Prior Trademark user prevail over later Trademark registration
Case Title: Shrinath Travel Agency Private Limited Vs. Ajay Kumar Sharma & Anr.
Date of Order: 17 February 2025
Case Number: R/Rectification Application No. 25 of 2023
Neutral Citation: C/RA/25/2023
Court: High Court of Gujarat at Ahmedabad
Judge: Hon’ble Mrs. Justice Mauna M. Bhatt
Brief Facts of the Case
The petitioner, Shrinath Travel Agency Private Limited, filed a rectification application seeking to cancel the trademark registration of respondent no.1, Ajay Kumar Sharma, on the grounds of deceptive similarity to its own registered mark. The petitioner has been using the trademark "Shrinath" since 1978 in the travel and transport industry and holds multiple registrations incorporating the word "Shrinath."
Despite the petitioner’s long-standing use, it was discovered that respondent no.1 had obtained registration of a similar mark in 2021 and had been using it since 2014. The petitioner argued that the respondent’s mark was phonetically, visually, and conceptually identical to its own and that its continued existence on the register would mislead consumers. The petitioner also cited a prior Delhi High Court judgment dated 6 November 2023, which granted an injunction against the respondent’s use of the mark.
The respondent contended that it had been using the trademark since 2014 and had complied with all procedural requirements for registration. It argued that the petitioner had not opposed the registration when it was advertised and that the rectification application was filed belatedly.
Brief Issue
The primary issue before the court was whether the trademark registered by respondent no.1 should be rectified and removed from the register on the grounds of prior use and deceptive similarity with the petitioner’s mark.
Reasoning of the Court
The court observed that the petitioner was the prior user and registered proprietor of the trademark "Shrinath" since 1978. The Delhi High Court had already recognized the deceptive similarity between "Shrinath" and "Shreenath," ruling that even minor differences in spelling did not eliminate the likelihood of confusion.
It was noted that respondent no.1 had failed to appear before the Delhi High Court and had disregarded the injunction order. The Gujarat High Court emphasized that the continued registration of respondent no.1’s mark would mislead consumers and harm the petitioner’s established goodwill.
The court rejected the respondent’s argument that the rectification application was delayed, holding that trademark rights are based on priority of use, not just registration. It further clarified that the failure to oppose the mark at the advertisement stage did not prevent the petitioner from seeking rectification under Section 57 of the Trade Marks Act, 1999.
Decision of the Court
The court allowed the rectification application and directed the Registrar of Trade Marks to strike off and delete the registration of the respondent’s mark. It held that the respondent’s mark was deceptively similar to the petitioner’s prior registered mark and that its continued existence would be against public interest.
Law Points Settled
The case reaffirmed that prior user rights prevail over later registration, emphasizing that a trademark proprietor who has been using the mark for a long period can seek rectification of a deceptively similar later-registered mark. The court also held that deceptive similarity includes phonetic and visual resemblance, making it clear that even slight variations in spelling, such as "Shrinath" vs. "Shreenath," do not prevent a finding of infringement if the marks create consumer confusion.
It was further held that rectification is not barred by delay, as failure to oppose a trademark at the advertisement stage does not preclude rectification under Section 57 of the Trade Marks Act, 1999. The court emphasized that non-appearance and violation of injunctions can strengthen rectification claims, as a party’s failure to defend its case in prior injunction proceedings may weaken its position in subsequent rectification applications.
The court also made it clear that consumer confusion is sufficient to order cancellation, as the existence of two similar marks in the same industry is likely to mislead the public, justifying removal of the impugned mark.
This decision reaffirms the importance of protecting prior trademark users from deceptive later registrations and strengthens the doctrine that mere registration does not confer superior rights over a longstanding user.
