Effect of Well Known Trademark Declaration in Trademark Cancellation Proceeding
Introduction:The case concerns a rectification petition filed by RPG Enterprises Limited seeking cancellation of the trademark registration granted to RPG Industrial Products Pvt. Ltd. for the mark “RPG” under Class 23. The petitioner alleged that the impugned registration violates the provisions of the Trade Marks Act, 1999, as it misappropriates the petitioner’s well-established trademark, “RPG.”
Background:The petitioner, RPG Enterprises Limited, is a well-known conglomerate with diverse business interests, including infrastructure, IT, pharmaceuticals, and e-commerce. The trademark "RPG," derived from the initials of the founder, Shri R.P. Goenka, has been in use since 1979 and has gained immense goodwill and recognition globally.The respondent, RPG Industrial Products Pvt. Ltd., registered the trademark "RPG" in Class 23 for polyester staple fiber. The petitioner challenged this registration, alleging that it constitutes passing off and trademark dilution.Petitioner’s Trademark Usage: The petitioner adopted the “RPG” mark in 1979. It owns multiple trademark registrations, including Registration No. 850255 (Class 12) and 3930988 (Class 25). The petitioner’s mark has been declared well-known by courts, including the Bombay High Court in RPG Enterprises Limited v. Riju Ghoshal & Anr., 2022 SCC OnLine Bom 626.
Respondent’s Registration and Usage:The respondent registered “RPG” under Registration No. 2778255 in Class 23 on July 22, 2017. The respondent claims use since 2011 and states that “RPG” represents the initials of its founder, Shri Rajendra Prasad Gupta.
Issues Involved:Whether the petitioner has exclusive rights over the “RPG” trademark across all classes of goods and services. Whether the respondent’s adoption and registration of the “RPG” mark were made in good faith. Whether the respondent’s use of the “RPG” mark creates a likelihood of confusion and dilution of the petitioner’s trademark. Whether the registration is liable to be rectified under Sections 47 and 57 of the Trade Marks Act, 1999.
Petitioner’s Submissions:The impugned registration violates Sections 11(1), 11(2), and 11(3) of the Trade Marks Act as it creates confusion and dilutes the distinctive character of the petitioner’s mark.The respondent’s claim of use since 2011 is unsupported by credible evidence.The respondent acted in bad faith by adopting the identical mark “RPG.”The petitioner’s mark is well-known and entitled to protection even for dissimilar goods.
Respondent’s Submissions:The petitioner is not an aggrieved party under Section 57 of the Trade Marks Act.The marks are distinct due to differences in style, color, and class of goods.The respondent adopted “RPG” honestly, representing the founder’s initials.No evidence of confusion or deception has been presented.
Reasoning and Analysis by the Court
Dominance of the Mark:The court held that the dominant feature of the respondent’s mark is “RPG,” which is identical to the petitioner’s well-known trademark.Well-Known Status:The court recognized the petitioner’s mark as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, citing its long-standing use, reputation, and prior judicial recognition.Similarity of Goods:Although the respondent dealt with polyester fiber (Class 23) and the petitioner with clothing (Class 25), the court noted that the goods are allied and cognate, increasing the likelihood of confusion.Bad Faith Adoption:The court found the respondent’s adoption dishonest, as the petitioner’s mark was widely recognized before the respondent’s registration.
Legal Precedents:The court relied on several precedents, including M/s Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., to emphasize that bad faith adoption vitiates trademark rights.
Decision:The court allowed the petition and directed the cancellation of the trademark registration (No. 2778255) in favor of RPG Industrial Products Pvt. Ltd. The Registrar of Trademarks was instructed to remove the impugned mark from the register and issue a notification to this effect.
Conclusion:This case underscores the importance of good faith in adopting trademarks and the robust protection afforded to well-known marks under Indian law. The decision reaffirms that bad faith adoption cannot be legitimized by subsequent use and that courts will prevent misuse of established trademarks to protect consumer interests and brand equity.
Case Title: RPG Enterprises Limited v. RPG Industrial Products Pvt. Ltd.
Date of Order: January 8, 2025
Case Number: C.O. (COMM.IPD-TM) 203/2022
Neutral Citation: 2025:DHC:38
Court: High Court of Delhi, New Delhi
Judge: Hon'ble Ms. Justice Mini Pushkarna
Advocate Ajay Amitabh Suman
IP Adjutor
[Patent and Trademark Attorney]
High Court of Delhi
Email: ajayamitabhsuman@gmail.com
Phone: 9990389539
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