GM Modular Pvt. Ltd., a leading manufacturer of electrical goods, switches, and allied products since adopting the 'GM' mark in 1999, with extensive registrations across multiple classes, significant sales turnover reaching ₹1372.49 crores in FY 2020-21, and copyright registration in its stylized 'GM' artistic work, discovered in August 2024 the registered mark 'GMW' (Application No. 1978669 in Class 11) in the name of Respondent No. 1 (trading as Grand Metal Works) for electric fans, blowers, heaters and parts, claiming user from 2007 and registered in 2010.
Petitioner filed rectification petition under Section 57 of the Trade Marks Act, 1999 seeking removal of the impugned mark on grounds of prior use, deceptive similarity, and dishonest adoption; notice was issued on 11.09.2024,.
Respondent No. 1 was served but failed to appear despite multiple opportunities including through trade mark agent, leading to ex-parte proceedings on 13.08.2025, with final arguments on 26.11.2025.
Court held that Petitioner's prior adoption and continuous use since 1999, coupled with substantial goodwill evidenced by sales figures and registrations, prevails over Respondent No. 1's later claimed user from 2007 and subsequent registration; impugned mark 'GMW' is deceptively similar to Petitioner's 'GM' for identical/similar goods, adoption appears dishonest and intended to ride on Petitioner's reputation, and uncontroverted averments deemed admitted due to non-appearance, warranting rectification to protect the sanctity of the Register.
Petition allowed, impugned mark ordered to be removed from the Register, with directions to the Registry for compliance.
Law Point:
Prior use and goodwill of a trade mark override the rights of a subsequent registered proprietor, even where the latter claims earlier user but fails to contest the petition: Para 9.
Continuous, uninterrupted, and substantial use since 1999, supported by registrations and massive sales turnover, establishes prior proprietary rights and association of the mark with the petitioner in the market: Paras 7, 8, 10.
Adoption of a deceptively similar mark ('GMW') for identical/similar goods by a subsequent user constitutes dishonest conduct aimed at riding on the prior user's goodwill, justifying removal of the wrongly remaining entry under Section 57: Paras 8, 11, 12.
Case Title: GM Modular Pvt. Ltd. Vs Mumtaz Ahmed:17.01.2026: C.O. (COMM.IPD-TM) 176/2024: 2026:DHC:408: 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 Del
