Hubei Ji Su Kan Dian Tech Vs. Lark Engineering

Hubei Ji Su Kan Dian Technology Co., Ltd., a Chinese company engaged in design and development of computer programs under the 'LARK' mark for services like messaging, video conferencing, and collaborative tools, filed a petition under Sections 47 and 57 of the Trade Marks Act, 1999, seeking rectification of the 'LARK' trademark registered by Lark Engineering Company (India) Pvt. Ltd., an Indian firm specializing in poultry and cattle feed machinery including accessories like computer hardware and software, in Class 42 since 2016 with claimed use from 1994, after the respondent's mark was cited against the petitioner's 2018 application; the petitioner argued non-use of the mark for Class 42 services and false user date, citing Supreme Court precedents like Vishnudas Trading and Nandhini Deluxe, while the respondent countered with invoices and promotional material showing use in machinery-related hardware and software customization. The court analyzed the proviso to Section 47(1), determining that the services were of the same description as the respondent's core goods due to shared source, trade channels, and conjunctive use, as evidenced by invoices for items like PLC panels and automation systems sold alongside machinery, and rejected the false user date claim since use was established per se from 1994 and for services from 2016 prior to the petitioner's application, finding no mala fide adoption and dismissing the petition without costs.

• The proviso to Section 47(1) of the Trade Marks Act, 1999, protects a trademark from removal for non-use if there is bona fide use by the proprietor in relation to goods or services of the same description or associated goods/services, and the phrase "goods or services of the same description" should not be given a restrictive meaning but considered based on factors like nature, composition, uses, functions, and trade channels (Para 14, 15, 16, citing Eagle Potteries Private Ltd. v. Eagle Flask Industries Pvt. Ltd., 1992 SCC OnLine Bom 490).
• To determine if goods or services are of the same description under the proviso to Section 47(1), each case must be decided on its facts, with emphasis on relevant characteristics such as shared source, trade channels, and conjunctive use, allowing protection where services like hardware/software development are provided in relation to and alongside core goods like machinery (Para 16, 17, 18, 19).
• A trademark registration is not liable to rectification for false date of use if documents establish use of the mark per se from the claimed date and for the specific services prior to the challenger's application, demonstrating no mala fide adoption, even if direct evidence for services dates later (Para 22, 23, 25, distinguishing Vivek Kochher & Anr. v. M/s. KYK Corporation Ltd. & Anr., 2017 SCC OnLine Del 11383; The Times Publishing House Ltd. v. The Financial Times Ltd., 2012 (50) PTC 283 (IPAB); Relaxo Footwears Limited v. Bata India Limited, 2013 SCC OnLine IPAB 20; Khushiram Beharilal v. Jaswant Singh, 2012 (50) PTC 538 (IPAB)).

Case Title: Hubei Ji Su Kan Dian Technology Co., Ltd. Vs. Lark Engineering Company (India) Pvt. Ltd. and Anr. Order date: 24.12.2025 Case Number: C.O. (COMM.IPD-TM) 119/2021 Neutral Citation: N/A Name of court: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Tejas Karia

[Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation] [Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi]