Satya Paul Vs. Alka Industrial Corporation

The **Delhi High Court** in a significant trademark rectification decision delivered on February 9, 2026, protected the long-standing seniority and acquired distinctiveness of the mark **"ARUN"** used continuously since 1962 for sewing machines and parts (Class 7), while directing substantial variation in the later-registered mark **"AiC ARUN"** (registered in 2010/2011) belonging to a geographically proximate competitor in Punjab.

### Introduction

The judgment in **C.O. (COMM.IPD-TM) 651/2022** titled **Satya Paul v. Alka Industrial Corporation & Anr.** represents a textbook application of Sections 47 and 57 of the Trade Marks Act, 1999 in rectification / cancellation proceedings before the High Court sitting in its Intellectual Property Division jurisdiction. The core dispute concerned whether the addition of a corporate prefix ("AiC" standing for Alka Industrial Corporation) was sufficient to avoid deceptive similarity with a prior, highly reputed house mark "ARUN" that had enjoyed statutory registrations since the mid-1970s and factual use since 1962. The Court was called upon to balance the statutory presumption of validity attaching to a registered mark against overwhelming evidence of prior adoption, continuous use, acquired distinctiveness, extensive promotion, successful enforcement actions, and geographical/trade-channel overlap. Ultimately, the Court refused to treat "ARUN" as a generic or publici juris term in the sewing machine trade and held that the dominant and essential feature of the impugned mark remained confusingly similar, warranting partial rectification rather than outright cancellation.

### Factual Background

The petitioner, Satya Paul (trading as Satya Paul & Co., Jalandhar), claimed prior adoption and use of the word mark **"ARUN"** for sewing machines and parts thereof since 1962 through its predecessor-in-interest. Documentary evidence demonstrated:

- SSI registration obtained as early as December 1960.

- First registration in Class 7 vide No.314271 dated April 24, 1976 (limited to Gujarat, Maharashtra, Karnataka, Tamil Nadu).

- Subsequent pan-India registration in Class 7 vide No.431317B dated December 21, 1984.

- Registration in Class 20 vide No.1023094 dated July 4, 2001.

- Copyright registration for the artistic label/wrapper/sticker of "ARUN" dated June 16, 1999.

The petitioner placed on record extensive promotional materials (newspaper advertisements spanning decades), caution notices issued to trade associations and dealers, circulars warning against misuse, numerous successful civil suits and decrees against infringers over the years, and audited sales figures certified by a Chartered Accountant showing exponential growth from ≈ ₹81.43 lakh (FY 2007-08) to ≈ ₹2.09 crore (FY 2024-25).

The respondent no.1 (Alka Industrial Corporation, Ludhiana — geographically close to Jalandhar) applied for registration of **"AiC ARUN"** on January 17, 2007 claiming user from April 1, 2004. The mark was advertised in Trade Marks Journal No.1431 dated January 1, 2010 and registered (No.1524226 in Class 7) effective January 12, 2011. The Search Report dated October 23, 2007 cited the petitioner’s earlier "ARUN" registrations, yet no opposition was filed by the petitioner under Section 21. The respondent’s sales remained modest (≈ ₹10,800 in FY 2007-08 rising only to ≈ ₹4.54 lakh in FY 2024-25).

Both parties manufacture and sell identical goods (sewing machines and parts) through overlapping trade channels and consumer bases in Punjab and beyond.

### Procedural Background

The petitioner instituted rectification proceedings under Sections 47, 57 and 125 of the Trade Marks Act, 1999 before the Delhi High Court seeking cancellation / removal / rectification of the entry relating to **"AiC ARUN"** on grounds of deceptive similarity, prior rights, bad faith adoption, and likelihood of confusion/deception. The matter was heard finally; judgment was reserved on January 19, 2026 and pronounced on February 9, 2026 by Hon’ble Mr. Justice Tushar Rao Gedela.

### Reasoning and Decision of Court

The Court first recorded the petitioner’s unchallenged prior adoption and registrations dating back to the 1970s, together with continuous use since 1962, extensive advertising, trade vigilance (caution notices, circulars), successful enforcement litigation, and dramatic sales growth evidencing goodwill, reputation and secondary meaning acquired by "ARUN" in the sewing machine trade.

Rejecting the respondent’s principal defences, the Court held:

- **"ARUN" is not generic/publici juris** in this context — the respondent failed to produce any cogent evidence showing widespread third-party use; the petitioner’s long, uninterrupted, exclusive-style use + registrations + enforcement history conferred protectable distinctiveness and exclusivity.

- Mere addition of prefix "AiC" (even if denoting corporate name) does not eliminate deceptive similarity when the essential, dominant and distinctive feature remains **"ARUN"**. Phonetic identity, visual prominence of "ARUN", identical goods, identical trade channels, common consumer base, and geographical proximity create high likelihood of confusion for the average consumer with imperfect recollection.

- The argument that non-filing of opposition under Section 21 read with Section 23 forever bars rectification under Sections 47/57 was emphatically rejected. The Court reasoned that such an interpretation would create anomalous classes of registrants (those who opposed vs. those who did not), defeat the legislative intent behind rectification provisions, and leave genuine prior right holders without remedy in cases of honest oversight or lack of knowledge of advertisement.

- Reliance on **Surya Agro-Oils** (sun/solar system analogy) was misplaced as "ARUN" was not shown to be commonly used by multiple traders in sewing machines.

- The Division Bench ruling in **Himalaya Drug Co. v. SBL Limited** (2012) and Single Judge decision in **Greaves Cotton Ltd.** (2011) were followed to hold that appropriation of the essential feature of a senior mark by mere prefix/suffix does not avoid infringement or sustain a junior registration.

Instead of outright cancellation, the Court exercised discretion under Section 57 to direct **variation/rectification** by deletion of the word "ARUN" from "AiC ARUN", allowing the respondent to retain "AiC" and add other distinctive elements (if so advised) so as to maintain safe distance from the petitioner’s mark. The Registrar was directed to effect the rectification within six weeks.

### Point of Law Settled in the Case

The judgment reaffirms and applies several important propositions:

- Long prior use + multiple registrations + extensive promotion + successful enforcement + geographical proximity + identical goods + common trade channels can clothe even a seemingly ordinary word ("ARUN") with strong secondary meaning and exclusivity in a given trade.

- Addition of a corporate prefix/abbreviation does not automatically immunize a mark from a charge of deceptive similarity when the senior mark’s essential feature remains the visually, phonetically and conceptually dominant component.

- Failure to oppose advertisement under Section 21 does not create an absolute bar to subsequent rectification/cancellation proceedings under Sections 47/57; the two remedies serve distinct purposes and co-exist to prevent anomalous outcomes.

- Rectification power under Section 57 is flexible — courts may direct partial variation/deletion instead of wholesale cancellation where the junior registrant has some user and the equities so permit.

### Case Detail

**Title:** Satya Paul Vs. Alka Industrial Corporation & Anr.  

**Date of Order:** 09.02.2026  

**Case Number:** C.O. (COMM.IPD-TM) 651/2022  

**Neutral Citation:** 2026:DHC:1038  

**Name of Court:** High Court of Delhi at New Delhi  

**Name of Hon'ble Judge:** Hon’ble Mr. Justice Tushar Rao Gedela  

**Disclaimer:** Readers are advised not to treat this as substitute for legal advice 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

### Suggested Titles

1. Delhi High Court Directs Deletion of “ARUN” from “AiC ARUN” – Protects 60-Year-Old Sewing Machine Trademark Against Deceptively Similar Junior Mark  

2. Prior Use Since 1962 Trumps Later Registration: Delhi HC Orders Rectification of “AiC ARUN” in Favour of Senior “ARUN” Mark  

3. Mere Corporate Prefix Insufficient to Avoid Deceptive Similarity – Delhi High Court Mandates Variation of Registered Mark “AiC ARUN”  

4. Non-Opposition Does Not Bar Rectification: Delhi HC Clarifies Co-existence of Sections 21 & 57 in Trademark Law  

### Suggested Tags

trademark rectification, deceptive similarity, prior use, Section 57 Trade Marks Act, Section 47 cancellation, dominant feature, acquired distinctiveness, sewing machines trademark, Delhi High Court IPD, bad faith adoption, geographical proximity, honest concurrent use, publici juris defence, prefix addition, partial rectification

### Headnote

**Trade Marks Act, 1999 — Ss. 47, 57 — Rectification — Deceptive similarity — Prior registered mark “ARUN” used since 1962 for sewing machines — Later registered mark “AiC ARUN” — Dominant feature “ARUN” phonetically and visually identical — Addition of corporate prefix “AiC” insufficient to avoid confusion — Long uninterrupted use, multiple registrations, extensive promotion, successful enforcement and exponential sales growth confer distinctiveness and exclusivity — “ARUN” not generic/publici juris on facts — Non-opposition under S.21 no bar to rectification under Ss.47/57 — Directed deletion of “ARUN” from impugned mark with liberty to retain “AiC” + distinctive additions — Petition allowed with variation.**

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The petitioner, prior adopter and registered proprietor of the trademark **ARUN** since 1962 for sewing machines and parts in Class-7 (with registrations from 1976, 1984, and 2001, plus artistic label copyright in 1999), sought rectification/cancellation of the respondent's later-registered mark **AiC ARUN** (No.1524226, applied 2007 claiming user from 2004, registered 2010/2011) under Sections 47, 57 and 125 of the Trade Marks Act, 1999, alleging deceptive similarity, prior rights, confusion in identical goods/trade channels, geographical proximity (Jalandhar vs Ludhiana), and mala fide adoption despite the respondent's knowledge of the petitioner's reputation. The respondent defended claiming no deceptive similarity due to the distinguishing prefix "AiC" (its corporate name), distinct get-up/packaging, "ARUN" being common/generic/publici juris in the sewing machine trade, lack of opposition to its advertisement under Section 21 barring later challenge, and modest sales causing no injury. The Delhi High Court, after examining evidence of the petitioner's long uninterrupted use, extensive promotion, caution notices, successful enforcement suits, and exponential sales growth establishing acquired distinctiveness and goodwill, held that "ARUN" was not generic on facts, the dominant essential feature "ARUN" remained phonetically/visually confusingly similar despite the prefix, and non-opposition under Section 21 did not bar rectification under Sections 47/57 as the remedies serve distinct purposes to avoid anomalous outcomes. Instead of full cancellation, the Court directed partial rectification by deletion of "ARUN" from "AiC ARUN", permitting retention of "AiC" with liberty to add other distinctive elements for safe distance, with compliance by the Registrar within six weeks.

**Points of law settled:**

- Long prior continuous use since 1962, multiple registrations (1976 onwards), extensive promotion, trade vigilance via caution notices/circulars, successful enforcement decrees, and substantial sales growth can confer strong secondary meaning, goodwill, reputation, and exclusivity even on an ordinary word like "ARUN" in a specific trade, rejecting generic/publici juris defence absent cogent evidence of widespread third-party use (paras 26, 31, 33).

- Mere addition of a corporate prefix ("AiC") does not eliminate deceptive similarity where the senior mark’s essential/dominant feature ("ARUN") remains the visually, phonetically and conceptually predominant component, likely to confuse average consumers with imperfect recollection in identical goods, trade channels and geographical proximity (paras 33, 35–36).

- Failure to file opposition under Section 21 against advertisement does not create an absolute/forever bar to subsequent rectification/cancellation proceedings under Sections 47/57; the provisions co-exist to prevent anomalous classification of right-holders and preserve remedies for genuinely aggrieved prior registrants (paras 37).

- Rectification power under Section 57 is flexible, permitting partial variation/deletion of confusing elements rather than wholesale cancellation where equities (modest junior user/sales) permit, ensuring safe distance while protecting senior rights (para 41).

**Case Title:** Satya Paul v. Alka Industrial Corporation & Anr.  

**Order date:** 09.02.2026  

**Case Number:** C.O. (COMM.IPD-TM) 651/2022  

**Neutral Citation:** 2026:DHC:1038  

**Name of court:** High Court of Delhi at New Delhi  

**Name of Judge:** Hon’ble Mr. Justice Tushar Rao Gedela  

Disclaimer: 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

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