The Delhi High Court allowed a petition under Sections 9, 18, 47 and 57 of the Trade Marks Act, 1999 seeking cancellation of Trade Mark No. 1799370 registered in Class 33 for the mark ‘ROGER’ and ordered rectification of the Trade Marks Register. Justice Tejas Karia found that the petitioner was a ‘person aggrieved’ and that the impugned mark had not been used for a continuous period of at least five years, making it liable for removal under Section 47(1)(b) of the Act.
It was stated that a well-established business of manufacturing and marketing Indian Made Foreign Liquor and other related goods, was owned and operated by the petitioner, with merchandise sold globally under distinctive trade marks including ‘OFFICER’S CHOICE,’ ‘CLASS VODKA,’ ‘CALYPSO,’ ‘SUMO,’ and others. The relevant trade mark was ‘JOLLY ROGER,’ adopted by the petitioner’s predecessors in 1991 and extensively used since 2010. Sales figures showed consistent use from 2010-11 to 2023-24, with annual units ranging from 68,380 to 3,29,553.
The impugned mark was registered in Class 33, with the application filed on March 24, 2009, and validity granted until March 24, 2029. On July 15, 2024, the petitioner received a Cease-and-Desist Notice from Roger Industries Limited calling upon cessation of business operations using ‘JOLLY ROGER.’ Despite being served, no one appeared for the respondent and no reply was filed, leading to ex-parte proceedings.
The petitioner argued that it was the prior adopter and user of the said Mark and had registered multiple ‘JOLLY ROGER’ marks in Class 33. It was contended that Respondent completely failed to put the Impugned Mark in Class 33 and no product was marketed in relation to Class 33. The petitioner relied on an affidavit dated 30.04.2009 filed before the Registrar showing no intention to use the impugned mark for Class 33 goods and that it was used only for footwear trade.
The Court analyzed the concept of ‘person aggrieved’ under Section 47, citing Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92 which held that, it must be satisfied by the High Court or the Registrar that the application is by a ‘person aggrieved’ and that the trade mark has not been used by the proprietor for at least five years and one month prior to the application, before directing removal. The Court also relied on Infosys Technologies Ltd. v. Jupiter Infosys Ltd., (2011) 1 SCC 125describing ‘person aggrieved’ as one whose interest was affected and stating that likelihood of injury by the mark remaining on register may meet the locus standi test.
The Court found that the Petitioner had successfully established that it was a person aggrieved because it had registered multiple variants of the Mark ‘JOLLY ROGER’ in Class 33 and had been using the Mark ‘JOLLY ROGER’ since the year 2010. It noted that the Petitioner’s sales figures in Class 33 showed it was a well-established brand, and the similarity between the marks was likely to confuse an average consumer. Regarding the non-use, the Court observed that the impugned mark was never intended for Class 33 goods use. The petitioner’s affidavit clearly stated the impugned mark was not in use in the market for Class 33 goods. The respondent’s affidavit dated 30.04.2009 admitted the mark ‘ROGER’ was used only for footwear products.
Justice Tejas Karia concluded that there was a likelihood of injury or damage to the Petitioner if the Impugned Mark was not removed and that the petitioner satisfied the test of being a ‘person aggrieved’ under Section 47 of the Act. Accordingly, the Court ordered cancellation of the impugned mark for non-use and allowed the petition.
Cases relied on:-
Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd.
Infosys Technologies Ltd. v. Jupiter Infosys Ltd.
Appearances:
Appearances:Petitioner: Pravin Anand, Shrawan Chopra, Achyut Tewari and Krisha Baweja, Advocates
Respondents: Nidhi Raman & Om Ram, Advocates for R-2
