Anshul Vaish Vs Hari Om and Co.

Hindi translations of the Trademark written in English constitute trademark infringement

Introduction:This case pertains to a trademark rectification dispute before the Delhi High Court, wherein the petitioner, Anshul Vaish, sought the removal of the respondent’s registered trademark "ROHIT" from the Register of Trade Marks. The matter involves competing claims over prior use, deceptive similarity, and alleged bad faith registration.

Petitioner’s Business & Trademark Use: The petitioner, Anshul Vaish, is a partner in M/s Rohit Wrapers, a firm incorporated on April 13, 2000, engaged in the manufacturing and trading of PVC pipes. The petitioner has used various trademarks, including "Rohit Wrapers," "Rohit Tubes," "Rohit Varadan," "Rohit Gold," and "Rohit Durable", with the name “Rohit” as the dominant feature. The petitioner filed Trademark Application No. 1989126 on July 5, 2010, which was registered in February 2016.

Respondent’s Trademark Registration: The respondent, Hari Om & Co., applied for trademark "ROHIT" under Application No. 2408221 on October 9, 2012, claiming use since January 1, 2005. The mark was registered on August 14, 2014 in Class 17 for PVC pipes.

Dispute Between Parties: The petitioner alleged that the respondent's mark was deceptively similar and was adopted in bad faith. The respondent issued a legal notice in 2015 to the petitioner, claiming trademark infringement. In response, the petitioner filed for rectification of the respondent's trademark registration, asserting prior and continuous use since 2000.

Arguments by the Petitioner (Anshul Vaish & Rohit Wrapers): Prior Use & Continuous Business Activity: The petitioner had been using "Rohit" as a trademark and trade name since April 2000, predating the respondent's claimed use of 2005. Documentary evidence included TIN Registration (2000), Central Excise Certificate (2002), Sale Invoices (2004-2016), and a Bureau of Indian Standards (BIS) Certificate (2003). Trademark Similarity & Deceptive Use: The respondent adopted "Rohit" in Hindi, which is phonetically and visually identical to the petitioner’s mark in English. The respondent misled consumers, causing confusion and associating its goods with the petitioner’s established brand.Bad Faith Adoption & Fraudulent Claims: The respondent's invoices for 2005-2006 contained a Taxpayer Identification Number (TIN) that was only granted in 2007, exposing document falsification. The respondent’s Partnership Deed was modified in 2007 to include PVC pipes, contradicting their claim of use since 2005. Violation of Trademark Law & Paris Convention: Under Sections 9(1)(a), 9(2)(a), 11(1), and 11(3)(a) of the Trade Marks Act, 1999, the registration of deceptively similar marks is prohibited. Article 8 of the Paris Convention mandates that trade names are protected even without registration.

Arguments by the Respondent (Hari Om & Co.):Legitimate Registration & Prior Use Claim: The respondent argued that it had been using the mark since 2005, predating the petitioner’s trademark application. The trademark was registered in 2012 without any opposition. Business Growth & Market Presence: The respondent submitted invoices and sales data to show extensive business activity under the disputed trademark since 2005. Defensive Argument Against Fraud Allegations: The respondent denied any fraudulent intent and stated that its adoption of the mark was coincidental and not in bad faith.

Discussion on Judgments & Cited Cases:The Court referred to several landmark decisions while evaluating deceptive similarity and prior use claims:  Delhi High Court in South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. & Anr. (2014 SCC OnLine Del 1953): Held that dominant features of trademarks are crucial for assessing infringement. The respondent’s adoption of “Rohit” in Hindi was identical in sound and meaning to the petitioner’s mark, leading to confusion. Delhi High Court in Bhatia Plastics v. Peacock Industries Ltd. (1994 SCC OnLine Del 387):Held that English and Hindi translations of the same word can constitute trademark infringement (e.g., "MAYUR" vs. "PEACOCK"). Bombay High Court in Indian Express Ltd. v. Chadra Prakash Shivhare (2015 SCC OnLine Bom 5541):Ruled that a registered mark cannot be used in another language if it creates confusion (e.g., “Indian Express” in Devanagari script).

Reasoning of the Judge:Hon'ble Court ruled in favor of the petitioner based on the following findings: Petitioner’s Prior Use Proven: The petitioner had been using "Rohit" since 2000, whereas the respondent's claimed use from 2005 was unsupported by credible evidence. Respondent’s False User Claim & Forged Documents: The TIN number in the respondent's invoices for 2005-2006 was issued only in 2007, proving falsification. The respondent’s Partnership Deed was modified in 2007 to include PVC pipes, disproving its claim of business since 2005. Deceptive Similarity Between the Trademarks: The Court found that the respondent’s Hindi trademark was phonetically, visually, and conceptually identical to the petitioner’s English mark. Such usage was likely to cause consumer confusion and deception. Bad Faith Intent of the Respondent: The respondent deliberately copied the petitioner’s mark to benefit from its established goodwill.

Decision of the Court:The respondent’s trademark registration (No. 2408221 in Class 17) was canceled.The Trade Marks Register was directed to rectify the entry and remove the mark. The Controller General of Patents, Designs, and Trade Marks was notified for compliance.

Concluding Note:This case underscores the importance of prior use in trademark disputes and how courts assess deceptive similarity between marks in different languages. The judgment reaffirms that: Prior continuous use prevails over later registrations. Trademark adoption in bad faith is grounds for cancellation. Translations of marks into different languages can still constitute infringement. This ruling provides strong protection for brand owners against dishonest competitors attempting to ride on their goodwill.

Case Title: Anshul Vaish Vs Hari Om and Co.

Date of Order: February 07, 2025

Case No.: C.O. (COMM.IPD-TM) 86/2021

Neutral Citation: 2025:DHC:733

Name of Court: Delhi High Court

Judge: Hon’ble Ms. Justice Mini Pushkarna

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Written by:Advocate Ajay Amitabh Suman:[Patent and Trademark Attorney]:High Court of Delhi