Introduction: Delhi High Court's judgment in GM Modular Pvt. Ltd. versus Mumtaz Ahmed and Another exemplifies the judiciary's commitment to upholding the rights of prior users and maintainers of goodwill in trademark disputes, particularly when subsequent registrations appear to exploit established brands without justification.
This case revolves around a rectification petition under Section 57 of the Trade Marks Act, 1999, where the petitioner sought the cancellation or removal of the respondent's trademark 'GMW' in Class 11, arguing it was deceptively similar to their own 'GM' marks used since 1999 in the electrical goods sector. The court, presiding over an ex-parte proceeding due to the respondent's non-appearance, emphasized the overriding principle that prior adoption and continuous use, backed by substantial goodwill evidenced through sales and registrations, prevail over later registrations that could lead to confusion or passing off.
By directing the removal of the impugned mark, the judgment reinforces the sanctity of the trademark register, preventing entries that undermine bona fide proprietors' rights and highlighting the importance of honest adoption in competitive industries like electrical appliances. This decision not only builds on precedents but also serves as a cautionary tale for entities attempting to capitalize on similar marks in allied goods, underscoring the balance between registration benefits and common law protections in Indian trademark law.
Factual Background: The petitioner, GM Modular Pvt. Ltd., is a prominent player in the manufacturing and trading of a diverse array of electrical goods, including switches, accessories, appliances, electronic components, and related services, collectively referred to as the petitioner's goods and services. They adopted the trademark 'GM' in 1999 with bona fide intent and have since used it honestly, continuously, commercially, openly, exclusively, and uninterruptedly as the proprietor thereof, building substantial trade value, goodwill, and reputation.
This mark has been incorporated into various forms such as 'GM INDIA' and device marks, extensively traded across major parts of India. To protect their interests, the petitioner secured multiple registrations across classes, including Class 6 , 7 for 'GM INDIA' and 'GM' in Class 9, 11 etc .Additionally, the artistic work in the 'GM' mark is an original creation owned by the petitioner under the Copyright Act, 1957, registered as No. A-64280/2003, and actively used in trade. Significant investments in promotion and marketing have made 'GM' synonymous with the petitioner's identity, generating exclusive goodwill as demonstrated by escalating sales figures. In contrast, Respondent No. 1, operating as Grand Metal Works, engages in selling electric fans, blowers, heaters, and accessories. During a routine online survey of the Trade Marks Registry in the third week of August 2024, the petitioner's attorney discovered the impugned trademark 'GMW' registered under No. 1978669 in Class 11 on 11.06.2010, claiming use since 01.04.2007 for identical or similar goods. The petitioner alleged dishonest adoption by the respondent, citing deceptive similarity in phonetic, visual, structural, conceptual, and essential features, with goods being allied and cognate, potentially causing confusion. Reference was made to a prior Delhi High Court decision in GM Modular Pvt. Ltd. v. Mayur Electromeck Pvt. Ltd. (Neutral Citation: 2024:DHC:2411), where a similar 'GMW' mark in Class 9 was ordered removed, strengthening the case for cancellation here as the impugned mark wrongly remained on the register.
Procedural Background:The rectification petition was filed under Section 57 of the Trade Marks Act, 1999, seeking cancellation or removal of the impugned 'GMW' mark. Notice was issued on 11.09.2024, granting respondents four weeks to file replies. On 06.12.2024, the court noted the petitioner's affidavit of service indicating Respondent No. 1 had been served, yet no appearance was made. Subsequently, on 16.04.2025, service was directed through the trademark agent who filed the impugned application. Despite this, Respondent No. 1 failed to appear on 13.08.2025, leading to an ex-parte order against them. The petitioner's counsel presented submissions on 26.11.2025, after which judgment was reserved, culminating in the final decision on 17.01.2026. Respondent No. 2, the Registrar of Trade Marks, appeared through counsel and agreed to comply with court directions as a formal party.
Reasoning and Decision of Court: The court's analysis commenced by noting the absence of any reply or appearance from Respondent No. 1, deeming the petition's averments uncontroverted and admitted. It scrutinized the evidence establishing the petitioner as the prior adopter and user of the 'GM' marks since 1999, coined honestly and integrated into their business for electrical goods and services, supported by registrations and invoices predating the respondent's claimed use from 2007.
The substantial goodwill was affirmed through impressive sales data, reaching over ₹1372 crores in FY 2020-21, indicating strong market association with the petitioner. The impugned 'GMW' mark, registered in 2010 for similar Class 11 goods like fans and heaters, was found to be an attempt to freeride on this goodwill without explanation, violating principles of honest adoption.
Relying on settled law that prior users' rights supersede subsequent registrations, even if registered, the court highlighted the petitioner's categorical proof of earlier use via documents, contrasting with the respondent's later claim. Continuous, uninterrupted use further solidified the 'GM' marks' association exclusively with the petitioner. The marks were deemed identical or deceptively similar for identical goods, undermining the register's integrity and necessitating protection for bona fide owners. Citing the prior rectification in a related case for 'GMW' in Class 9, the court found the entry wrongful, warranting removal under Section 57 to prevent confusion and maintain purity. In conclusion, considering prior use, mark identity, goods similarity, confusion likelihood, and lack of bona fide intent by the respondent, the petition was allowed, directing Respondent No. 2 to remove 'GMW' under No. 1978669 from the register, disposing of the petition and application, with a copy sent to the registry for compliance.
Point of Law Settled in the Case: This judgment reaffirms that in trademark rectification proceedings under Section 57 of the Trade Marks Act, 1999, the rights of a prior adopter and continuous user, substantiated by registrations, invoices, and escalating sales figures demonstrating goodwill, will prevail over a subsequent registered mark that is deceptively similar and adopted without bona fide intent, even in ex-parte scenarios where averments remain uncontroverted. It underscores that prior use overrides registration, as established in precedents, emphasizing that dishonest adoption for identical or allied goods in sectors like electrical appliances warrants cancellation to preserve the register's sanctity and prevent confusion or passing off. Furthermore, it highlights the evidential weight of financial data and prior judicial decisions in related marks to prove freeriding on reputation, ensuring protection for established brands against later entrants lacking justification.
Title: GM Modular Pvt. Ltd. vs Mumtaz Ahmed & Anr. Date of Order: 17.01.2026 Case Number: C.O. (COMM.IPD-TM) 176/2024 Neutral Citation: 2026:DHC:408 Name of Court: High Court of Delhi at New Delhi Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia
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
