Delhi HC Orders Removal of 'SHAKTI' Trademark for Non-Use and Absence of Bona Fide Intent

The Delhi High Court has ordered the removal of the trademark 'SHAKTI' from the Register of Trade Marks, ruling that the registration was obtained without a bona fide intention to use the mark and that no evidence of actual usage was presented by the respondents.

In a significant decision delivered by Justice Tushar Rao Gedela, the Court addressed a rectification petition filed by the proprietor of the well-known mark 'SAKTHI'. The petitioner sought the expunging of the mark 'SHAKTI' registered under Trade Marks Act, 1999, alleging that the respondent's mark was a mere 'paper registration' intended to hijack a phonetically identical name and dilute the petitioner's long-standing reputation.

Legal Rationale: Non-Use and Lack of Bona Fide Intent

The Court observed that while the petitioner established use of the mark 'SAKTHI' at least since 2010 through tangible evidence, the respondents failed to produce a single invoice demonstrating the independent use of the mark 'SHAKTI' since its application in 1996 or its registration in 2018. The Court, in its reasoning, observed: "The initial onus to prima facie demonstrate non-use or lack of intention to use has been discharged by the petitioner by asserting the same, and also evidencing its opposition to the registration... respondent no.1 and respondent no.3 have failed to discharge the said onus."

Deeming Fiction of Usage Rejected

The respondents argued that the use of their composite mark 'SHAKTI BHOG' should be deemed as the use of the mark 'SHAKTI' under Section 55(2) of the Trade Marks Act, 1999, as 'BHOG' is common to the trade. However, the Court rejected this "captivating" interpretation, noting that it cannot be applied when an identical mark like 'SAKTHI' already exists on the register and the respondent has failed to prove any independent use of the specific mark 'SHAKTI'.

The Impact of Phonetic Similarity and Confusion

Examining the rival marks, the Court found them phonetically and structurally identical. The Court noted that the placement of the letter 'H' does not create a sufficient distinction. It held that there is every likelihood of a consumer with average intelligence being deceived into believing the respondents' goods are those of the petitioner, especially since both parties operate in the same class of goods under Trade Marks Act, 1999.

Directions Issued by the Court

The Court has the following directions:

"respondent no.2 is directed to cancel and remove the mark ‘SHAKTI’ registered on 22.05.2018 in the name of respondent no.1 under no.701410 dated 12.03.1996 from the Register of Trade Marks. The said exercise be carried out within four (4) weeks from the date of receipt of this order."

Background:

The dispute began when the petitioner, a manufacturer of food products using the mark 'SAKTHI' since 1977, discovered the respondent's 1996 application for the mark 'SHAKTI'. Although an initial opposition by the petitioner was dismissed on procedural grounds leading to the mark's registration in 2018, the petitioner filed for rectification. The respondent no. 3, claiming locus via an assignment deed from Sun Pharmaceuticals Industries Ltd. v. Cipla Ltd., defended the registration citing honest concurrent use under Section 12 of the Trade Marks Act, 1999. The Court, however, found the respondent's claims unsupported by evidence, distinguishing the present facts from the precedent in London Rubber Co. Ltd. v. Durex Products Incorporated and Nandhini Deluxe versus Karnataka Cooperative Milk Producers Federation Ltd.. Ultimately, the Court concluded that the mark wrongly remained on the register in violation of Section 47(1)(a) and Section 57(2) of the Trade Marks Act, 1999.

Case Details:
Case No.: C.O. (COMM.IPD-TM) 180/2022
Case Title: MR P.C. DURAISAMY v. KEWAL KRISHAN KUMAR & ANR
Appearances:
For the Petitioner(s): Mr. Kumar Sudeep, Advocate.
For the Respondent(s): Mr. Neeraj Grover, Mr. Angad Deep Singh, Ms. Mohona Sarkar and Ms. Riya Luthra, Advocates for R-3.

Source: 2026 CaseBase(DEL) 450