In the dynamic realm of intellectual property law, the case of Falcon Licensing Limited v. PRI Enterprises Private Limited stands as a compelling testament to the judiciary’s commitment to preserving the integrity of trademark rights. This landmark case, adjudicated by the High Court of Delhi, addresses critical issues of trademark squatting, non-use, and the protection of prior user rights in the face of deceptive registration practices. Centered around the trademark "BOLDIFY," the dispute encapsulates the tension between a foreign entity’s established brand identity and a domestic entity’s alleged mala fide registration.

The judgment not only reinforces the sanctity of the trademark register but also sets a robust precedent for combating opportunistic trademark practices, making it a pivotal study for intellectual property practitioners and businesses alike.

• Detailed Factual Background
  • Falcon Licensing Limited, a New Zealand-based company, emerged as the petitioner in this case, seeking the cancellation of the trademark "BOLDIFY," registered by PRI Enterprises Private Limited (Respondent No. 1) under application no. 3867168 in Class 3.
  • The petitioner’s claim rested on its long-standing association with the "BOLDIFY" mark, which was first adopted in 2016 by its predecessor-in-interest for hair care products.
  • The mark was used continuously and exclusively, gaining significant global recognition through sales on platforms like www.amazon.com since August 2016 and via the domain www.getboldify.com.
  • The predecessor-in-interest secured trademark registrations in the United States as early as March 27, 2016, with further registrations in countries like New Zealand, the United Kingdom, and the European Union.
  • In 2017, the petitioner was incorporated to manage the intellectual property assets of the "BOLDIFY" brand. Boldify Inc., a U.S.-based subsidiary, was established in 2018, and by 2020, it had filed for trademark registration in India under Class 35, granted in 2022.
  • An Assignment Agreement dated January 25, 2021, transferred all rights in the "BOLDIFY" trademarks to the petitioner, solidifying its global ownership.
  • Annual sales escalated from USD 48,662 in 2016-17 to a projected USD 17 million in 2023-24, supported by substantial advertising investments.
  • In contrast, PRI Enterprises, incorporated in December 2017, operated as a micro-enterprise dealing in rubber and plastic products, vacuum storage bags, and household articles.
  • In June 2018, PRI Enterprises allegedly adopted the "BOLDIFY" mark for cosmetics and beauty products, securing registration in Class 3 on December 23, 2018, on a "proposed to be used" basis.
  • However, the petitioner alleged that PRI Enterprises had never used the mark for the registered goods. A critical piece of evidence was the email communication from May 2018, where PRI Enterprises, using the email pri.enterprises64@gmail.com, expressed interest in distributing the petitioner’s "BOLDIFY" products in India.
     
• Detailed Procedural Background
  • The dispute crystallized when the petitioner applied for registration of the "BOLDIFY" word and label marks in Class 3 on March 20, 2023.
  • The Trade Marks Registry objected, citing PRI Enterprises’ existing registration.
  • Falcon Licensing filed a petition under Sections 47 and 57 of the Trade Marks Act, 1999, before the Delhi High Court on October 26, 2023, seeking cancellation of PRI Enterprises’ "BOLDIFY" registration.
     
• Issues Involved in the Case
  • Whether PRI Enterprises’ registration was dishonest and constituted trademark squatting.
  • Whether PRI Enterprises had used the "BOLDIFY" mark for goods under Class 3.
  • If not, whether non-use warranted cancellation under Section 47.
     
• Detailed Submission of Parties
  • The petitioner contended that PRI Enterprises, aware of the brand’s goodwill, dishonestly registered an identical mark. It emphasized prior use since 2016, global registrations, and substantial sales, asserting a strong trans-border reputation.
  • The petitioner claimed to be a “person aggrieved,” as PRI Enterprises’ registration obstructed its application, causing prejudice.
  • PRI Enterprises argued it adopted the mark independently in 2018 and abandoned it in 2020 to focus on sanitizers and PPE kits.
  • It argued the petition was premature as the five-year non-use period had not elapsed by October 2023.
  • PRI Enterprises denied the email communications but admitted ownership of the address.
  • It also argued that its goods were unrelated, negating confusion or prejudice.
     
• Judgments Cited by Parties
  • Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan (2023): Held that genuine use is essential and non-use justifies removal under Section 47.
  • Kabushiki Kaisha Toshiba v. Tosiba Appliances (2008): Genuine intention to use is crucial; registration without intent equals trafficking.
  • BPI Sports LLC: Defined squatting as registering a third-party mark to block legitimate owners. Applied to PRI Enterprises’ conduct.
  • Kia Wang v. Registrar of Trademarks (2023): Clarified “person aggrieved” under Section 57, affirming the petitioner’s locus standi.
  • Khoday Distilleries Ltd. v. Scotch Whisky Association (2008): Stressed rectification to maintain register purity and avoid deception.
  • Hardie Trading Ltd.: Supported liberal construction of locus standi in public interest matters.
  • Powell’s Trade Mark, Re (1894): A person aggrieved includes those legally affected by a mark’s presence.
  • Larsen & Toubro Ltd. v. Lachmi Narain Trades (2008): Rejected the “field of activity” test; confusion may arise from strong reputation.
     
• Law Settled in This Case
  • A trademark registered without bona fide use or intent, particularly on a “proposed to be used” basis, is vulnerable to cancellation under Section 47 if no evidence of use is shown.
  • Trademark squatting, where a party registers a third party’s mark to block its legitimate owner, is impermissible and contravenes the Trade Marks Act’s objective of preventing trafficking.
  • The “person aggrieved” criterion under Section 57 is interpreted liberally, encompassing parties whose legal or commercial rights are restrained by an impugned registration.
  • The “field of activity” test is obsolete; a well-known mark’s reputation can be protected against use on dissimilar goods if confusion or dilution is likely.
  • Finally, the public interest in maintaining a pure trademark register overrides claims of acquiescence, especially when the registered mark remains unused.

Case Information
Case Title: Falcon Licensing Limited Vs. PRI Enterprises Private Limited & Anr.
Case Number: C.O. (COMM.IPD-TM) 271/2023
Neutral Citation: 2025:DHC:2592
Date of Order: 15 April 2025
Court: High Court of Delhi
Judge: Hon’ble Ms. Justice Mini Pushkarna

Case laws:

• Sunder Parmanand Lalwani v. Caltex (1969): Well-known mark on unrelated goods can still confuse consumers.
• Bata India Ltd. v. Pyare Lal & Co. (1985): Passing-off can occur even with dissimilar goods if it creates a false origin impression.
• Daimler Benz AG v. Hybo Hindustan (1994): Protected famous marks from unrelated use to prevent dilution.
• Aktiebolaget Volvo v. Vinod Kumar (2011): Prevented use of “VOLVO” for ice cream due to confusion risks.

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

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539