Brief Facts
Punjab FC Private Limited, the petitioner, is a registered football club that has been using the trademarks "PUNJAB FC," "PUNJAB FOOTBALL CLUB," and "PFC" since 2017. It claimed to be the prior adopter and honest user of these trademarks. The respondent, Posshusa Apparels India Private Limited, obtained a registration for the mark "PFC" under Class 18, covering leather goods and related products, on a "proposed to be used" basis. The petitioner sought rectification and removal of the respondent’s trademark on the grounds of prior use and potential consumer confusion.
Issues
The primary issue before the court was whether the respondent’s registration of the mark "PFC" in Class 18 was legally valid or if it should be rectified and removed due to deceptive similarity with the petitioner’s pre-existing trademarks in the football industry.
Submissions of Parties
The petitioner argued that it had established a strong reputation under the "PFC" mark, which was widely recognized in the sports industry. It contended that the respondent’s adoption of the "PFC" mark was dishonest and intended to ride upon the goodwill of the petitioner. Additionally, the petitioner presented evidence that the respondent had not been using the mark in commerce.
The respondent did not file a reply or make an appearance, despite being served. The Registrar of Trademarks, named as Respondent No. 2, was represented in court.
Reasoning and Analysis of Judge
The court noted that the petitioner had been actively using the "PFC" mark in connection with its football club and had a pending registration under Class 18. The respondent, on the other hand, had only applied for the trademark on a "proposed to be used" basis. The court emphasized the deceptive similarity between the marks, both phonetically and visually, and highlighted that the respondent’s mark, including its logo, was likely to mislead consumers into believing an association with the petitioner’s football club.
Relying on precedents related to trademark infringement and passing off, the court held that the respondent had dishonestly adopted the mark and that continued registration would lead to confusion and dilution of the petitioner’s brand identity. Since no evidence of actual use of the mark by the respondent was presented, the court found that the trademark registration was not justified.
Decision of Judge
The court ruled in favor of the petitioner, allowing the rectification petition and ordering the cancellation of the respondent’s trademark registration for "PFC" under Class 18. The Registrar of Trademarks was directed to update its records accordingly.
