Fabricated Evidence and trademark rectification

Facts of the Case: Le Shark Trademark Dispute: Bombay High Court Judgment

The case revolves around a dispute concerning the ownership and validity of the trademark “LE SHARK”, used for apparel and clothing items. The petitioner, Le Shark Apparel Limited, is a UK-based company that owns several trademarks registered across the United Kingdom and Europe since the 1980s. The company claims a long and well-established brand identity in clothing, footwear, and accessories under the “Le Shark” name and its distinctive shark device logo.

The trademark “LE SHARK” was originally conceived and adopted in 1984 by the petitioner’s predecessor, Le Shark Limited (UK). Over time, the mark was assigned through various entities — Joseph Leshark Limited, Hamsard 2353 Ltd., and finally to Le Shark Apparel Limited, the present petitioner. The brand achieved substantial international goodwill and was widely sold across Europe and other global markets.

The respondent, Anil Shah, applied for registration of the same mark “LE SHARK” in India in 1987 under Application No. 466002 in Class 25, covering clothing, footwear, and accessories. The application was made on a “proposed to be used” basis. This registration was granted in 1991 and later assigned to M/s. Le Shark LLP (Respondent No. 2). The mark was renewed multiple times, most recently in 2018.

When the petitioner sought to register its own “LE SHARK” mark in India in 2015, the Trademark Registry cited the respondent’s earlier registration as conflicting. The petitioner’s application was refused in 2021, leading to this rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking removal of the respondent’s mark due to non-use, lack of bona fide intention, and fraudulent adoption.

Procedural History

The rectification petition was initially filed before the Intellectual Property Appellate Board (IPAB) in 2018 and admitted in October 2018. After the abolition of the IPAB under the Tribunal Reforms Act, 2021, the case was transferred to the Bombay High Court for adjudication.

During pendency, the petitioner’s application was rejected by the Registrar of Trademarks in April 2021. A review petition was filed but remained pending. The rectification petition was eventually heard and reserved for judgment in April 2025.

The Dispute

The main question before the Court was whether the respondents’ registered trademark “LE SHARK” should remain on the register or be expunged under Sections 47 and 57 of the Trade Marks Act, 1999.

• The petitioner argued that the respondents never used the mark in good faith and dishonestly adopted it.
• The respondents claimed continuous lawful use since 1987 and legitimate registration.

The Petitioner’s Contention

The petitioner alleged that the respondents, who had previously manufactured garments for its affiliates in India, knowingly and dishonestly adopted the “Le Shark” mark. Their actions constituted trademark squatting on an internationally recognized brand.

Legal Arguments and Authorities Cited

• Under Section 47(1)(a): No bona fide intention to use the mark at the time of registration.
• Under Section 47(1)(b): Non-use for a continuous period of five years before filing of the petition.

The petitioner claimed the respondents’ invoices were fabricated and lacked evidentiary support. Cited judgments included:

• Aktiebolaget Volvo v. Volvo Steels Ltd. (1997 SCC OnLine Bom 578)
• Bengal Immunity Co. Ltd. v. Denver Chemicals Manufacturing Co. (AIR 1959 Cal 636)

Respondent’s Argument

The respondents argued that:

• The petitioner lacked trans-border reputation in India before 2014.
• The mark “Le Shark” had been lawfully used since 1987.
• The petition was delayed and barred by limitation.
• Invoices and evidence of use were genuine.

They relied on Eagle Potteries Pvt. Ltd. v. Eagle Flask Industries Pvt. Ltd. (1992 SCC OnLine Bom 490) to argue that the burden of proving non-use rests with the petitioner. They also questioned the petitioner’s authority, citing ONGC v. Offshore Enterprises Inc. (1993 Mh LJ 243).

Court’s Reasoning

The Court analyzed Sections 47 and 57 as mechanisms for removing marks registered without bona fide use or by fraud.

Key Findings

• Evidence of dishonest adoption was clear — the respondent’s mark and logo were identical to earlier European registrations from 1985.
• Invoices submitted were fabricated — they mentioned a company incorporated years later.
• Mere website presence or sporadic use does not constitute bona fide use.

The Court cited:

• Jayant Industries v. Indian Tobacco Company (2022 SCC OnLine Bom 64)
• S.P. Chengalvaraya Naidu v. Jagannath (1994) 1 SCC 1
• La Societe Anonyme Des Parfums Le Galion v. Jean Patou Inc. (1974 U.S. App. LEXIS 9252)

Procedural objections on the petitioner’s power of attorney were dismissed as minor and curable, citing:

• United Bank of India v. Naresh Kumar (1996) 6 SCC 660
• Western India Theatres Ltd. v. Ishwarbhai Somabhai Patel (1958 SCC OnLine Bom 99)

Decision

The Bombay High Court allowed the petition and directed rectification of the register by removing Trademark No. 466002 in Class 25 (“LE SHARK”) registered in the respondents’ name.

Significance of This Judgment

• Reaffirms that dishonest or bad-faith registrations can be removed even after decades.
• Clarifies that fabricated evidence undermines a party’s defense completely.
• Emphasizes the importance of bona fide use over token or sporadic activities.
• Asserts that procedural irregularities cannot override substantive justice where fraud is apparent.

Disclaimer

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception or interpretation.

Written By

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney], High Court of Delhi