Introduction:
In the dynamic realm of intellectual property law, the case of Falcon Licensing Limited v. PRI Enterprises Private Limited stands as a compelling testament to the judiciary’s commitment to preserving the integrity of trademark rights. This landmark case, adjudicated by the High Court of Delhi, addresses critical issues of trademark squatting, non-use, and the protection of prior user rights in the face of deceptive registration practices. Centered around the trademark "BOLDIFY," the dispute encapsulates the tension between a foreign entity’s established brand identity and a domestic entity’s alleged mala fide registration. The judgment not only reinforces the sanctity of the trademark register but also sets a robust precedent for combating opportunistic trademark practices, making it a pivotal study for intellectual property practitioners and businesses alike.
Detailed Factual Background:
Falcon Licensing Limited, a New Zealand-based company, emerged as the petitioner in this case, seeking the cancellation of the trademark "BOLDIFY," registered by PRI Enterprises Private Limited (Respondent No. 1) under application no. 3867168 in Class 3. The petitioner’s claim rested on its long-standing association with the "BOLDIFY" mark, which was first adopted in 2016 by its predecessor-in-interest for hair care products. The mark was used continuously and exclusively, gaining significant global recognition through sales on platforms like www.amazon.com since August 2016 and via the domain www.getboldify.com. The predecessor-in-interest secured trademark registrations in the United States as early as March 27, 2016, for hair shampoos, conditioners, and sprays, with further registrations in countries like New Zealand, the United Kingdom, and the European Union.
In 2017, the petitioner was incorporated to manage the intellectual property assets of the "BOLDIFY" brand. Boldify Inc., a U.S.-based subsidiary, was established in 2018 to operate the brand, and by 2020, it had filed for trademark registration in India under Class 35, which was granted in 2022. An Assignment Agreement dated January 25, 2021, transferred all rights in the "BOLDIFY" trademarks to the petitioner, solidifying its global ownership. The petitioner’s business flourished, with annual sales escalating from USD 48,662 in 2016-17 to a projected USD 17,000,000 in 2023-24, supported by substantial advertising investments.
In contrast, PRI Enterprises, incorporated in December 2017, operated as a micro-enterprise dealing in rubber and plastic products, vacuum storage bags, and household articles. In June 2018, PRI Enterprises allegedly adopted the "BOLDIFY" mark for cosmetics and beauty products, securing registration in Class 3 on December 23, 2018, on a "proposed to be used" basis. However, the petitioner alleged that PRI Enterprises had never used the mark for the registered goods. A critical piece of evidence was the email communication from May 2018, where PRI Enterprises, using the email pri.enterprises64@gmail.com, expressed interest in distributing the petitioner’s "BOLDIFY" products in India. This interaction, followed by PRI Enterprises’ registration of the identical mark, formed the crux of the petitioner’s claim of dishonest adoption and trademark squatting.
Detailed Procedural Background:
The dispute crystallized when the petitioner applied for registration of the "BOLDIFY" word and label marks in Class 3 on March 20, 2023. The Trade Marks Registry objected, citing PRI Enterprises’ existing registration in the same class. Falcon Licensing filed a petition under Section 47 and Section 57 of the Trade Marks Act, 1999, before the Delhi High Court on October 26, 2023, seeking cancellation of PRI Enterprises’ "BOLDIFY" registration.
Issues Involved in the Case:
The case presented several pivotal issues for adjudication: Whether PRI Enterprises’ registration of the "BOLDIFY" mark was dishonest and constituted trademark squatting, given its prior knowledge of the petitioner’s brand? Whether PRI Enterprises had used the "BOLDIFY" mark for the goods under Class 3, and if not, whether the non-use warranted cancellation under Section 47 of the Trade Marks Act.
Detailed Submission of Parties:
The petitioner contended that PRI Enterprises, aware of the brand’s goodwill, dishonestly registered an identical mark in Class 3 for allied goods like cosmetics, which overlapped with the petitioner’s hair care products. The petitioner emphasized its prior use since 2016, supported by global registrations and substantial sales figures, asserting a strong trans-border reputation. It further argued that PRI Enterprises had never used the mark for Class 3 goods, rendering the registration vulnerable to cancellation under Section 47 for non-use. The petitioner also claimed to be a “person aggrieved,” as PRI Enterprises’ registration obstructed its own trademark application, causing legal and commercial prejudice.
PRI Enterprises countered that it independently adopted the "BOLDIFY" mark in June 2018 for its cosmetics and household goods business, which it later abandoned in 2020 to focus on sanitizers, PPE kits, and plastic products. It argued that the petition was premature, as the five-year non-use period under Section 47 had not elapsed by October 2023, when the petition was filed. PRI Enterprises denied the alleged email communications, though it admitted ownership of the email address pri.enterprises64@gmail.com, claiming no authorized person sent the inquiries. It further contended that the petitioner’s inaction from August 2020 to March 2023 implied acceptance of its registration. Finally, PRI Enterprises asserted that its goods were unrelated to the petitioner’s, negating any likelihood of confusion or prejudice.
Detailed Discussion on Judgments Cited by Parties: The court relied on several precedents to navigate the complex issues, each cited for its relevance to specific aspects of trademark law:
Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan and Another, 2023 SCC OnLine Del 4796: This case was pivotal in addressing non-use under Section 47. The court held that genuine use in the relevant class is essential, and unexplained non-use justifies removal of the mark. In the present case, PRI Enterprises’ failure to provide evidence of use for Class 3 goods aligned with this principle, supporting the petitioner’s claim for cancellation.
Kabushiki Kaisha Toshiba v. Tosiba Appliances Company and Others, 2008 SCC OnLine SC 960: The Supreme Court emphasized that a genuine intention to use a trademark is crucial, and registration without such intent amounts to trafficking, which the law seeks to prevent. The court applied this to PRI Enterprises’ “proposed to be used” registration, which lacked evidence of bona fide intent or actual use, reinforcing the case for cancellation.
BPI Sports LLC : Referenced for its discussion on trademark squatting, this precedent defined squatting as registering a third party’s mark to preempt the legitimate owner’s rights. The court found PRI Enterprises’ actions to be a textbook example of squatting, as its registration appeared designed to block the petitioner’s entry into the Indian market.
Kia Wang v. Registrar of Trademarks and Another, 2023 SCC OnLine Del 5844: This case clarified the scope of “person aggrieved” under Section 57, holding that a party whose legal rights are restrained by an impugned registration qualifies. The court applied this to recognize the petitioner’s locus standi, as PRI Enterprises’ mark hindered its registration efforts.
Khoday Distilleries Limited v. Scotch Whisky Association, (2008) 10 SCC 723: The Supreme Court underscored the public interest in maintaining the purity of the trademark register, advocating rectification to prevent deception. This principle guided the court’s decision to prioritize the petitioner’s prior rights over PRI Enterprises’ unused mark.
Hardie Trading Ltd. : Cited for its interpretation of “person aggrieved” under the 1958 Act, this precedent supported a liberal construction of locus standi for rectification petitions, particularly when public interest is at stake. The court adopted this approach to affirm the petitioner’s standing.
Powell’s Trade Mark, Re, (1894) 11 RPC 4 : [1894] A.C. 8 : 70 LT 1 (HL): This House of Lords decision emphasized that a “person aggrieved” includes those whose legal rights are limited by a mark’s presence on the register. The court used this to bolster the petitioner’s claim, as PRI Enterprises’ registration restricted its commercial activities.
Larsen & Toubro Limited v. M/S Lachmi Narain Trades and Ors., 2008 SCC OnLine Del 183: The Division Bench rejected the “field of activity” test, holding that confusion can arise even between dissimilar goods if a mark’s reputation is strong. This was critical in dismissing PRI Enterprises’ argument that its goods’ distinct nature negated prejudice to the petitioner.
Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bom 24: The Bombay High Court held that a well-known mark’s use on unrelated goods can cause confusion, as consumers may assume a connection. This supported the court’s finding that PRI Enterprises’ registration could dilute the petitioner’s brand.
Bata India Ltd. v. Pyare Lal & Co., AIR 1985 All 242: The Allahabad High Court ruled that a passing-off action lies even for dissimilar goods if a mark’s use creates a false impression of origin. This precedent reinforced the potential for consumer confusion in the present case.
Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Del 239: The Delhi High Court protected a famous mark (“Benz”) from use on unrelated goods (underwear), emphasizing the need to prevent dilution. This supported the petitioner’s claim of trans-border reputation.
Aktiebolaget Volvo & Ors. v. Vinod Kumar & Ors., 2011 SCC OnLine Del 1180: The court restrained the use of “VOLVO” for ice cream, despite its primary association with automobiles, citing confusion and dilution risks. This precedent underpinned the court’s rejection of PRI Enterprises’ claim that dissimilar goods negated prejudice.
McCarthy on Trademarks and Unfair Competition (Volume 3, 5th Edition): Though not a judicial precedent, this treatise was cited for its exposition on bona fide intent to use a trademark. It states that failure to provide documentary evidence of intent equates to a lack thereof, which the court applied to PRI Enterprises’ absence of usage proof.
Detailed Reasoning and Analysis of Judge:
On the issue of dishonest adoption, the court found compelling evidence in the May 2018 email exchanges, where PRI Enterprises used its verified email to inquire about distributing the petitioner’s “BOLDIFY” products. Despite PRI Enterprises’ denial of sending these emails, its admission of owning the email address, coupled with its failure to explain the communication’s origin, led the court to dismiss its defense as an afterthought. This established PRI Enterprises’ prior knowledge of the petitioner’s mark, rendering its subsequent registration mala fide.
Regarding non-use, the court noted that PRI Enterprises’ registration was on a “proposed to be used” basis, yet no evidence of actual use for Class 3 goods (cosmetics, soaps, etc.) was produced. Citing Section 47 and the Russell Corpn. case, the court held that unexplained non-use warrants cancellation, as PRI Enterprises failed to demonstrate any special circumstances or bona fide intent, per McCarthy’s treatise and the Toshiba case. The court further identified PRI Enterprises’ actions as trademark squatting, aligning with the BPI Sports precedent, as the registration appeared designed to preempt the petitioner’s rights in India.
On the petitioner’s status as a “person aggrieved,” the court applied the liberal interpretation from Kia Wang and Powell’s Trade Mark, finding that PRI Enterprises’ registration restrained the petitioner’s legal rights by blocking its Class 3 application. The court rejected PRI Enterprises’ argument of acquiescence, noting that the petitioner’s three-year delay did not imply acceptance, especially since PRI Enterprises had not used the mark commercially.
Addressing the argument that dissimilar goods negated prejudice, the court relied on Larsen & Toubro, Bata India, Daimler Benz, and Volvo to dismiss the outdated “field of activity” test. It held that the petitioner’s well-known mark, bolstered by global registrations and sales, faced a likelihood of confusion or dilution, even if PRI Enterprises’ goods differed. The court emphasized the public interest in maintaining a pure trademark register, as articulated in Khoday Distilleries, and concluded that PRI Enterprises’ unused mark was a “public mischief” warranting removal.
Final Decision
The Delhi High Court allowed the petition, directing the Trade Marks Registry to remove the “BOLDIFY” trademark, registered under application no. 3867168 in Class 3, from the Register of Trade Marks. The court ordered the Registry to send a copy of the judgment to the Trade Marks Registry for compliance, disposing of the petition on April 15, 2025.
Law Settled in This Case:
A trademark registered without bona fide use or intent, particularly on a “proposed to be used” basis, is vulnerable to cancellation under Section 47 if no evidence of use is shown.Trademark squatting, where a party registers a third party’s mark to block its legitimate owner, is impermissible and contravenes the Trade Marks Act’s objective of preventing trafficking.The “person aggrieved” criterion under Section 57 is interpreted liberally, encompassing parties whose legal or commercial rights are restrained by an impugned registration.Fourth, the “field of activity” test is obsolete; a well-known mark’s reputation can be protected against use on dissimilar goods if confusion or dilution is likely.Finally, the public interest in maintaining a pure trademark register overrides claims of acquiescence, especially when the registered mark remains unused.
Case Title: Falcon Licensing Limited Vs. PRI Enterprises Private Limited & Anr.
Case Number: C.O. (COMM.IPD-TM) 271/2023
Neutral Citation: 2025:DHC:2592
Date of Order: 15 April 2025
Court: High Court of Delhi
Judge: Hon’ble Ms. Justice Mini Pushkarna
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
