The Delhi High Court has directed removal of the respondent’s registered word and device marks “PONTA” from the Register of Trade Marks in proceedings brought under Sections 47 and 57 of the Trade Marks Act, 1999. The direction came in wake of deceptive similarity between rival marks for identical goods, the consequences of an inadequate response to an Examination Report citing prior marks, and the post facto explanations for adoption that were not placed before the Trade Marks Registry at the relevant stage.
The Court held that Section 47 of the Trade Marks Act was not applicable on the facts because the respondent had applied on a “proposed to be used” basis and had also produced invoices showing sales under the mark “PONTA”, thereby making the Section 47 challenge inapposite in the circumstances. However, the Court held that Section 57(2) squarely applied, since the impugned registrations had been made without sufficient cause and were wrongly remaining on the Register.
A Single Judge Bench of Justice Tushar Rao Gedela accepted that the petitioners had established prior adoption, prior registration and substantial goodwill in the mark “PENTA”, supported by documentary evidence showing long use, extensive sales and promotion. It noted that by the time the respondent commenced business, the petitioners had already acquired a substantial reputation in the relevant market. The Bnech attached considerable importance to the fact that the Trade Marks Registry had cited the petitioners’ “PENTA” marks in the Examination Report under Section 11, but the respondent’s reply merely made a bald assertion that the marks were different, without offering any satisfactory explanation for adoption or addressing the likelihood of confusion.
On the merits of comparison, the Bench held that “PONTA” and “PENTA” were glaringly similar and that merely replacing the letter “E” with “O” did not create any meaningful distinction. It also observed that the stylisation in the respondent’s device mark gave the impression of the letter “E” rather than “O”. Since the goods were identical, and the trade circles, distribution channels and retailers overlapped, the Bench held that an unwary consumer of average intelligence and imperfect recollection was likely to be confused or deceived into believing that the respondent’s goods originated from, or were associated with, the petitioners. The Bench also declined to rely on unauthenticated AI-generated material produced by the respondent to support its linguistic explanations.
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Briefly, the petitioners challenged the respondent’s registrations for the word mark “PONTA” bearing application/registration no. 4134589 and the corresponding device mark bearing application/registration no. 4885149 in Class 9. The petitioners relied on their prior rights in the mark “PENTA”, which had originally been applied for in 1989 and remained registered, and asserted continuous use in relation to Class 9 electrical goods. They also relied on their 2007 acquisition of the Shah Family Group business and goodwill, including trademarks such as “PENTA”, and placed material on record including registrations, invoices, brochures, advertisements and turnover data to show extensive commercial use and reputation in India.
The respondent had applied for “PONTA” on March 30, 2019 on a “proposed to be used” basis for identical Class 9 goods such as electric sockets, plugs and switches, and later sought to justify the mark on the basis of alleged inspiration from Gurudwara Shri Paonta Sahib as well as asserted meanings of “PONTA” in different languages.
