Registration of Phonetically and Visually Deceptively Similar Trademark Liable for Removal on Grounds of Non-User

The Petitioners, part of the Legrand Group (a global electrical infrastructure specialist), sought the rectification and removal of the trademark ‘MLOGRAND’ (Registration No. 4182910, Class 09) from the Register.

The Petitioners have used the arbitrary mark ‘LEGRAND’ in India since at least 1996 and hold various registrations dating back to 1986.

Respondent No. 1 obtained the registration for ‘MLOGRAND’ on May 21, 2019, on a "proposed to be used" basis.

The Petitioners alleged that the Respondent's mark is deceptively similar to their own and that the Respondent has never commenced bona fide commercial use of the mark.

Respondent No. 1 failed to appear and was proceeded ex parte.

1. Whether the impugned mark ‘MLOGRAND’ is liable for removal under Section 47(1)(b) of the Trade Marks Act, 1999, on the ground of non-use for a continuous period of five years.

2. Whether the impugned mark is deceptively similar to the Petitioners’ mark ‘LEGRAND’ under Section 11(1) of the Act, such that it causes a likelihood of confusion among consumers.

Section 47(1)(b) of the Trade Marks Act, 1999, which mandates the removal of a mark if it remains unused for five years and three months prior to the rectification petition.

The court relied on Shell Transource Limited v. Shell International Petroleum Company Ltd. and Kiranakart Technologies Private Limited v. Mohammad Arshad to establish that in the absence of a specific denial by the Respondent, allegations of "non-user" are deemed admitted.

Regarding deceptive similarity, the Court followed the principles laid down in Amritdhara Pharmacy v. Satya Deo Gupta and K.R. Chinna Krishna Chettiar v. Sri Ambalal Co., focusing on phonetic, structural, and visual similarity that could lead to "slurring" or confusion in the course of trade.

The Court noted that Respondent No. 1 failed to contest the proceedings, rendering the Petitioners’ claims regarding non-use undisputed; thus, the statutory requirement for removal under Section 47 was satisfied.

On the merits of similarity, the Court found ‘MLOGRAND’ to be a "colorable imitation" of ‘LEGRAND’. It reasoned that the dominant suffix ‘GRAND’ was entirely subsumed, and the substitution of the vowel ‘E’ with ‘O’ and the addition of the prefix ‘M’ were insufficient to distinguish the marks.

The Court specifically highlighted that both marks share a French phonetic origin, making their pronunciation virtually identical. Furthermore, the Respondent’s bad faith was evidenced by a previous abandoned attempt to register a device mark identical to the Petitioners’ logo.

Given the identical goods (electrical apparatus) and common trade channels, the court found the likelihood of confusion inevitable.

The Petition was allowed, and the Court directed the Registrar of Trade Marks (Respondent No. 2) to cancel Registration No. 4182910 from the Register within two months to maintain the purity of the Register.