Trademark Registration of 'PONTA' Cancelled Due to Deceptive Similarity with 'PENTA': Delhi HC

The Delhi High Court ordered the removal of the trademark "PONTA" from the Register of Trade Marks, finding it deceptively similar to Panasonic Holdings' well-known "PENTA" mark and thereby infringing established trademark rights. 

In a judgment delivered by Justice Tushar Rao Gedela, the Court addressed two petitions filed under the Trade Marks Act, 1999. The petitioners, Panasonic Holdings Corporation and its associate, sought the cancellation of the word mark 'PONTA' and a related device mark registered in the name of Siddharth Vij. The dispute centered on whether the respondent's marks, used for electrical goods in Class-9, infringed upon the petitioner's long-standing 'PENTA' trademark, which had been in use in India since 1989. 

Court Analysis on Deceptive Similarity and Triple Identity Test 

The Court observed that the petitioner had established substantial goodwill through extensive sales and promotional activities, with turnovers reaching hundreds of crores. When comparing the rival marks, the Court found a "glaring similarity" that could not be cured by mere vowel substitution. The Court, in its reasoning, observed: "Merely by replacing 'E' with the letter 'O' does not create any distinction at all. Moreover, if one were to carefully observe the device mark of respondent no.1, the design built into the letter 'O' actually gives an impression as if it is 'E' and not 'O'. In the opinion of this Court, the mark 'PONTA' of the respondent no.1 is visually, structurally and conceptually, if not identical, clearly deceptively similar." 

Furthermore, the Court held that the 'triple identity test' was satisfied as the marks were deceptively similar, the products (electrical switches, sockets, etc.) were identical, and the trade channels/consumers were common. It noted that average consumers, including electricians and petty contractors, were likely to be confused. 

Rejection of 'Honest Adoption' Claims and AI-Generated Evidence 

The respondent argued that the mark 'PONTA' was inspired by the 'Paonta Sahib' Gurudwara and supported its choice with meanings of the word in various foreign languages. However, the Court rejected these explanations as an "innovative storyline" cooked up for litigation, noting that these justifications were never provided to the Trade Marks Registry during the examination phase. The Court also refused to rely on unauthenticated research generated by Artificial Intelligence tools regarding foreign language meanings. Consequently, the Court found the registration to be without "sufficient cause" under Section 57 of the Trade Marks Act, 1999. 

Directions Issued to the Registrar of Trade Marks 

The Court has the following directions: 

"The respondent no.2/Registrar of Trade Marks is directed to remove the registered mark ‘PONTA’ (word mark) bearing application no. 4134589 registered on 22.02.2021, and the device mark bearing application no. 4885149 in Class-9 registered on 09.08.2021 in the name of respondent no.1, shall be removed and rectified in the Register of Trade Marks. The exercise shall be carried out within four weeks from the date of receipt of this order." 

Background: 

The petitioner acquired the 'PENTA' mark in 2007 from the Shah Family Group and demonstrated continuous use through invoices dating back to 2005. The respondent applied for 'PONTA' in 2019 on a 'proposed to be used' basis. Despite an Examination Report by the Registry citing the petitioner's 'PENTA' mark as an objection under Section 11 of the Trade Marks Act, 1999, the respondent's mark was registered after a brief and unsubstantiated reply. The petitioner challenged this under Sections 47 and 57 of the Act. While the Court found Section 47 inapplicable due to the respondent's subsequent use, it invoked Section 57(2) to expunge the marks, citing procedural deficiencies and the likelihood of public deception. The Court relied on principles discussed in precedents such as Kamani Oil Industries Pvt. Ltd. vs. Bhuwaneshwar Refineries Pvt. Ltd., Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd. of Gujarat (India), and Mallcom (India) Ltd. vs. Shanti Udyog Weldsafe Pvt. Ltd. & Ors. regarding deceptive similarity. 

Case Details: 
Case No.: C.O. (COMM.IPD-TM) 171/2025 and 172/2025 
Case Title: PANASONIC HOLDINGS CORPORATION & ANR. versus SIDDHARTH VIJ & ANR. 
Appearances: 
For the Petitioner(s): Mr. Afzal B. Khan, Mr. Debjyoti Sarkar, Mr. Manosij Mukherjee, Mr. Sharad Besoya, Ms. Manaya Jain and Mr. Balkrishan Singh, Advocates. 
For the Respondent(s): Mr. Mohan Vidhani, Mr. Dhruv Sikka, Ms. Mokshita Gautam and Ms. Urvashi Arora, Advocates for R-1; Ms. Nidhi Raman, CGSC with Mr. Om Ram and Ms. Nikita Singh, Advocates for R-2. 

Source: 2026 CaseBase(DEL) 428