### Introduction
The case of Dunlop International Limited vs Glorious Investment Limited and Anr., adjudicated by the High Court at Calcutta on June 11, 2025, involves a significant trademark dispute concerning the registration of the word mark "Dunlop" across various classes. The plaintiffs, Dunlop International Limited and Dunlop Slazenger Group Ltd., challenged decisions by the Deputy Registrar of Trademarks that allowed the defendant, Glorious Investment Limited, to register the identical "Dunlop" mark for diverse goods on a "proposed to be used" basis. This judgment addresses the interplay between identical trademarks, the dissimilarity of goods, and the principles of trademark opposition, offering clarity on the scope of protection afforded to well-established marks in India.
### Factual Background
Dunlop International Limited and Dunlop Slazenger Group Ltd. are entities with a longstanding association with the "Dunlop" trademark, initially registered and used by Dunlop India Limited for products across multiple categories, including tyres, sports goods, and telecommunications equipment. The plaintiffs claim a historical presence and goodwill associated with the mark, supported by prior registrations and continuous use. Glorious Investment Limited, the defendant, applied for registration of the "Dunlop" mark in eight different classes, including telecommunications, on a "proposed to be used" basis, without evidence of prior use or goodwill. The Deputy Registrar's orders permitted these registrations, finding no likelihood of confusion due to the differing nature of the goods, prompting the plaintiffs to appeal the decisions.
### Procedural Background
The disputes originated from opposition proceedings before the Deputy Registrar of Trademarks, resulting in orders dated July 12, 2024, and July 4, 2024, rejecting the plaintiffs' oppositions in cases numbered IPDTMA/14/2024 to IPDTMA/21/2024. These cases involved trademark applications numbered 1644611 and others across various classes. Aggrieved by the Registrar's findings, the plaintiffs filed appeals with the Intellectual Property Rights Division of the Calcutta High Court. By mutual consent, the appeals were heard analogously due to common legal and factual issues. The court reserved its judgment after hearing arguments and pronounced its decision on June 11, 2025, under the stewardship of Justice Ravi Krishan Kapur.
### Core Dispute
The central issue revolves around whether the Deputy Registrar erred in allowing Glorious Investment Limited to register the "Dunlop" mark across diverse classes, despite the plaintiffs' existing registrations and established goodwill. The dispute hinges on the interpretation of Section 11 of the Trade Marks Act, 1999, particularly the likelihood of confusion or association between identical marks used for different goods. The plaintiffs argue that their prior use and reputation in the "Dunlop" mark extend beyond registered categories, potentially misleading consumers, while the defendant contends that the dissimilarity of goods negates any infringement or passing off, justifying the new registrations.
### Discussion on Judgments
The parties and court referenced several precedents to bolster their arguments. The plaintiffs cited N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, to assert that a well-known trademark's goodwill transcends specific goods, supporting their claim against the defendant's registration. They also relied on Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, to argue that identical marks, even for dissimilar goods, can cause confusion if the mark is distinctive and widely recognized. The defendant did not cite specific judgments but implied reliance on precedents like J.R. Kapoor v. Micronix India, (1994) Supp (3) SCC 215, suggesting that dissimilarity in goods can preclude confusion. The court drew on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, to emphasize that consumer confusion must be assessed holistically, including the mark's reputation, and referenced Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448, to affirm that prior use strengthens opposition rights, influencing the final analysis.
### Reasoning and Analysis of the Judge
Justice Ravi Krishan Kapur conducted a detailed examination of the trademark law framework, focusing on Section 11 of the Trade Marks Act, 1999, which prohibits registration if confusion or association with an earlier mark is likely. The judge recognized the "Dunlop" mark's established reputation due to the plaintiffs' long-term use and prior registrations, extending its protective ambit beyond the registered goods. The court critiqued the Deputy Registrar's reliance on goods' dissimilarity, noting that the identical nature of the marks and the plaintiffs' well-known status could lead to consumer deception, even in unrelated categories like telecommunications. The judge emphasized the mark's distinctiveness and the potential for dilution, rejecting the "proposed to be used" basis as insufficient to override the plaintiffs' prior rights. The analysis balanced statutory provisions with equitable considerations, prioritizing the protection of established goodwill.
### Final Decision
The High Court allowed the appeals numbered IPDTMA/14/2024 to IPDTMA/21/2024, setting aside the Deputy Registrar's orders dated July 12, 2024, and July 4, 2024. The court directed the cancellation of the defendant's registrations of the "Dunlop" mark across the contested classes and restrained Glorious Investment Limited from using the mark in any manner that infringes on the plaintiffs' rights. The matter was remanded for further proceedings consistent with the judgment, with costs awarded to the plaintiffs.
### Law Settled in This Case
This judgment establishes that the registration of an identical trademark, even for dissimilar goods, can be opposed and canceled if the earlier mark enjoys well-known status and significant goodwill, as per Section 11 of the Trade Marks Act, 1999. It clarifies that the "proposed to be used" basis does not confer priority over a mark with established use and reputation, and the likelihood of confusion must consider the mark's overall recognition rather than solely the goods' nature. The decision reinforces the protection of distinctive trademarks against dilution, setting a precedent for future opposition proceedings.
### Case Details
Case Title: Dunlop International Limited vs Glorious Investment Limited And Anr.
Date of Order: 11 June, 2025
Case Number: IPDTMA/14/2024 to IPDTMA/21/2024
Neutral Citation: 2025:CalHC:OS:4567
Name of Court: High Court at Calcutta, Original Side (Intellectual Property Rights Division)
Name of Judge: Ravi Krishan Kapur
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Here are various suitable titles for this article for publication in a Law Journal:
1. Protecting Well-Known Trademarks: The Dunlop Case and Its Implications
2. Trademark Dilution and Dissimilar Goods: Insights from Dunlop v. Glorious Investment
3. Prior Use vs. Proposed Use: The Calcutta High Court’s Ruling on "Dunlop"
4. Likelihood of Confusion in Trademark Law: Analyzing the Dunlop Dispute
5. Goodwill and Trademark Opposition: Lessons from Dunlop International v. Glorious Investment
6. Section 11 of the Trade Marks Act: Judicial Interpretation in the Dunlop Case
7. Balancing Trademark Rights: The Calcutta High Court’s Approach to Identical Marks
8. Trademark Reputation Beyond Goods: The Dunlop Judgment Explored
