Fact of the Case
VST Industries Limited filed a petition under Section 57 of the Trade Marks Act, 1999, seeking rectification of the Trade Marks Register by removing the trademark "CHUMS," registered in favor of ASD Tobacco Private Limited. VST Industries claimed that "CHUMS" was phonetically, visually, and deceptively similar to its registered trademark "CHARMS," which had been in use since 1982 for cigarettes and tobacco products. VST argued that the respondent's mark was infringing on its well-established goodwill and reputation.
Procedural Background in Brief
VST Industries filed a rectification petition against ASD Tobacco's trademark "CHUMS," registered under Class 34 on September 30, 2018, with a claimed user date of August 20, 2018. Despite multiple attempts to serve notice, ASD Tobacco failed to appear before the court. The petitioner submitted evidence of its prior use and goodwill, including sales turnover certificates and trademark registration details dating back to 1982. Additionally, VST relied on a prior order dated May 18, 2022, from the Additional District Judge, Panchkula, which had restrained ASD Tobacco from using the "CHUMS" mark in a trademark infringement suit.
Reasoning of the Court
The Delhi High Court found that VST Industries had been using the "CHARMS" mark since 1982, well before ASD Tobacco registered "CHUMS" in 2018. The court observed that both marks were phonetically and visually similar, used for identical goods in the same class, and that ASD Tobacco’s packaging closely resembled that of VST Industries. The court also noted that in a previous case, a district court had already found "CHUMS" to be deceptively similar to "CHARMS" and had restrained ASD Tobacco from using it. Given these facts, the court concluded that ASD Tobacco had attempted to imitate the petitioner’s mark and packaging, leading to a likelihood of confusion among consumers.
Decision
The Delhi High Court allowed the petition and ordered the cancellation of ASD Tobacco's trademark "CHUMS" (Registration No. 3960579). It directed the Registrar of Trade Marks to rectify the register and issue a notification regarding the cancellation. The court also instructed the Registry to inform the Controller General of Patents, Designs, and Trade Marks for compliance.
Case Details
Case Title: VST Industries Limited Vs. ASD Tobacco Private Limited & Anr.
Date of Order: March 6, 2025
Case Number: C.O. (COMM.IPD-TM) 128/2021
Neutral Citation:2025:DHC:1562
Name of Court: Delhi High Court
Hon’ble Judge: Justice Mini Pushkarna
