a
number of paragraphs in the reply to the present petition, wherein diverse
meaning of the expression ‘PONTA’ in different jurisdictions and languages was
expressed.
14.8. Predicated on the above, learned counsel for the respondent no.1 prays
that the petitions be dismissed.
ANALYSIS & CONCLUSION:-
15. This Court has heard the arguments of Mr. Khan, learned counsel for the
petitioner and Mr. Vidhani, learned counsel for the respondent no.1. The
documents on record have also been examined.
16. At the outset, it is relevant to note that the petitioner had obtained
registration of its mark ‘PENTA’ in the year 1989 in relation to the products
under Class-9 for electric fittings for fluorescent lamps, electric bells, buzzers,
transformers, chokes, switches, cutout plugs, sockets, connectors, connection and
electric contact devices, electric switch holders, starters, irons, wires, cables,
extension card boxes, adopters, lighting fixtures, PVC conduit pipe, kit-kats, radios,
transistors, speakers, amplifiers, loudspeakers etc., and thereafter, has registered its
variants. The registrations are still valid. Some of the registrations are detailed in
the following table:-
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S.
Registration No. Application
Trade Mark Renewed up to
No.
Date
1. 516905 18/09/1989 PENTA 18/09/2026
2. 1054399 25/10/2001 PENTA 25/10/2031
3. 2471917 04/02/2013
04/02/2033
4. 2471919 04/02/2013
04/02/2033
5. 3399302 27/10/2016
27/10/2026
6. 3510934 20/03/2017
20/03/2027
17. In order to demonstrate and establish substantial goodwill and reputation,
the petitioner has filed the CA Certificate in respect of the sales turnover for the
products manufactured under ‘PENTA’ and ‘PENTA MODULAR’ trademarks
from FY 2013-14 to FY 2024-25 (upto November 2024). The table is extracted
hereunder:-
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18. To corroborate the assertion of having garnered substantial goodwill and
reputation, the petitioner has also placed on record the Brochures and Price Lists
of the year 2008 to demonstrate the products were offered for sale under the
trademark ‘PENTA’; Invoices commencing from the year 2005 onwards to
establish actual sales of products bearing the trademark ‘PENTA’; and copies of
newspapers and other forms/modes of advertisements in respect of the mark
‘PENTA’ from the year 2002 onwards as also promotions in online mode.
Considered cumulatively, the petitioner has been able to evidence not only the
registration of its trademark ‘PENTA’ in Class-9, but manufacture and sale of
products under the said Class-9 under the said mark. The extensive sales and
promotions have been clearly demonstrated by documentary evidence which
propels this Court to conclude that petitioner has indeed garnered substantial
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goodwill and immense reputation in respect of the products manufactured and
offered for sale in Class-9 under the trademark ‘PENTA’.
19. At this juncture and before this Court considers the contentions on behalf
of the respondent no.1, it may be pertinent to juxtapose the status of the
respondent no.1 in the context of the status of the petitioner when it commenced
operations in the year 2019-20. It may be noted that in FY 2019-20, the
petitioner had achieved a turnover of Rs.7,88,18,59,411/- cumulatively in respect
of the sales for the products under the marks ‘PENTA’ and ‘PENTA
MODULAR. Thus, by the time the respondent no.1 commenced its business, the
petitioner had already garnered substantial goodwill and reputation in the market
in relation to the products under Class-9, which is common to both parties. This
would surely provide a good reason for the respondent no.1 to adopt a mark
similar to the mark ‘PENTA’ registered in the name of the petitioner.
20. It is also significant to appreciate that the respondent no.1 had applied for
registration of the word mark ‘PONTA’ on 30.03.2019 on a “proposed to be
used” basis. Similarly, the respondent no.1 had also applied for registration of
the device mark ‘PONTA’/ in relation to products under
Class-9 on the same date on a “proposed to be used” basis. Thus, there can be no
claim of use prior to the date of application for registration of the said marks.
21. The Trade Marks Registry had issued an Examination Report dated
21.05.2019 raising objections under Section 11(1) of the Act on the basis of the
cited mark ‘PENTA’ of the petitioner. It would be appropriate to extract the said
Examination Report hereunder:-
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22. In response to the said Examination Report, the respondent no.1 submitted
its reply vide the communication dated 25.05.2019 baldly stating that both marks
are dissimilar. Other than that, the respondent no.1 offered no reason,
explanation or justification as to how and why the mark ‘PONTA’, it proposes
registration of, is not similar or deceptively similar to the mark ‘PENTA’ and
why it would not cause any confusion in the minds of the public. In order to
appreciate this controversy, it would be important to reproduce the said reply
hereunder:-
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“To, Date: 31/05/2019
The Registrar of Trademark,
Trademark Registry, DELHI
Sub: REPLY TO EXAMINATION REPORT(MIS-R) Dated on: 04/05/2019
14:40:48
Ref: Application Number: 4134589
In case of hearing, your prefered mode of attending the hearing is: PHYSICAL
Sir,
With reference to the above application, the point wise reply is as under:-
FN/3004/ Date 25.5.2019
AGENT CODE NO.471
TheRegistrar of Trade Marks
TradeMarks Registry
NewDelhi
REPLY TOEXAMINATION REPORT
Dear Sir,
Reg: Application No. 4134589 in Class 9 Trade Mark PONTA in the
name of SIDDHARTH VIJ.
Reference to the Examination Report dated 21/5/2019, which is appearing on
website but has not been received by us yet, we have to respectfully submit as
under:
REPLY TO PARA NO. 1
1. That the cited marks under nos.516905(PENTA) and 1054399 (PENTA) are
different from applicant mark PONTA. Kindly accept the application and waive
the objection under Section 11.
2. We rely upon the judgment namely CADILA PHARMACEUTICALS LTD. Vs.
The Registrar ofTrade Marks, passed by the Hon’ble High Court at Ahmedabad
(Reported in PTC2002 page 308). In view of submissions, we request your
goodself that appropriate order be passed in the application for advertisement
in the trademarks journal.
3. In case, if the Ld. Registrar is still not satisfied with the above submissions,
kindly give us the reason for communication to the applicant and matter be
directed for hearing for final disposal.
ACTIVE REGISTRATION SERVICE.
Agent [471]”
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23. From a perusal of the aforesaid reply, clearly, the respondent no.1 has not
provided any satisfactory or plausible reason for adopting the mark ‘PONTA’,
nor is this Court able to discern the same from a plain reading. It is indeed
intriguing to note as to how the Trade Marks Registry, despite raising valid
objections and citing the relevant mark of the petitioner, proceeded to register the
mark ‘PONTA’, without any sufficient reason or justification in the reply dated
25.05.2019. It is significant to note that both the parties manufacture products
which are identical and fall in the same class of goods.
24. To the aforesaid issue, the respondent had, for the first time, in the present
proceedings, tendered a brilliant and most innovative storyline in the
reply/counter. One, that the respondent no.1 is a deeply religious person and
ardent follower of Sikh religion and traditions and in the course of such deeply
entrenched thoughts, was motivated and borrowed the name ‘PONTA’ from the
religious shrine Gurudwara ‘SHRI PAONTA SAHIB’. The only thing
respondent no.1 did was to delete/omit the letter ‘A’ from the name of the shrine
and coin the word “PONTA”. Two, that the word ‘PONTA’ is available in many
languages over the world carrying varied meanings and thus, the word ‘PONTA’
as adopted is arbitrary as it has no relation to the products manufactured.
25. In the context of the aforesaid innovative storyline and explanation
brought out by the respondent no.1 for the first time before this Court, which
though seems attractive, but is unpersuasive and unmerited. This is for the reason
that no such explanation or justification was tendered to the Trade Marks
Registry while submitting its response and therefore, there was no occasion for
the Registry to have considered or appreciated any such explanation before it
registered the mark ‘PONTA’ of the respondent no.1. Thus, this Court cannot
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and will not consider any justification being tendered now for the first time.
Moreover, the respondent has extensively relied upon the meaning and
references to the word ‘PONTA’ based on research generated by Artificial
Intelligence Tools, without any authentication or corroborative evidence of
existence of such word in foreign languages. This Court cannot surely rely upon
such unauthenticated and unverified material.
26. So far as the reliance placed on the name of a religious shrine being the
motivator for adoption of the mark ‘PONTA’ is concerned, it appears to be very
convenient. Had there been a shred of genuineness in such submissions, there
was no reason why this was not mentioned by the respondent no.1 in the reply
dated 25.05.2019 submitted in response to the Examination Report of the Trade
Marks Registry. It appears to this Court that the respondent no.1 has now cooked
up a story to align with the malafide adoption of its mark.
27. For the aforesaid reasons too, the argument in respect of the protection
afforded by the provisions of Section 12 of the Act would not enure to the
benefit of the respondent no.1. The adoption cannot fall within the ambit of
“honest or concurrent user” as the trademark of the petitioner was cited in the
Search Report and an objection to that effect was raised in the Examination
Report however, there was no justification provided at all by the respondent no.1
against the same and yet the respondent no.1 pursued its application for
registration of ‘PONTA’ and was ultimately registered. Equally, there is no
concurrent use inasmuch as, (i) the respondent no.1 had applied for registration
of its mark on a “proposed to be used” basis; and (ii) by the time the respondent
no.1 commenced its business for manufacture of identical products in Class-9
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under the said mark, the petitioner was already a popular and established entity
with substantial goodwill and reputation in its mark ‘PENTA’.
28. It would also be relevant to examine both the rival marks, i.e., word and
device as well. The table of comparison is as under:-
PETITIONER RESPONDENT NO.1
PENTA PONTA
29. What strikes the eye at the first glance is the glaring similarity, rather
identicalness, in both the marks. Merely by replacing ‘E’ with the letter ‘O’ does
not create any distinction at all. Moreover, if one were to carefully observe the
device mark of respondent no.1, the design built into the letter ‘O’ actually gives
an impression as if it is ‘E’ and not ‘O’. In the opinion of this Court, the mark
‘PONTA’ of the respondent no.1 is visually, structurally and conceptually, if not
identical, clearly deceptively similar. It also gives an impression, given the
background facts that the trademark of the petitioner was indeed cited in the
Examination Report, that the respondent no.1 has created a facade to establish
distinction, however, it is not so. This Court does not find any dissimilarity at all.
Thus, the mark ‘PONTA’ of the respondent no.1 is deceptively similar to the
mark ‘PENTA’ of the petitioner. The marks being deceptively similar, products
being identical, trade circles and distribution channels and retailers being
common, an unwary consumer with average intelligence and imperfect
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recollection is likely to get confused or deceived into purchasing the goods of the
respondent no.1 believing them to be those of the petitioner or associated with it.
It also cannot be lost sight of that the kind of consumers who would purchase the
products would be electricians, petty contractors and general public who may
really not inquire or attempt to find out as to whether the goods manufactured by
the respondent no.1 and purchased are those manufactured by the petitioner or
associated with it. In fact, the device used in the letter ‘O’ in the device mark
PONTA/ actually gives an impression that the letter is
‘E’ instead of ‘O’.
30. That said, the petitioner has relied upon the provisions of Section 47 of the
Act to challenge the registered mark of the respondent no.1 and sought its
cancellation/removal from the Register of Trade Marks. To the mind of this
Court, the said section is not applicable to the facts of this case. Section 47(1) (a)
of the Act provides twin conditions to be satisfied. One, that the mark was
registered without any “ bonafide intention” for use in relation to the goods or
services provided; and two, the need to prove the fact that there has been no
“ bonafide use” of the said mark in relation to those goods or services by any
proprietor to date three months before the date of application. The respondent
no.1 had admittedly applied on a “proposed to be used” basis, thus bonafide use
three months before the date of application would not be applicable. Since the
respondent no.1 has placed certain invoices showing sales of products
manufactured by it and sold under the mark ‘PONTA’, the question as to the
“bonafide intention” may also not be applicable in the present case.
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31. However, the petitioner has also relied upon Section 57 of the Act to seek
cancellation/removal of the mark ‘PONTA’ from the Register of Trade Marks.
32. Section 57 of the Act provides for cancellation or variation and expunging
of registration of a mark for varied reasons. Sub-section (2) of section 57 of the
Act provides that a person aggrieved by the entry made without sufficient cause,
or by any entry wrongly remaining on the Register or by any error or defect in
any entry may apply for expunging or varying the said registered mark.
33. In the opinion of this Court, it would be the provisions of Section 57(2) of
the Act that would be applicable to the facts of this case. Having regard to the
analysis in the preceding paragraphs, in the opinion of this Court, the registration
of the mark ‘PONTA’ in favor of the respondent no.1 is without any sufficient
cause and thus, it would be incorrect to let the same remain in the Register of
Trade Marks. As analysed and observed above, the registration of the mark of
the respondent no.1 for ‘PONTA’, particularly when the mark ‘PENTA’ of the
petitioner was cited in the Examination Report and there being no justification or
reasons for adoption of the said mark by the respondent no.1, the mark could not
have been registered. The deceptive similarity of the trademarks, the
manufacture of identical products, the identical trade circles, identical
distribution channels and retailers is bound to create confusion and deception in
the mind of the general public. The issue of triple identity also is satisfied.
34. Ergo , the respondent no.2/Registrar of Trade Marks is directed to remove
the registered mark ‘PONTA’ (word mark) bearing application no. 4134589
registered on 22.02.2021, and the device mark bearing
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application no. 4885149 in Class-9 registered on 09.08.2021 in the name of
respondent no.1, shall be removed and rectified in the Register of Trade Marks.
The exercise shall be carried out within four weeks from the date of receipt of
this order.
35. No costs.
36. The petitions, alongwith pending applications, stand disposed of in above
terms.
TUSHAR RAO GEDELA
(JUDGE)
yrj/anj/rl
JUNE 05, 2026/
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