Delhi High Court cancels “The Brew Bukhara” trademark registration after proprietor says it discontinued use of the mark

The petitioners sought cancellation of respondent no. 1’s registration No. 4064296 for the device mark “THE BREW BUKHARA” in Class 43 under Sections 47 and 57 of the Trade Marks Act, 1999.

The respondent had applied on a “proposed to be used” basis on 22 January 2019; the mark was registered on 21 July 2019 for restaurant, food, accommodation and related services.

The petitioners claimed prior adoption, registration and long-standing use of “BUKHARA,” which had been declared a well-known mark.

Despite service, respondent no. 1 filed no reply. However, its trade mark agent stated by email that use had been limited and temporary, had ceased after the COVID-19 period, and would not resume.

The Registrar did not file a reply.

1. Whether Registration No. 4064296 for “THE BREW BUKHARA” was liable to be cancelled or removed under Sections 47 and 57 of the Trade Marks Act, 1999, in light of the respondent’s non-use and stated abandonment of the mark.

2. Whether the respondent’s failure to file a reply, together with the position communicated by its trade mark agent, left the petitioners’ material averments unrebutted and supported cancellation of the registration.

Sections 47 and 57 of the Trade Marks Act, 1999 provide the statutory basis for removal or cancellation of a registered mark, including on grounds of non-use and rectification of the Register.

The Court applied the principle that, where a registered proprietor does not reply despite service, material averments in a rectification petition may remain unrebutted and be treated as admitted; it relied on Wilhelmsen Ships Service AS v. Vishal Anand Trading as SBA & Anr., DORCO Co. Ltd. v. Durga Enterprises & Anr., and Kiranakart Technologies Private Limited v. Mohammad Arshad and Anr.

It also relied on Russell Corp Australia Pty. Ltd. v. Ashok Mahajan & Anr. and Shri Rajesh Chugh v. Mehruddin Ansari & Anr. concerning removal where use had been discontinued or the proprietor did not intend to use the mark, and Boon Rawd Brewery Co. Ltd. v. Yunnan Xiangkeng Trading Co. Ltd. & Anr. concerning cancellation under Section 57 of a mark registered on a proposed-to-be-used basis.

The Court considered that the respondent had not contested the petition despite service and had not filed a reply. Its trade mark agent’s email further indicated that any use was temporary, had been discontinued, and would not resume.

Applying the cited authorities, the Court treated the petitioners’ case as unrebutted and concluded that the respondent’s stated abandonment and non-use justified cancellation.

The Court also held that the reasoning in the cited decisions applied to the facts before it.

It directed the Trade Marks Registry to take the necessary steps within six weeks of receiving the judgment, and disposed of the pending application.