The Delhi High Court has allowed a rectification petition filed by Sunflame Enterprises Pvt. Ltd., directing the removal of the trademark ‘SUNFLARE’ from the Trade Marks Register after holding that it was deceptively similar to Sunflame’s long-standing ‘SUNFLAME’ mark and amounted to dishonest adoption.
Justice Tejas Karia has held that Sunflame had established prior use of the SUNFLAME mark since 1980 and had placed sufficient material on record to demonstrate continuous use, goodwill, and reputation built over several decades. It observed that the respondent’s mark SUNFLARE, registered in 2017 on a “proposed to be used” basis for identical goods in Class 11, differed from the petitioner’s mark only by the substitution of the letter “M” with “R”, which did not materially alter the overall commercial impression.
The High Court reiterated that the rights of a prior user prevail over those of a subsequent registered proprietor, and minor variations cannot be relied upon to escape a finding of deceptive similarity. It emphasised that consumers do not compare rival marks side by side and infringement is made out if the later mark creates a likelihood of confusion or association in the minds of consumers of average intelligence.
Rejecting the respondent’s defences based on alleged visual and conceptual differences, third-party use of “SUN” formative marks, and the claim that Sunflame lacked exclusive rights over the word, the Court held that the adoption of SUNFLARE was not bona fide and was intended to ride on the goodwill of the SUNFLAME brand.
Allowing the rectification petition under Section 57 of the Trade Marks Act, 1999, the Court directed the Trade Marks Registry to remove SUNFLARE from the Register, holding that its registration was hit by Sections 9(2)(a) and 11 of the Act.
Appearances
Petitioner- Mr. Sachin Gupta, Mr. Rohit Pradhan, Mr. Prashansa Singh, Mr. Adarsh, Mr. Ajay, Ms. Archna and Ms. Mahima Chanchalani, Advocates.
Respondents- Mr. Mohit Goel, Mr. Karan Kamra, Mr. Abhishek Kotnala and Mr. Kartikeya Tandon, Advocates for R-1. Ms. Radhika Bishwajit Dubey, CGSC with Mr. Saksham Sharma, Advocate for R-2
