Registration No. 4064296 in Class 43 revoked under Trade Marks Act, 1999 for failing to contest rectification petition and abandoning mark usage
In a significant judgment delivered on October 5, 2026, the Delhi High Court ordered the cancellation of Trademark Registration No. 4064296 pertaining to the mark "THE BREW BUKHARA" (device) owned by respondent Mr. Umesh Arora. The petitioners, ITC Limited and another, had sought the removal of this trademark on the grounds of deceptive similarity with their well-known and prior registered mark "BUKHARA" used extensively since 1985.
The Court found that respondent no.1 had applied for the impugned mark on a "proposed to be used" basis in January 2019, covering services including food, beverages, hotel, restaurant, and catering services under Class 43. The registration was granted in July 2019 and was valid until 2029. However, the petitioners contended that "THE BREW BUKHARA" was phonetically, visually, and conceptually nearly identical to their "BUKHARA" trademark, which had been recognized as a well-known mark by the Court in a prior 2022 judgment and officially listed as such in the Trade Marks Journal in October 2024.
Despite service of notice, respondent no.1 failed to file any substantive reply in the rectification proceedings. The respondent's trademark attorney admitted that the mark was never commercially exploited for any substantial gain and that its limited use during the COVID-19 pandemic was discontinued due to financial losses. The respondent also expressed no intention to resume use or contest the cancellation.
Relying on settled legal principles under Sections 47 and 57 of the Trade Marks Act, 1999, the Court held that the unrebutted pleadings and admitted non-use constituted valid grounds for cancellation. The Court referenced earlier decisions emphasizing that non-contestation and abandonment of a mark registered on a "proposed to be used" basis justify removal from the Register.
Consequently, the Court directed the Trade Marks Registry to effectuate the cancellation of the trademark registration within six weeks. The judgment reinforces the importance of active use and contestation in maintaining trademark rights and upholds protection for well-known marks against confusingly similar registrations.
Bottom Line:
Trade Marks Act, 1999 - Rectification/cancellation - Registered mark "THE BREW BUKHARA" cancelled from Register - Prior well-known mark "BUKHARA" of petitioner - Registered proprietor, despite service, did not contest and through trademark attorney stated that mark was never commercially exploited, limited temporary use during COVID-19 was discontinued, and no future use was intended - Unrebutted averments and admitted non-use justified cancellation/removal of registration.
Statutory provision(s): Trade Marks Act, 1999 Sections 47, 57
ITC Limited v. Mr. Umesh Arora, (Delhi) : Law Finder Doc Id # 2999254
