Introduction: In the dynamic realm of intellectual property law, trademarks serve as vital identifiers of a brand’s identity, fostering trust and recognition among consumers. The case of M/s. Modern Snacks Private Limited v. Kamran Ghani and Another, adjudicated by the High Court of Delhi, exemplifies the complexities surrounding trademark disputes, particularly when marks are phonetically similar and operate within the same market segment. This case revolves around the petitioner’s plea for rectification of the trademark register by cancelling the respondent’s mark ‘MARDEM’, alleging deceptive similarity with their well-established mark ‘MODERN’. The judgment, delivered on April 25, 2025, underscores the judiciary’s role in safeguarding trademark integrity and preventing consumer confusion, offering significant insights into the principles of deceptive similarity and prior use under the Trade Marks Act, 1999.
Detailed Factual Background:Modern Snacks Private Limited, incorporated on November 7, 2005, under the Companies Act, 1956, is engaged in manufacturing and marketing namkeens, snacks, confectionery, and related food items classified under Class 30 of the Trade Marks Act. The petitioner claims proprietorship of the trademark ‘MODERN’ (in both English and Hindi), originally adopted by its predecessor, M/s. Modern Namkeen Bhandar, in 1990. This mark was assigned to the petitioner via an Assignment Deed dated October 20, 2008, and has since become a core component of its trade name. The petitioner holds multiple trademark registrations for ‘MODERN’ in Class 30, including registration nos. 1745147 (effective from October 20, 2008), 2688680 (effective from February 28, 2014), 641088 (effective from September 23, 1994), and 1937328 (effective from March 17, 2010). Over the years, the petitioner has expanded the use of ‘MODERN’ into various derivative trademarks and established a robust market presence through extensive sales, advertising, and online platforms such as Amazon, IndiaMart, and its own domain names, www.modernnamkeen.com and www.modernnamkeen.theshopfloor.in. The petitioner also holds copyright registrations for the artistic works in its ‘MODERN NAMKEEN’ labels, reinforcing its intellectual property portfolio.
The first respondent, Kamran Ghani, operates as the sole proprietor of ‘MARDEM NAMKEEN’ and secured registration for the trademark ‘MARDEM’ (registration no. 3739205) in Class 30 on July 22, 2018. Both parties operate in the same geographical area and cater to similar markets, dealing in snacks and confectionery. Notably, the petitioner alleges that respondent no. 1 previously served as a vendor to the petitioner, implying familiarity with the ‘MODERN’ mark. The petitioner contends that ‘MARDEM’ is phonetically and deceptively similar to ‘MODERN’, likely to confuse consumers and dilute the petitioner’s goodwill. The second respondent, the Registrar of Trade Marks, is a formal party tasked with maintaining the trademark register.
Detailed Procedural Background: The petition, originally filed before the Intellectual Property Appellate Board (IPAB), sought rectification of the trademark register by cancelling the ‘MARDEM’ mark. Following the abolition of the IPAB under the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021, the case was transferred to the High Court of Delhi and registered as C.O. (COMM.IPD-TM) 76/2021. Notices were issued to both respondents, but service to respondent no. 1 proved challenging due to an incomplete address. On March 10, 2023, the court permitted the petitioner to serve respondent no. 1 through his authorized attorney at the Trade Marks Registry. On August 22, 2023, the attorney appeared, clarifying that his authority was limited to the registration process and that he lacked instructions to represent respondent no. 1 in the present proceedings or knowledge of his whereabouts. On November 13, 2024, the court deemed respondent no. 1 served under Rule 2(b) of the Delhi High Court Intellectual Property Rights Division Rules, 2022, and proceeded with the hearing. Respondent no. 1 did not appear or file a reply, leaving the petitioner’s claims uncontroverted. The Registrar of Trade Marks, through counsel, expressed willingness to comply with the court’s directions.
Issues Involved in the Case:The case hinges on several critical issues under the Trade Marks Act, 1999:Whether the respondent’s trademark ‘MARDEM’ is deceptively similar to the petitioner’s registered trademark ‘MODERN’, both operating in Class 30, and likely to cause confusion among consumers?Whether the petitioner, as the prior adopter and user of the ‘MODERN’ mark since 1990, holds superior rights over respondent no. 1, whose ‘MARDEM’ mark was registered in 2018? Whether the registration of ‘MARDEM’ constitutes a wrongful entry in the trademark register, warranting rectification under Section 57 of the Trade Marks Act?Whether respondent no. 1’s adoption of ‘MARDEM’ lacks bona fide intent and represents an attempt to capitalize on the petitioner’s goodwill?
Whether the petitioner’s extensive use and reputation establish ‘MODERN’ as a well-known trademark, entitling it to enhanced protection?
Detailed Submission of Parties:The petitioner, represented by Mr. Ajay Amitabh Suman and his team, presented a robust case for rectification. They argued that since adopting ‘MODERN’ in 1990, the petitioner has used the mark continuously, openly, and exclusively, building a strong reputation and goodwill in Class 30 goods. The mark forms an integral part of the petitioner’s trade name and is the dominant feature of its derivative trademarks. The petitioner supported its claims with evidence of multiple trademark registrations, sales figures from 1991-92 to 2017-18 (showing significant growth, e.g., ₹29.11 crores in 2017-18), invoices, e-commerce listings, and newspaper advertisements. Additionally, the petitioner holds copyright registrations for its ‘MODERN NAMKEEN’ labels and has registered domain names to bolster its online presence. The petitioner contended that ‘MODERN’ has acquired secondary significance and well-known status under Section 2(1)(zg) of the Trade Marks Act, making it exclusively associated with its goods.
The petitioner further argued that ‘MARDEM’ is phonetically and deceptively similar to ‘MODERN’, particularly in the Hindi-speaking region where both parties operate. The similarity in sound (‘N’ in MODERN vs. ‘M’ in MARDEM) and the identical class of goods increase the likelihood of consumer confusion. The petitioner highlighted respondent no. 1’s prior role as a vendor, suggesting bad faith in adopting a similar mark to exploit the petitioner’s goodwill. They asserted that respondent no. 1 has neither used ‘MARDEM’ nor demonstrated any bona fide intent to do so, rendering the registration invalid. Citing the need to maintain the purity of the trademark register, the petitioner sought cancellation of ‘MARDEM’ under Section 57.Respondent no. 1 did not appear or submit any counter-arguments, resulting in the petitioner’s pleadings being deemed admitted. The Registrar of Trade Marks, represented by Mr. Rohan Jaitley, adopted a neutral stance, agreeing to abide by the court’s orders.
Detailed Discussion on Judgments Cited by Parties and Their Context:The court relied on several landmark judgments to assess deceptive similarity and prior use, each cited by the petitioner to bolster its case:
Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13:This Supreme Court case addressed the criteria for determining deceptive similarity under the Trade Marks Act. The court emphasized that the test is whether the mark is “likely to deceive or cause confusion,” requiring a case-specific analysis without rigid criteria. It advocated judging marks by their look and sound, considering the goods, customer profile, and surrounding circumstances. The court noted that deception arises if a mark resembles another on the register in a way likely to confuse consumers in the normal course of trade. In the present case, this precedent guided the court’s phonetic comparison of ‘MODERN’ and ‘MARDEM’, highlighting their similarity in sound and the potential for confusion among average consumers in a Hindi-speaking market.
Treasure Studio INC and Another v. Mohit Khungar and Another, 2024 SCC OnLine Del 6558:A recent Delhi High Court decision, this case clarified that infringement does not require an exact replica of a registered mark. Substantial resemblance, despite minor variations, suffices if the impugned mark is likely to deceive. The court held that minor differences are immaterial if the overall similarity is significant. In the present case, this ruling supported the petitioner’s argument that the phonetic similarity between ‘MODERN’ and ‘MARDEM’ outweighs any minor differences, as the marks are substantially similar and likely to confuse consumers purchasing snacks and namkeens.
Khoday Distilleries Limited v. Scotch Whiskey Association and Others, (2008) 10 SCC 723:This Supreme Court judgment addressed confusion among different classes of consumers. It held that the likelihood of confusion varies based on the customer’s education, economic status, and familiarity with the product. For goods like snacks, purchased by diverse groups including villagers and urban consumers, a prudent person’s perspective applies. The court emphasized considering the mark’s look, sound, goods, and customer profile. In the present case, this precedent underscored the likelihood of confusion among average consumers in the same geographical and linguistic region, given the phonetic similarity and identical goods.
Ruston & Hornsby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727:The Supreme Court in this case clarified that the test for likelihood of confusion is similar in infringement and passing-off actions. Infringement occurs not only through exact imitation but also through the use of a mark so closely resembling the registered mark as to deceive. The court noted that statutory protection is absolute once a mark is shown to offend. This precedent reinforced the petitioner’s claim that ‘MARDEM’ infringes ‘MODERN’ by resembling it closely enough to deceive consumers, justifying cancellation.
Detailed Reasoning and Analysis of Judge:Justice Mini Pushkarna’s judgment meticulously analyzed the evidence and legal principles to grant the rectification petition. The court noted respondent no. 1’s absence and lack of reply, deeming the petitioner’s pleadings admitted. The petitioner’s extensive documentation, including trademark registrations, sales figures (e.g., ₹29.11 crores in 2017-18), e-commerce listings, and advertisements, established its prior adoption of ‘MODERN’ since 1990 and continuous use thereafter. The court recognized the petitioner’s multiple registrations in Class 30 and its copyright registrations, reinforcing its proprietary rights.
The phonetic comparison of ‘MODERN’ and ‘MARDEM’ was central to the court’s analysis. The judge observed that the marks share a similar rhythm, with ‘MODERN’ ending in ‘N’ and ‘MARDEM’ in ‘M’, creating a deceptive similarity in sound. This was particularly significant in a Hindi-speaking region where both parties operate, as consumers might not distinguish the marks. The court applied the Amritdhara Pharmacy test, assessing the marks’ look, sound, goods, and consumer profile, concluding that ‘MARDEM’ is likely to deceive or confuse average consumers purchasing snacks and namkeens.
The court also considered respondent no. 1’s prior role as a vendor, inferring knowledge of the ‘MODERN’ mark and potential bad faith in adopting ‘MARDEM’. The lack of evidence showing respondent no. 1’s use or intent to use ‘MARDEM’ further weakened its claim. Citing Treasure Studio INC, the court held that minor differences between the marks were immaterial given their substantial resemblance. The Khoday Distilleries judgment supported the finding that confusion was likely among diverse consumers, while Ruston & Hornsby affirmed that ‘MARDEM’ infringed ‘MODERN’ by resembling it closely enough to deceive.
Final Decision:The High Court of Delhi allowed the rectification petition on April 25, 2025, cancelling the trademark ‘MARDEM’ (registration no. 3739205) in Class 30. The court directed the Trade Marks Registry to rectify the register and issue a notification accordingly. The petitioner’s claims were upheld, affirming its prior rights over ‘MODERN’ and the deceptive similarity of ‘MARDEM’.
Law Settled in This Case:This case reinforces several key principles under the Trade Marks Act, 1999:
Deceptive Similarity: Phonetic similarity between marks, especially in the same class and market, is sufficient to establish deceptive similarity if it is likely to confuse average consumers, as per the Amritdhara Pharmacy test.
Prior Use: A prior adopter and user of a mark holds superior rights over a later registrant, particularly when the latter’s mark is deceptively similar and lacks bona fide intent.
Rectification of Register: Section 57 empowers courts to cancel wrongful trademark registrations to maintain the register’s purity, especially when the mark infringes a prior registered mark.
Consumer Confusion: The likelihood of confusion is assessed based on the marks’ look, sound, goods, and consumer profile, with special consideration for regional and linguistic contexts.
Bad Faith: Adoption of a similar mark by a party with prior knowledge of the original mark, such as a former vendor, may indicate bad faith, justifying cancellation.
Case Title: Modern Snacks Private Limited Vs. Kamran Ghani
Date of Order: April 25, 2025
Case No.: C.O. (COMM.IPD-TM) 76/2021
Neutral Citation: 2025:DHC:2905
Name of Court: High Court of Delhi Name of 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
