Non-use and lack of bona fide intent to use a trademark warrants its removal from the Register.

In brief

The question

1. Whether the trademark "SHAKTI" should be removed from the Register due to non-use and lack of bona fide intention to use under Section 47(1)(a) of the Trade Marks Act.

The court held

The Court allowed the petition in part, holding that the trademark "SHAKTI" under registration no. 701410 was registered without bona fide intention and remained on the register without sufficient cause.

It also directed

The Court directed Respondent No. 2 (Registry) to cancel and remove the mark from the Register of Trade Marks within four weeks.

No orders were made as to costs.

01Facts

The Petitioner, a long-term manufacturer of food products under the trademark "SAKTHI" (used since 1977 and registered since 1979), sought the cancellation of Respondent No. 1’s trademark "SHAKTI" registered in Class 30.

pp. 1-2

The Petitioner alleged that the mark was a "paper registration" with no bona fide intent to use.

¶ 7-8

Respondent No. 1 had applied for "SHAKTI" in 1996, but registration was only granted in 2018.

pp. 3-4

Respondent No. 3, claiming rights via an assignment deed, argued that their extensive use of the composite mark "SHAKTI BHOG" should be deemed as use of the registered word "SHAKTI".

¶ 19-24

The Petitioner previously succeeded in an opposition proceeding against Respondent No. 1 in 2009, where the Registrar found the Respondent failed to prove use of the mark.

¶ 38-39

02Issues

i.1. Whether the trademark "SHAKTI" should be removed from the Register due to non-use and lack of bona fide intention to use under Section 47(1)(a) of the Trade Marks Act.

¶ 7, 41-42

ii.2. Whether the registration is liable for removal for non-use over a continuous five-year period under Section 47(1)(b).

¶ 8, 43

iii.3. Whether the usage of a composite mark "SHAKTI BHOG" constitutes the "use" of the specific registered word mark "SHAKTI" under Sections 15, 17, and 55 of the Act.

¶ 24, 47

03Law Applied

Section 47(1)(a) of the Trade Marks Act, 1999, which allows for the removal of a mark registered without bona fide intention and where no bona fide use occurred up to three months before the petition.

¶ 1

Section 47(1)(b), regarding five years of continuous non-use following registration.

¶ 43

Section 15 (registration of parts of marks), Section 17 (effect of registration of parts), and Section 55(2) (deemed use of parts through use of the whole mark).

¶ 22-25

The principle of "honest concurrent use" under Section 12 and protection against acquiescence under Section 33.

¶ 14, 27

Provisions in the judgment · 12 · Linked ones open on LawLens

Trade Marks Act, 1999 12 provisions

Section 2 Section 9 Section 11 Section 12 Section 15 Section 16 Section 17 Section 18 Section 33 Section 47 Section 55 Section 57

04Reasoning

The Court found that while the Petitioner had evidenced usage of "SAKTHI" since at least 2010 through invoices, the Respondents failed to produce a single document illustrating the independent use of the mark "SHAKTI" despite applying for it in 1996.

¶ 34, 35, 41

The Court rejected the Respondents' argument that using "SHAKTI BHOG" automatically satisfied the "use" requirement for "SHAKTI" via a "deeming fiction" under Sections 15 and 55, noting that such legal interpretations cannot override a total lack of factual evidence.

¶ 48-50

The Court held that the marks were phonetically and structurally identical, creating a high likelihood of consumer confusion.

¶ 51

Regarding Section 47(1)(b), the Court noted the petition was filed less than five years after the 2018 registration, making that specific sub-section inapplicable.

¶ 43, 52

The lack of bona fide intent and use under Section 47(1)(a) was clearly established.

¶ 42