Court Finds No Evidence of Use or Intention to Use Trademark "Shakti" by Respondents; Upholds Petitioner's Claims on Trademark "Sakthi"
In a significant ruling, the Delhi High Court has ordered the removal of the trademark "Shakti," registered under number 701410 in Class 30, from the Register of Trade Marks. This decision follows a petition by Mr. P.C. Duraisamy, who successfully argued that the trademark was registered without a bona fide intention to use it and had not been used since its registration.
The court, presided over by Justice Tushar Rao Gedela, found that the respondent, Kewal Krishan Kumar, failed to provide any documentary evidence demonstrating the use or intention to use the trademark "Shakti." Despite being registered on May 22, 2018, the mark had remained unused, violating Sections 47(1)(a) and 57(2) of the Trade Marks Act, 1999.
Mr. P.C. Duraisamy, the petitioner, claimed the prior use and registration of his trademark "Sakthi," which has been in use since 1977. The court acknowledged the petitioner's substantial goodwill and reputation, noting that the trademark "Sakthi" had been consistently used and registered in various classes, including Class 30.
The judgment highlighted the lack of evidence from the respondents to substantiate claims of honest concurrent use under Section 12 of the Act. The court emphasized that the respondents failed to demonstrate any use of the "Shakti" mark from the date of application or subsequent registration.
Additionally, the court observed that the rival marks, "Sakthi" and "Shakti," were phonetically and structurally identical, capable of causing confusion among consumers. This similarity, coupled with the lack of evidence of use by the respondents, led the court to conclude that the trademark "Shakti" was registered without sufficient cause.
The court directed the Registrar of Trade Marks to cancel and remove the "Shakti" trademark within four weeks, reinforcing the importance of demonstrating bona fide intention and actual use in trademark registrations.
Bottom line:-
Trademark Law - Registration of trademark "Shakti" held to be liable for expungement under Section 47(1)(a) and Section 57(2) of the Trade Marks Act, 1999, for lack of bona fide intention to use and non-use of the mark.
Statutory provision(s): Sections 9, 11, 12, 18, 47(1)(a), 47(1)(b), 57(2) of the Trade Marks Act, 1999
Mr P.C. Duraisamy v. Kewal Krishan Kumar, (Delhi) : Law Finder Doc id # 2929688
