Confusion is assessed from the perspective of an average consumer with imperfect recollection
Introduction
In a clear victory for brand owners protecting their established trademarks, the Delhi High Court on 8 April 2026 ordered the cancellation and removal of two trademark registrations for the mark “GOLDI” (label and logo) belonging to Jai Shiv Oil Industries and its assignee. The court found the marks deceptively similar to the petitioner’s long-standing and well-known “GOLDIEE” trademark used for spices, edible oils, and related food products since 1980.
Justice Tushar Rao Gedela held that the respondent’s adoption of “GOLDI” was likely to cause confusion among consumers due to phonetic, visual, and structural similarities, especially in the Hindi script where the dominant elements appeared nearly identical. The petitioner’s prior adoption, use, and registration, combined with substantial goodwill and sales, outweighed the respondent’s later registrations. The respondents failed to appear or file any reply, leaving the petitioner’s evidence unrebutted. This judgment underscores that prior users and registrants with strong reputation can successfully seek rectification of confusingly similar marks even in related goods classes, protecting consumers from deception and safeguarding established brands.
Factual Background
Shubham Goldiee Masale Pvt. Ltd., a Kanpur-based company engaged in manufacturing and marketing spices, edible oils, and allied food products, claimed rights in the trademark “GOLDIEE” and its formative variants. The company traced its adoption of the mark through predecessors to 1980 and had been using it continuously for decades. “GOLDIEE” also formed part of the company’s trade name.
The petitioner held multiple registrations for “GOLDIEE” labels and word marks in Classes 3, 29, and 30, with the oldest dating back to 1 October 1980. It built significant goodwill through high-quality products, extensive advertising in print and visual media, distributor networks across India, and certifications like ISO 9001:2000 and HACCP. Sales figures grew impressively — from Rs. 43 crores in 2000-01 to nearly Rs. 297 crores by 2012-13 — supported by promotional campaigns, including sampling at major marathons and government awards for excellence.
The petitioner discovered the respondent’s use of “GOLDI” (label) only in late August 2014. Jai Shiv Oil Industries had obtained registration No. 945240 in Class 29 for mustard oil (edible oil) with a claimed user date of 1 January 2000, granted on 16 September 2005. It also secured registration No. 2023762 in Class 31 for foodstuffs (oil cake) for animals, granted on 16 March 2012, again claiming user from 1 January 2000. The petitioner alleged dishonest adoption, deceptive similarity, and fraud on the Trade Marks Registry, asserting that the marks were phonetically, visually, and conceptually confusing, especially since both parties dealt in edible oils and related foodstuffs available through similar trade channels.
Procedural Background
The rectification petitions under Sections 47, 57, and 125 of the Trade Marks Act, 1999, were originally filed before the Intellectual Property Appellate Board (IPAB). Following the abolition of the IPAB, they were transferred to the Delhi High Court as C.O.(COMM.IPD-TM) 392/2021 and 393/2021. Notices were issued, and the matter progressed through several hearings. The petitioner filed applications to implead the assignee (respondent no.3) after discovering an assignment deed dated 17 September 2015.
The respondents, including the original registrant and assignee, were served but chose not to file replies or appear despite opportunities. Their right to file written statements was closed, and they were proceeded ex parte. The petitioner placed on record extensive evidence of its prior use, registrations, sales turnover, advertisements, and invoices. No counter-evidence was produced by the respondents regarding their adoption, use, or bona fides.
Reasoning
The High Court began by noting the procedural history and the ex parte nature of the proceedings. It observed that while averments in unrebutted petitions are generally deemed admitted, it would still examine the merits independently. The court compared the petitioner’s long history of use and registration with the respondent’s later applications.
On comparison, the marks “GOLDIEE” and “GOLDI” were found phonetically identical in pronunciation, visually and structurally nearly the same (differing only by the extra “EE”), and conceptually indistinguishable. In Hindi script, the dominant word portions appeared even more similar, making confusion likely. The court emphasized that the word “GOLDI”/“GOLDIEE” formed the prominent and dominant element of both labels.
The goods were similar or allied: the petitioner’s registrations covered spices and foodstuffs in Classes 29 and 30, while the respondent’s covered edible oil (Class 29) and oil cake for animals (Class 31). Trade channels, retail outlets, and consumer bases overlapped significantly, increasing the likelihood of confusion. An average consumer with imperfect recollection could easily mistake the respondent’s products for those of the petitioner or associate them with it.
The petitioner’s evidence of substantial sales growth, extensive advertising, and reputation since well before the respondent’s claimed user date established prior rights and goodwill. The respondent provided no explanation for adopting “GOLDI” or evidence of bona fide use, raising suspicions of dishonest adoption aimed at riding on the petitioner’s reputation.
The court applied principles from prior judgments to hold that coverage of a trademark is determined by the registration certificate, not limited to actual proven use in every listed good. It also considered allied/cognate goods based on trade connection, intended purpose, complementary nature, and common retail channels. Even for Class 31 goods, confusion or association was likely.
Provisions under Sections 9 (distinctiveness), 11 (deceptive similarity), and 47 (non-use or lack of bona fide intention) further supported cancellation. The absence of rebuttal strengthened the case for removal.
Key Judgments Discussed with Citations and Context
The court relied on established precedents to explain deceptive similarity and allied goods in simple terms understandable to non-lawyers:
- Fybros Electric (P) Ltd. v. Vasu Dev Gupta Trading as Vasu Electronics, 2023 SCC OnLine Del 3179: This Delhi High Court decision clarified that trademark coverage is based on the goods listed in the registration certificate, not merely on proven actual use. The court used this to hold that the petitioner’s registrations in Classes 29 and 30 protected against similar marks in related goods, even if specific use evidence varied slightly.
- FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd., 2017 SCC OnLine Del 6381: Justice Vipin Sanghi’s judgment explained “allied or cognate” goods/services as those related by nature, trade connection, complementary use, or targeting similar customers (e.g., pharmaceuticals and medical appointment services). The court applied this principle to find overlap between edible oils/foodstuffs and oil cake for animals sold through common retail channels, increasing confusion risk.
These cases were discussed in the context of assessing likelihood of confusion holistically — considering mark similarity, goods relatedness, trade channels, and consumer perception — rather than isolated factors.
Final Decision of the Court
The Delhi High Court allowed both rectification petitions and directed the cancellation and removal of the impugned trademark registrations “GOLDI” (label) under No. 945240 in Class 29 and No. 2023762 in Class 31 from the Register of Trade Marks. The Registrar of Trade Marks was required to comply within six weeks. No costs were awarded. The petitions, along with pending applications, stood disposed of.
Point of Law Settled in the Case
Prior adoption, continuous use, and registration of a mark create strong rights that can override later registrations of deceptively similar marks, especially when the earlier mark has built substantial goodwill and reputation. Even small differences (like removing “EE” from “GOLDIEE” to make “GOLDI”) do not prevent a finding of deceptive similarity if the overall impression, pronunciation, and dominant elements remain confusingly alike.
When comparing marks, courts look at the whole mark but give weight to the prominent or dominant features. Confusion is assessed from the perspective of an average consumer with imperfect recollection, not side-by-side comparison by experts. Goods need not be identical; if they are allied or cognate — sharing trade channels, retail outlets, or consumer bases — the risk of confusion or association increases.
In rectification proceedings, unrebutted evidence of prior rights, sales, advertising, and reputation carries significant weight. Registrations obtained without bona fide intention or through material misstatements can be cancelled under provisions like Section 47. Coverage of a registered mark extends to all goods listed in the certificate, strengthening protection against similar marks in related fields.
Overall, the case highlights that trademark law protects both consumers from deception and honest businesses from unfair competition by preventing later entrants from riding on established reputations through similar marks.
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
Suggested Titles for the Article:
- Delhi High Court Cancels “GOLDI” Trademark for Confusing Similarity with “GOLDIEE” Brand
- Prior User Triumphs: Shubham Goldiee Masale Wins Rectification Petitions Against “GOLDI” Mark
- Deceptive Similarity Leads to Removal of “GOLDI” Registrations in Edible Oil and Animal Feed Cases
- Protecting Established Brands: Key Takeaways from Goldiee Masale Rectification Judgment
