The Delhi High Court has clarified that two identical/deceptively similar marks that too in the same Class and in relation to similar/identical goods cannot continue to remain on the Register of Trade Marks. Where the trade circles, the distribution network and the retail outlets too are common and the consumers of the products manufactured by both parties also are common, two rival marks that are phonetically, visually and structurally nearly identical and deceptively similar cannot continue to remain on the Register of Trade Marks.
Consequently, the impugned trademark “GOLDI” of the respondent nos. 1 and 3 cannot continue to remain on the Register of Trade Marks, and is directed to be cancelled and removed from the Register of Trade Marks. Accordingly, the Court ordered the cancellation and removal of the trademark “GOLDI” (label) from the Register of Trade Marks in petitions filed by Shubham Goldiee Masale Pvt Ltd.
A Single Judge Bench of Justice Tushar Rao Gedela observed that the petitioner applied for the registration of its trademark “GOLDIEE” (label) on 01.10.1980 and for the label mark “GOLDIEE” (in Hindi and English) on 27.03.1996 in Classes 29 and 30. In contrast, respondent no. 1 applied for a device mark “GOLDI” (label) on 04.08.2000 with a user detail of 01.01.2000 in Class 29 in relation to manufacture of mustard oil (edible oil), and on 15.09.2010 for the device mark “GOLDI” (logo in Hindi) with the user detail of 01.01.2000 in Class 31 in relation to manufacture of foodstuffs (oil cake) for animals.
The Bench noted that the petitioner is not only a prior adopter and a prior user but also a prior registrant of the mark “GOLDIEE” both in Classes 29 and 30. On a simple and plain comparison of the two words “GOLDIEE” and “GOLDI”, the Bench observed that both words are phonetically, visually and structurally nearly identical and deceptively similar. Except for the removal of the letters “EE” from the mark “GOLDIEE” of the petitioner, there is no substantial or apparent distinction, inasmuch as the pronunciation would still remain identical and visually both are nearly similar. In the Hindi version, there would be no visual or structural distinction and the pronunciation would be identical.
The Bench observed that both parties are in similar business, i.e., edible oils as also foodstuffs, and the trade circle, distribution channels as also the retail outlets would be common between both the parties. Even though the manufacture of oil cake for animals by respondent no. 1 may be a distinct category, the said goods are also available in the same common retail outlets, and thus the confusion and deception between the two rival marks would also get attracted to the oil cake for animals. Further, the Bench held that the registration of the trademark “GOLDIEE” of the petitioner in Classes 29 and 30 shall preclude the respondent nos. 1 and 3 from using identical or deceptively similar trademark “GOLDI”.
Also, the Bench observed that under the provisions of Section 47(1)(a) of the Act, in the absence of any opposition, as also in the absence of any evidence as to how and in what manner respondent no. 1 adopted the mark “GOLDI”, such adoption is without bonafide intention, requiring removal of such mark from the Register of Trade Marks. Similarly, the provisions of Section 9(2)(a) and Section 11(1)(a) and (b) of the Act bar registration of the mark “GOLDI”.
Briefly, the petitioner company, engaged in the business of manufacturing and marketing food products for human consumption, including spices and other allied and related goods, under the name and style of M/s Shubham Goldiee Masale Private Limited, had adopted the trademark “GOLDIEE” in the year 1980 through its predecessors, and has been continuously and uninterruptedly using the said trademark till date. The petitioner claims that by virtue of being the prior and senior adopter and user, the mark has acquired distinctiveness, tremendous goodwill, and reputation, with sales turnover reaching Rs. 297 Crores in the FY 2012-13.
The petitioner filed petitions under Sections 47, 57 and 125 of the Trade Marks Act, 1999, seeking to remove, cancel, expunge, and rectify the entry pertaining to the impugned Trade Mark “GOLDI (LABEL)” registered under no. 945240 in class 29 and no. 2023762 in class 31. The petitioner came to know about the impugned adoption and illegal user by respondent no. 1 of the trademark “GOLDI” (label) in late August 2014, wherein respondent no. 1 falsely urged the user of the impugned trademark from 01.01.2000.
Appearances:
Advocates Ajay Amitabh Suman and Deasha Mehta, for the Petitioner
Advocates Nishant Gautam, Vineet Negi, Kavya Shukla, Naman Sharma and Theresa, for the Respondent
