Introduction
In a clear victory for brand owners protecting their established trademarks, the Delhi High Court on 8 April 2026 ordered the cancellation and removal of two trademark registrations for the mark “GOLDI” (label and logo) belonging to Jai Shiv Oil Industries and its assignee. The court found the marks deceptively similar to the petitioner’s long-standing and well-known “GOLDIEE” trademark used for spices, edible oils, and related food products since 1980. :contentReference[oaicite:0]{index=0}
Justice Tushar Rao Gedela held that the respondent’s adoption of “GOLDI” was likely to cause confusion among consumers due to phonetic, visual, and structural similarities, especially in the Hindi script, where the dominant elements appeared nearly identical. The petitioner’s prior adoption, use, and registration, combined with substantial goodwill and sales, outweighed the respondent’s later registrations. The respondents failed to appear or file any reply, leaving the petitioner’s evidence unrebutted. This judgement underscores that prior users and registrants with strong reputations can successfully seek rectification of confusingly similar marks even in related goods classes, protecting consumers from deception and safeguarding established brands.
Factual Background
Shubham Goldiee Masale Pvt. Ltd., a Kanpur-based company engaged in manufacturing and marketing spices, edible oils, and allied food products, claimed rights in the trademark “GOLDIEE” and its formative variants. The company traced its adoption of the mark through predecessors to 1980 and had been using it continuously for decades. “GOLDIEE” also formed part of the company’s trade name.
The petitioner held multiple registrations for “GOLDIEE” labels and word marks in Classes 3, 29, and 30, with the oldest dating back to 1 October 1980. It built significant goodwill through high-quality products, extensive advertising in print and visual media, distributor networks across India, and certifications like ISO 9001:2000 and HACCP.
Sales Growth Overview
| Year | Sales |
|---|---|
| 2000-01 | Rs 43 crores |
| 2012-13 | Nearly Rs 297 crores |
Supported by promotional campaigns, including sampling at major marathons and government awards for excellence.
Respondent Trademark Details
- Registration No. 945240 – Class 29 (Mustard Oil)
- Registration No. 2023762 – Class 31 (Oil Cake for Animals)
- Claimed user date: 1 January 2000
The petitioner alleged dishonest adoption, deceptive similarity, and fraud on the Trade Marks Registry.
Procedural Background
- Filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999
- Originally before IPAB (later transferred to Delhi High Court)
- Case Numbers: C.O. (COMM.IPD-TM) 392/2021 and 393/2021
- Respondents failed to appear – proceeded ex parte
The petitioner placed extensive evidence, including registrations, advertisements, invoices, and sales turnover.
Reasoning of the Court
Trademark Similarity Analysis
- Phonetically identical
- Visually and structurally similar
- Conceptually indistinguishable
- Hindi script similarity increases confusion
Comparison of Goods
| Petitioner | Respondent |
|---|---|
| Spices, Foodstuffs (Classes 29 & 30) | Edible Oil, Oil Cake (Classes 29 & 31) |
Trade channels, retail outlets, and consumer bases overlapped significantly.
Key Observations
- An average consumer with imperfect recollection may be misled
- Strong goodwill established prior rights
- No bona fide use shown by respondent
- Suspicion of dishonest adoption
Relevant Legal Provisions
- Section 9: Distinctiveness
- Section 11: Deceptive Similarity
- Section 47: Non-use / Lack of bona fide intention
Key Judgments Discussed
Fybros Electric Case
This Delhi High Court decision clarified that trademark coverage is based on the goods listed in the registration certificate, not merely on proven actual use.
FDC Limited Case
Explained allied or cognate goods based on trade connection, complementary use, and customer overlap.
Final Decision of the Court
- Cancellation of “GOLDI” trademark registrations
- Removal from Register of Trade Marks
- Registrar directed to comply within six weeks
- No costs awarded
Point of Law Settled
- Prior use overrides later registrations
- Minor spelling differences do not avoid infringement
- Dominant features of mark are decisive
- Consumer perception is key (not expert comparison)
- Allied goods can create confusion
- Unrebutted evidence carries strong weight
Case Details
| Field | Details |
|---|---|
| Case Title | Shubham Goldiee Masale Pvt. Ltd. Vs Jai Shiv Oil Industries and Anr. |
| Date of Order | 08 April 2026 |
| Case Number | C.O. (COMM.IPD-TM) 392/2021 |
| Neutral Citation | 2026:DHC:2935 |
| Court | High Court of Delhi |
| Judge | Justice Tushar Rao Gedela |
Disclaimer: Readers are advised not to treat this as a substitute for legal advice, as it may contain errors in perception, interpretation, and presentation.
Author: Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
