Delhi High Court directs deletion of "ARUN" from registered mark "AiC ARUN" and permits respondent to retain "AiC" with variation

A bench of Justice Tushar Rao Gedela heard a petition under Sections 47, 57 and 125 of the Trade Marks Act, 1999 challenging registration of the mark AiC ARUN (Regn. No.1524226) in Class‑7. The petitioner sought removal, cancellation and rectification of the entry in the Register of Trade Marks alleging prior adoption and long, continuous use of the mark ARUN for sewing machines and parts since the 1960s and contending that the respondent’s mark was deceptively similar and adopted with mala fide intent.

The Court allowed the petition in part and directed variation of the respondent’s registration under Section 57. The High Court found overwhelming documentary evidence of the petitioner’s prior use and registrations of ARUN (registrations recorded in 1976, 1984 and 2001 and copyright in the artistic label in 1999), and held that AiC ARUN was deceptively similar to the petitioner’s mark. The Court observed that the prefix “AiC” did not sufficiently distinguish the respondent’s mark because the “essential and dominant component” was ARUN and consumers with imperfect recollection were likely to be confused. The Court, in its reasoning, observed: "Having regard to the entire factual conspectus and the aforesaid comparison between the marks of the petitioner and respondent no.1 alongwith the label and packaging of the goods of both parties, this Court has no doubt that the trademark AiC ARUN of the respondent no.1 is deceptively similar to the trademark ARUN of the petitioner. The use of the word/letter/prefix 'AiC' does not draw any distinctiveness or distinction between the two trademarks, the essential and dominant component of the mark being 'ARUN'. An ordinary person with average intelligence and imperfect recollection is bound to get confused or deceived by the goods manufactured by the respondent no.1, carrying the impugned mark as well as the label and packaging, deceptively similar to that of the petitioner." The Court therefore directed deletion of the word "ARUN" from the respondent’s registered mark and permitted the respondent to continue using and registering the mark “AiC” with a suitably distinct word or device so as to maintain a safe distance from the petitioner’s mark. The Registrar of Trade Marks was directed to carry out the variation within six weeks.

Background

The petitioner (Satya Paul) asserted prior adoption of the mark ARUN since 1962, pleaded continuous and extensive use, advertising, multiple registrations across classes and protective actions against infringers. It alleged respondent no.1 (M/s. Alka Industrial Corporation) applied for and secured registration of AiC ARUN in 2007–2010 for identical goods and in a proximate market (Jalandhar–Ludhiana), causing loss to petitioner’s goodwill. Counsel for the petitioner relied on the “triple test” of deceptive similarity, identical class of goods and common consumer base and cited precedents including Greaves Cotton Ltd. and decisions of other High Courts.

Respondent no.1 denied deception, argued that “AiC” (representing Alka Industrial Corporation) created a distinct mark, contended ARUN was a common or generic name in trade and relied on the absence of opposition before the Registrar and the search report process that culminated in registration. It stressed smaller and localised sales and submitted the petition was an attempt to stifle competition.

The Court analysed documentary proof of prior registrations, copyright in the label, sales figures, advertisements, caution notices and earlier decrees obtained by the petitioner. It found respondent could not rebut the petitioner’s evidence of long, continuous use and goodwill. The Court rejected the contention that failure to oppose at the Registry stage barred post‑registration challenge, observing that Sections 47 and 57 of the Act permitted rectification and revocation to avoid anomalous outcomes. The Court applied established tests on deceptive similarity and consumer confusion, cited relevant precedents, and concluded that deletion of “ARUN” from the respondent’s mark was an appropriate remedy while permitting the respondent to retain and use “AiC” with suitable modification. The petition was allowed in terms of the judgment and the Registrar was directed to effect rectification within six weeks; the petition was disposed of with pending applications.

Case No.: C.O. (COMM.IPD-TM) 651/2022 Case Title: SATYA PAUL v. ALKA INDUSTRIAL CORPORATION AND ANR. Appearances: For the Petitioner(s): Mr. Manvendra Mukul, Mr. J.K. Pandey, Mr. Vivek, Ms. Tripti Saxena, Mr. Mukesh Kumar, Advocates For the Respondent(s): Mr. Subhash C. Jindal, Advocate (Through VC)