Introduction: Delhi High Court Trademark Dispute
Introduction: Delhi High Court’s judgment in GM Modular Pvt. Ltd. versus Mumtaz Ahmed and Another exemplifies the judiciary’s commitment to upholding the rights of prior users and maintainers of goodwill in trademark disputes, particularly when subsequent registrations appear to exploit established brands without justification.
Case Background: Rectification Petition Under the Trade Marks Act
This case revolves around a rectification petition under Section 57 of the Trade Marks Act, 1999, where the petitioner sought the cancellation or removal of the respondent’s trademark ‘GMW’ in Class 11, arguing it was deceptively similar to their own ‘GM’ marks used since 1999 in the electrical goods sector.
- Nature of proceeding: Rectification petition
- Statutory provision: Section 57, Trade Marks Act, 1999
- Disputed marks: ‘GM’ vs ‘GMW’
- Industry: Electrical goods (Class 11)
Court Observations: Principle of Prior Use
The court, presiding over an ex-parte proceeding due to the respondent’s non-appearance, emphasized the overriding principle that prior adoption and continuous use, backed by substantial goodwill evidenced through sales and registrations, prevail over later registrations that could lead to confusion or passing off.
| Aspect | Petitioner | Respondent |
|---|---|---|
| Mark | GM | GMW |
| Use Since | 1999 | Subsequent Registration |
| Proceeding | Rectification Petition | Ex-Parte |
Final Outcome: Removal of Impugned Mark
By directing the removal of the impugned mark, the judgment reinforces the sanctity of the trademark register, preventing entries that undermine bona fide proprietors’ rights and highlighting the importance of honest adoption in competitive industries like electrical appliances.
Legal Significance in Indian Trademark Law
This decision not only builds on precedents but also serves as a cautionary tale for entities attempting to capitalize on similar marks in allied goods, underscoring the balance between registration benefits and common law protections in Indian trademark law.
Factual Background
The petitioner, GM Modular Pvt. Ltd., is a prominent player in the manufacturing and trading of a diverse array of electrical goods, including switches, accessories, appliances, electronic components, and related services, collectively referred to as the petitioner’s goods and services. They adopted the trademark ‘GM’ in 1999 with bona fide intent and have since used it honestly, continuously, commercially, openly, exclusively, and uninterruptedly as the proprietor thereof, building substantial trade value, goodwill, and reputation.
Trademark Usage and Forms
This mark has been incorporated into various forms such as ‘GM India’ and device marks, extensively traded across major parts of India.
Registrations and Legal Protection
To protect their interests, the petitioner secured multiple registrations across classes, including Class 6, 7 for ‘GM India’ and ‘GM’ in Class 9, 11 etc.
Additionally, the artistic work in the ‘GM’ mark is an original creation owned by the petitioner under the Copyright Act, 1957, registered as No. A-64280/2003, and actively used in trade.
Brand Value and Goodwill
- Significant investments in promotion and marketing
- ‘GM’ synonymous with the petitioner’s identity
- Exclusive goodwill demonstrated by escalating sales figures
Respondent’s Activities
In contrast, Respondent No. 1, operating as Grand Metal Works, engages in selling electric fans, blowers, heaters, and accessories.
Discovery of the Impugned Mark
During a routine online survey of the Trade Marks Registry in the third week of August 2024, the petitioner’s attorney discovered the impugned trademark ‘GMW’ registered under No. 1978669 in Class 11 on 11.06.2010, claiming use since 01.04.2007 for identical or similar goods.
Grounds for Challenge
The petitioner alleged dishonest adoption by the respondent, citing deceptive similarity in phonetic, visual, structural, conceptual, and essential features, with goods being allied and cognate, potentially causing confusion.
Judicial Precedent
Reference was made to a prior Delhi High Court decision in GM Modular Pvt. Ltd. v. Mayur Electromeck Pvt. Ltd. (Neutral Citation: 2024:DHC:2411), where a similar ‘GMW’ mark in Class 9 was ordered removed, strengthening the case for cancellation here as the impugned mark wrongly remained on the register.
Summary Table: Key Factual Elements
| Aspect | Details |
|---|---|
| Petitioner | GM Modular Pvt. Ltd. |
| Trademark | ‘GM’, ‘GM India’ |
| Year of Adoption | 1999 |
| Respondent Mark | ‘GMW’ |
| Registration Number | 1978669 |
| Relevant Classes | Class 6, 7, 9, 11 |
Procedural Background
The rectification petition was filed under Section 57 of the Trade Marks Act, 1999, seeking cancellation or removal of the impugned ‘GMW’ mark.
Notice and Service
- Notice issued on 11.09.2024 granting four weeks to file replies
- On 06.12.2024, affidavit of service noted no appearance by Respondent No. 1
- On 16.04.2025, service directed through trademark agent
Ex-Parte Proceedings
Despite this, Respondent No. 1 failed to appear on 13.08.2025, leading to an ex-parte order against them.
Final Hearing and Judgment
The petitioner’s counsel presented submissions on 26.11.2025, after which judgment was reserved, culminating in the final decision on 17.01.2026.
Role of Registrar of Trade Marks
Respondent No. 2, the Registrar of Trade Marks, appeared through counsel and agreed to comply with court directions as a formal party.
Summary Table: Procedural Timeline
| Date | Event |
|---|---|
| 11.09.2024 | Notice issued |
| 06.12.2024 | No appearance by Respondent No. 1 |
| 16.04.2025 | Service through trademark agent |
| 13.08.2025 | Ex-parte order |
| 26.11.2025 | Final submissions |
| 17.01.2026 | Final decision |
Reasoning And Decision Of Court
The court’s analysis commenced by noting the absence of any reply or appearance from Respondent No. 1, deeming the petition’s averments uncontroverted and admitted. It scrutinized the evidence establishing the petitioner as the prior adopter and user of the ‘GM’ marks since 1999, coined honestly and integrated into their business for electrical goods and services, supported by registrations and invoices predating the respondent’s claimed use from 2007.
Goodwill And Market Association
The substantial goodwill was affirmed through impressive sales data, reaching over ₹1372 crores in FY 2020-21, indicating strong market association with the petitioner.
| Particulars | Details |
|---|---|
| Sales Turnover | Over ₹1372 crores |
| Financial Year | 2020-21 |
| Brand Association | Strong market linkage with ‘GM’ |
Impugned Mark Analysis
The impugned ‘GMW’ mark, registered in 2010 for similar Class 11 goods like fans and heaters, was found to be an attempt to freeride on this goodwill without explanation, violating principles of honest adoption.
- Mark in dispute: ‘GMW’
- Year of registration: 2010
- Class: 11
- Goods: Fans, heaters and similar products
Principle Of Prior Use
Relying on settled law that prior users’ rights supersede subsequent registrations, even if registered, the court highlighted the petitioner’s categorical proof of earlier use via documents, contrasting with the respondent’s later claim. Continuous, uninterrupted use further solidified the ‘GM’ marks’ association exclusively with the petitioner.
The marks were deemed identical or deceptively similar for identical goods, undermining the register’s integrity and necessitating protection for bona fide owners.
Rectification And Removal
Citing the prior rectification in a related case for ‘GMW’ in Class 9, the court found the entry wrongful, warranting removal under Section 57 to prevent confusion and maintain purity.
In conclusion, considering prior use, mark identity, goods similarity, confusion likelihood, and lack of bona fide intent by the respondent, the petition was allowed, directing Respondent No. 2 to remove ‘GMW’ under No. 1978669 from the register, disposing of the petition and application, with a copy sent to the registry for compliance.
Point Of Law Settled In The Case
This judgment reaffirms that in trademark rectification proceedings under Section 57 of the Trade Marks Act, 1999, the rights of a prior adopter and continuous user, substantiated by registrations, invoices, and escalating sales figures demonstrating goodwill, will prevail over a subsequent registered mark that is deceptively similar and adopted without bona fide intent, even in ex-parte scenarios where averments remain uncontroverted.
It underscores that prior use overrides registration, as established in precedents, emphasizing that dishonest adoption for identical or allied goods in sectors like electrical appliances warrants cancellation to preserve the register’s sanctity and prevent confusion or passing off.
Furthermore, it highlights the evidential weight of financial data and prior judicial decisions in related marks to prove freeriding on reputation, ensuring protection for established brands against later entrants lacking justification.
Case Details
| Title | GM Modular Pvt. Ltd. vs Mumtaz Ahmed & Anr. |
|---|---|
| Date Of Order | 17.01.2026 |
| Case Number | C.O. (COMM.IPD-TM) 176/2024 |
| Neutral Citation | 2026:DHC:408 |
| Name Of Court | High Court of Delhi at New Delhi |
| Name Of Hon’ble Judge | Hon’ble Mr. Justice Tejas Karia |
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation]
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
