Prolonged non-use and voluntary commercial decisions do not constitute "special circumstances" to prevent trade mark cancellation.

The Petitioner, Glaxo Group Limited (part of GlaxoSmithKline), sought the cancellation of Respondent No. 1’s registration for the trademark ‘PAXIL’ under Class 5

The Petitioner established global use and registration of the mark since 1991

Respondent No. 1 had acquired the mark from Rallis India (who registered it in 1973) and obtained a fresh registration in April 2005

The Petitioner alleged that Respondent No. 1 had not used the mark for over 20 years since registration

Respondent No. 1 admitted to non-use, justifying it as a commercial decision for "expansion of business" and challenged the Petitioner's status as a "person aggrieved"

1. Whether the Petitioner qualifies as a "person aggrieved" under Section 47 of the Trade Marks Act, 1999, despite having no commercial use of the mark in India.

2. Whether Respondent No. 1’s non-use of the mark is protected by the "special circumstances in the trade" exception under Section 47(3).

3. Whether the impugned registration is liable to be removed on grounds of non-use and "squatting."

The court applied Section 47 of the Trade Marks Act, 1999, which mandates the removal of a mark for non-use for a continuous period of five years

It relied on Hardie Trading Ltd. v. Addisons Paint Chemicals Ltd., which defined "person aggrieved" liberally to include those whose legal rights are limited by the mark's presence

The "special circumstances" exception under Section 47(3) was interpreted through Aktiebolaget Jonkoping Vulcan v. VSV Palanichamy, holding that such circumstances must be external, industry-wide, and not personal commercial decisions

The court also cited Neon Laboratories v. Medical Technologies regarding the legislative intent to prevent trademark hoarding/squatting

The court found that the Petitioner is a "person aggrieved" because the impugned registration creates a practical barrier to the Petitioner registering its own globally recognized mark in India

The court rejected Respondent No. 1’s "territoriality" defense, noting that Section 47 does not require an applicant to prove Indian goodwill, only a genuine interest in the register's purity

Regarding non-use, the court held that Respondent No. 1’s justification—"expansion of business"—was a voluntary, internal commercial strategy and not a "special circumstance in the trade" (which requires external factors like import duty or war)

Consequently, the mark’s presence on the register for 20% years without use constituted "squatting," which violates the fundamental purpose of trademark law to serve as a source identifier

The court directed the removal of Respondent No. 1’s registration for ‘PAXIL’ (No. 1153709) from the Register of Trade Marks