Registration of Deceptively Similar Mark Expunged as Dishonest Adoption under Section 57 of Trade Marks Act

The Petitioner, part of the Danone Group, sought the removal of the trademark ‘PROTRILEX’ (Registration No. 4566089 in Class 05) from the Register of Trade Marks.

The Petitioner is the proprietor of the mark ‘PROTINEX’, which has been used in India since 1957 for protein supplements and has acquired immense goodwill.

In previous litigation [CS(COMM) 905/2024], the Delhi High Court had granted an injunction against Respondent No. 1 regarding the same impugned mark.

Respondent No. 1 secured the registration for ‘PROTRILEX’ on a "proposed to be used" basis in 2021.

Respondent No. 1 failed to appear in the present proceedings and was proceeded against ex parte.

1. Whether the Petitioner qualifies as a "person aggrieved" under Section 57(2) of the Trade Marks Act, 1999.

2. Whether the registration of the mark ‘PROTRILEX’ is liable to be cancelled/rectified due to its deceptive similarity to the Petitioner’s registered mark ‘PROTINEX’ under Section 11(1)(b) of the Act.

The court applied Section 57 of the Trade Marks Act, 1999, which empowers the Court to cancel or vary a registration on the ground of any contravention or failure to observe a condition.

It relied on Section 11(1)(b), which prohibits registration of a mark that is similar to an earlier trademark and covers identical/similar goods, creating a likelihood of confusion.

The court also invoked the principle of "initial interest confusion" as discussed in Under Armour Inc. v. Anish Agarwal and Another, 2025 SCC OnLine Del 3784, noting that dishonest adoption of a deceptively similar mark to ride on another's goodwill is impermissible.

The Court found that the mark ‘PROTRILEX’ is visually, structurally, and phonetically similar to the Petitioner’s prior and well-known mark ‘PROTINEX’.

Given that the goods (medicines/supplements) and trade channels are identical, the Court held that confusion among the public is inevitable.

The Court took judicial notice of its own judgment dated 08.05.2026 in CS (COMM) 905/2024, which had already concluded that Respondent No. 1’s adoption of the mark was dishonest and intended to derive unfair advantage from the Petitioner’s reputation.

Since the mark was registered in violation of the restrictive provisions of Section 11(1)(b), its entry in the Register was deemed improper.

The Petitioner was held to be a "person aggrieved" because the existence of the impugned registration prejudiced its proprietary rights and facilitated passing off.

The petition was allowed, and the Court directed the Registrar of Trade Marks (Respondent No. 2) to cancel Registration No. 4566089 and rectify the Register within four weeks to maintain its purity.