Introduction
The law relating to trademarks is designed not merely to protect registered rights but also to ensure that the Register of Trade Marks reflects marks that are genuinely used in trade. A registered trademark is a valuable commercial asset, but the law does not permit a proprietor to retain exclusive rights over a mark that has not been honestly and continuously used in connection with goods or services. The decision of the Delhi High Court in Mr P. C. Duraisamy v. Kewal Krishan Kumar & Anr is an important illustration of this principle.
The judgement examines the circumstances in which a registered trademark can be removed from the Register on the ground of non-use and clarifies the evidentiary burden resting upon a registered proprietor who seeks to justify continued registration. The court also considered the scope of Sections 47 and 57 of the Trade Marks Act, 1999, and analysed whether the proprietor could successfully rely upon the doctrine of honest and concurrent use despite the absence of credible evidence of actual commercial use.
The decision is significant for trademark proprietors, businesses, brand owners, intellectual property practitioners and applicants seeking rectification of the Register. It reinforces the principle that registration alone does not guarantee perpetual statutory protection and that genuine commercial use remains the cornerstone of trademark rights under Indian law.
Key Highlights of the Introduction
- Explains the importance of genuine commercial use of registered trademarks.
- Discusses the Delhi High Court’s decision in Mr P. C. Duraisamy v. Kewal Krishan Kumar & Anr.
- Examines the scope of Sections 47 and 57 of the Trade Marks Act, 1999.
- Highlights the evidentiary burden on a registered proprietor.
- Reinforces that trademark registration alone does not confer perpetual protection.
Factual and Procedural Background
The dispute centred upon the registered trademark “SHAKTI” in relation to goods falling in Class 30 under the Trade Marks Act, 1999. The petitioner approached the Delhi High Court seeking rectification of the Register of Trade Marks by cancellation of the impugned registration.
According to the petitioner, the trademark had been applied for on 12 March 1996 and was eventually registered on 22 May 2018 in favour of the first respondent under Registration No. 701410. The petitioner asserted that despite obtaining registration, neither the registered proprietor nor the subsequent respondent claiming through the proprietor had genuinely used the trademark in the course of trade. It was alleged that the registration had remained on the Register without satisfying the statutory conditions governing use of registered trademarks.
The petitioner relied upon the provisions contained in Section 47(1)(a) of the Trade Marks Act, 1999, which permits removal of a registered trademark where there has been no bona fide intention to use the mark and where no bona fide use has in fact taken place within the prescribed period. The petitioner also invoked Section 57 of the Act, contending that the continued presence of the trademark on the Register was without sufficient cause and therefore liable to be rectified.
The respondents resisted the petition and attempted to justify the validity of the registration. Among other submissions, reliance was placed upon judicial precedents recognising the concept of honest and concurrent use. It was argued that the registration deserved protection and that objections relating to similarity of marks or likelihood of confusion were not sustainable.
The Court examined the pleadings, documentary evidence, statutory provisions and authorities cited by both sides before deciding whether the impugned registration should continue on the Register.
Case Timeline
| Event | Details |
|---|---|
| Trademark | SHAKTI |
| Class | Class 30 |
| Application Date | 12 March 1996 |
| Registration Date | 22 May 2018 |
| Registration Number | 701410 |
| Relief Sought | Rectification and cancellation of the trademark registration |
| Relevant Provisions | Sections 47(1)(a) and 57 of the Trade Marks Act, 1999 |
Issues Raised Before the Court
- Whether the registered trademark had been genuinely used in the course of trade.
- Whether the statutory requirements under Section 47(1)(a) were satisfied.
- Whether the registration should be removed from the Register under Section 57.
- Whether the respondents could successfully rely upon the doctrine of honest and concurrent use.
- Whether the impugned registration should continue to remain on the Register of Trade Marks.
Dispute Before the Court
The principal controversy before the Court was whether the registered trademark “SHAKTI” could continue to remain on the Register of Trade Marks despite the petitioner’s allegation that there had been no genuine commercial use of the mark from the date of its application until its registration and even thereafter.
The Court was required to determine whether the respondents had produced sufficient documentary evidence establishing bona fide use of the trademark in the marketplace and whether the statutory requirements contained in Section 47(1)(a) of the Trade Marks Act had been fulfilled.
Another important issue concerned the applicability of the doctrine of honest and concurrent use. The respondents argued that judicial precedents protecting concurrent users should save the registration, whereas the petitioner maintained that such protection was unavailable because the respondents had failed to establish honest and continuous use through reliable evidence.
The Court also had to consider whether the continued presence of the trademark on the Register amounted to an entry made without sufficient cause so as to justify rectification under Section 57(2) of the Trade Marks Act.
Key Issues Before the Court
- Whether the trademark “SHAKTI” had been genuinely used in commerce.
- Whether the respondents had established bona fide commercial use through documentary evidence.
- Whether the statutory requirements under Section 47(1)(a) of the Trade Marks Act were satisfied.
- Whether the doctrine of honest and concurrent use could protect the registration.
- Whether rectification under Section 57(2) was justified.
Summary of Issues
| Issue | Question Before the Court |
|---|---|
| Commercial Use | Whether the trademark had been genuinely used in trade. |
| Documentary Evidence | Whether sufficient evidence of bona fide use had been produced. |
| Section 47(1)(a) | Whether the statutory conditions for maintaining registration were fulfilled. |
| Honest & Concurrent Use | Whether the doctrine could save the registration. |
| Section 57(2) | Whether the mark wrongly remained on the register and required rectification. |
Court’s Analysis of the Trade Marks Act
The Court approached the controversy by examining whether the impugned trademark registration satisfied the statutory requirements contained in the Trade Marks Act, 1999. It emphasised that registration of a trademark is not an end in itself. The statutory protection conferred upon a registered proprietor is subject to the obligation that the mark must be genuinely intended to be used and must, in fact, be used in the course of trade. A trademark which remains dormant for years without any commercial exploitation cannot ordinarily continue to enjoy statutory protection merely because it finds a place on the Register.
Analysis of Section 47(1)(a) of the Trade Marks Act
The Court first examined Section 47(1)(a) of the Trade Marks Act, 1999, which empowers the Court to remove a registered trademark if two essential conditions are established. The first condition is that, at the time of applying for registration, there was no bona fide intention on the part of the applicant to use the trademark in relation to the goods or services for which registration was sought. The second condition is that there has, in fact, been no bona fide use of the trademark up to a period of three months before the filing of the application. The provision is intended to ensure that the Register contains only those marks which are genuinely associated with commercial activity and not marks that merely block the entry of others into the market.
Essential Conditions Under Section 47(1)(a)
| Requirement | Description |
|---|---|
| Condition One | No bona fide intention to use the trademark at the time of filing the application. |
| Condition Two | No bona fide commercial use of the trademark up to three months before filing the rectification application. |
The Court observed that the burden shifted to the registered proprietor to establish genuine commercial use once the petitioner produced material questioning the validity of the registration. Mere assertions in pleadings or oral submissions were held to be insufficient. Since trademark rights are commercial rights arising out of trade, the existence of such rights must ordinarily be demonstrated through commercial records such as invoices, sales records, advertisements, promotional material, packaging, tax documents, purchase orders, distribution records or other contemporaneous evidence reflecting actual use of the mark.
Examples of Commercial Evidence Expected by the Court
- Invoices
- Sales records
- Advertisements
- Promotional material
- Packaging
- Tax documents
- Purchase orders
- Distribution records
- Other contemporaneous commercial evidence showing actual use of the trademark
Upon examining the evidence produced by the respondents, the Court found a complete absence of reliable documentary material demonstrating that the trademark “SHAKTI” had been used from the date of the application dated 12 March 1996, during the long period preceding registration on 22 May 2018, or even thereafter. The Court recorded a categorical finding that there was no tangible evidence showing continuous or genuine commercial use of the trademark. Consequently, the statutory requirement contained in Section 47(1)(a) stood violated.
Section 57(2): Rectification of the Register
The Court next examined Section 57(2) of the Trade Marks Act, 1999, which empowers the High Court to rectify the Register where an entry has been made without sufficient cause or where an entry wrongly remains on the Register. The provision serves an important public function. It ensures that the Register remains accurate and reliable and does not continue to reflect registrations which have ceased to satisfy the statutory requirements. According to the Court, once it had been concluded that the statutory conditions under Section 47 had not been fulfilled, the inevitable consequence was that the registration also became vulnerable under Section 57 because it wrongly remained on the Register despite lacking legal justification.
Purpose of Section 57(2)
| Provision | Purpose |
|---|---|
| Section 57(2) of the Trade Marks Act, 1999 | Empowers the High Court to rectify the Register where an entry has been made without sufficient cause or wrongly continues on the Register. |
| Public Function | Maintains the accuracy, integrity and reliability of the Register of Trade Marks. |
| Result | Removes registrations that no longer satisfy statutory requirements. |
Doctrine of Honest and Concurrent Use
A substantial part of the arguments advanced by the respondents was founded upon the doctrine of honest and concurrent use. They contended that the registration deserved protection because similar principles had been recognised in earlier judicial precedents. The Court carefully analysed this submission but concluded that the doctrine could not be invoked in the absence of proof of actual use. Honest and concurrent use is an equitable principle intended to protect traders who have independently and honestly adopted similar marks and have genuinely used them over a considerable period. It is not a substitute for evidence of use.
Court’s Findings on Honest and Concurrent Use
- The doctrine is an equitable principle.
- It protects traders who have honestly and independently adopted similar marks.
- Continuous and genuine commercial use must be established.
- The doctrine cannot replace documentary evidence of actual use.
- Proof of honest use is essential before the doctrine can be applied.
Analysis of London Rubber Co. Ltd. v. Durex Products Incorporated
The respondents relied upon the decision of the Supreme Court in London Rubber Co. Ltd. v. Durex Products Incorporated, AIR 1963 SC 1882. In that case, the Supreme Court recognised the concept of honest and concurrent use and upheld registration after considering substantial evidence demonstrating long-standing commercial use by the parties. The Delhi High Court distinguished the decision on facts. It observed that, unlike the factual situation before the Supreme Court in London Rubber, the respondents in the present case had failed to produce any documentary evidence establishing honest and concurrent use of the trademark “SHAKTI”. Since the very factual foundation necessary for invoking the doctrine was absent, the ratio of the Supreme Court decision could not assist the respondents.
Comparison with the London Rubber Decision
| London Rubber Case | Present Case |
|---|---|
| Substantial documentary evidence of commercial use. | No documentary evidence of commercial use. |
| Honest and concurrent use established. | Honest and concurrent use not established. |
| Doctrine successfully applied. | The doctrine is held to be inapplicable. |
Analysis of Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd.
The respondents also placed reliance upon the judgement of the Supreme Court in Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd, (2018) 9 SCC 183. In that decision, the Supreme Court had held that the existence of similar trademarks does not automatically result in deception where the parties operate in different fields of business and deal with different goods or services. The Court had emphasised that the likelihood of confusion must always be examined in the factual context of the competing businesses.
The Delhi High Court held that the reliance upon Nandhini Deluxe was misplaced. It observed that the principle laid down in that case applied where the competing marks related to different goods or distinct commercial fields. In the present case, however, both parties dealt with goods falling in Class 30. Consequently, the possibility of confusion and deception was substantially greater. More importantly, the issue before the Court was not merely one of deceptive similarity but of continued registration despite the complete absence of proof of bona fide use. Accordingly, the Court held that the ratio of Nandhini Deluxe had no application to the facts before it.
Why Nandhini Deluxe Did Not Apply
- The competing goods belonged to the same Class 30.
- The parties were not operating in different commercial fields.
- The issue before the Court concerned absence of bona fide use rather than merely deceptive similarity.
- The respondents failed to establish genuine commercial use of the trademark.
- Therefore, the precedent was held to be distinguishable on facts.
Importance of Genuine Commercial Use
The court repeatedly emphasised that registration under the Trade Marks Act creates valuable statutory rights, but those rights are inseparably linked with genuine commercial use. The Act is intended to protect trade, goodwill and consumer confidence rather than to encourage the accumulation of unused registrations. Allowing dormant registrations to remain indefinitely on the Register would unjustifiably restrict honest traders from adopting and registering marks that are genuinely intended for commercial use.
Key Principles Emphasized by the Court
- Trademark registration creates valuable statutory rights.
- Those rights are inseparably linked with genuine commercial use.
- The Trade Marks Act protects trade, goodwill and consumer confidence.
- The law discourages accumulation of unused trademark registrations.
- Dormant registrations should not prevent honest traders from obtaining legitimate trademark protection.
Commercial Use Principles at a Glance
| Principle | Court’s Observation |
|---|---|
| Purpose of Registration | To protect genuine commercial rights. |
| Requirement | Actual commercial use of the trademark. |
| Unused Registrations | Should not indefinitely remain on the Register. |
| Public Interest | Protect honest traders and consumers. |
Integrity of the Register of Trade Marks
The judgement also reflects the broader policy underlying trademark law. The Register is not merely a record of private rights but a public document relied upon by businesses, consumers and the Trade Marks Registry. Its accuracy and integrity are essential for the effective functioning of the trademark system. Therefore, where the statutory conditions are not satisfied and the registered proprietor cannot establish bona fide use, rectification becomes necessary to preserve the purity of the Register.
Why Maintaining the Register Is Important
- Ensures accuracy of trademark records.
- Protects businesses relying upon the Register.
- Promotes consumer confidence.
- Assists the Trade Marks Registry in maintaining reliable records.
- Prevents invalid registrations from remaining on the Register.
Public Policy Objectives
| Objective | Purpose |
|---|---|
| Accuracy | Maintain a reliable register of trademarks. |
| Integrity | Ensure only legally sustainable registrations remain. |
| Commercial Fairness | Prevent unused registrations from blocking genuine traders. |
| Consumer Protection | Support confidence in trademark ownership. |
Court’s Conclusion on Commercial Use
After considering the pleadings, documentary evidence, statutory provisions and judicial precedents, the Court concluded that the respondents had failed to discharge the burden of proving genuine commercial use of the trademark. The absence of invoices, sales records, advertisements or any other contemporaneous commercial evidence over an extended period clearly demonstrated that the statutory requirements had not been met. Consequently, the Court held that the trademark registration was liable to be removed under Section 47(1)(a) and that its continued presence on the Register also attracted Section 57(2) of the Trade Marks Act.
Evidence Considered by the Court
- Pleadings.
- Documentary evidence.
- Statutory provisions.
- Judicial precedents.
- Commercial records produced by the respondents.
Reasons for Removal of the Trademark
| Ground | Finding of the Court |
|---|---|
| No invoices or sales records | Failed to establish genuine commercial use. |
| No advertisements or promotional material | No evidence of market presence. |
| No contemporaneous commercial records | Statutory burden not discharged. |
| Section 47(1)(a) | Requirements violated. |
| Section 57(2) | Registration wrongly remained on the register. |
