"Le Shark" Trade Mark : Evidence of fraudulent adoption can lead to its expungement from the Register of Trade Marks

Bombay High Court Expunges Fraudulently Registered Trademark of "Le Shark". The court rules against the respondents for dishonest trademark adoption and fabricated evidence, ensuring the purity of the Trademark Register.

In a significant judgment, the Bombay High Court, presided by Justice R.I. Chagla, has ordered the expungement of the trademark "Le Shark" registered under No. 466002 from the Register of Trade Marks. This decision came as a result of a Commercial Miscellaneous Petition filed by Le Shark Apparel Limited, challenging the registration by Anil Shah and others, citing fraudulent adoption and lack of bona fide use.

The court examined the trademark registered in Class 25 for articles of clothing, including boots, shoes, slippers, scarves, and raincoats. Le Shark Apparel Limited contended that the trademark was a dishonest copy of their predecessor's mark registered in the United Kingdom and other European countries in 1985. The petitioner's counsel, Mr. Rohan Kadam, argued that the trademark was adopted without bona fide intention and supported by fabricated invoices.

Justice Chagla, in his judgment, emphasized the absence of bona fide intention and the fraudulent adoption of the trademark, which warranted its removal. The court scrutinized the invoices provided by the respondents, which were deemed fabricated, further supporting the petitioner's claim of dishonest use. Justice Chagla noted that such fabricated documents attract serious legal consequences, leading to the summary dismissal of the respondents' case.

The court refuted the respondents' claims of having used the trademark for over 37 years, finding no substantial evidence to corroborate these claims. The judgment highlighted the importance of maintaining the purity of the Trademark Register, reinforcing the statutory provisions under Sections 47 and 57 of the Trade Marks Act, 1999.

This ruling marks a significant precedent in trademark law, focusing on the genuine adoption of marks and preventing fraudulent registrations. The court has reaffirmed the necessity for bona fide use and the consequences of relying on false evidence.

The decision allows Le Shark Apparel Limited to pursue their business interests in India, unhindered by the fraudulent trademark registration that had posed a barrier to their market entry.

Bottom Line:

Rectification of Trademark - Absence of bona fide intention to use the registered trademark and evidence of fraudulent adoption can lead to its expungement from the Register of Trade Marks.

Statutory provision(s): Sections 47, 57 of the Trade Marks Act, 1999.

Le Shark Apparel Limited v. Anil Shah, (Bombay) : Law Finder Doc id # 2794471