Non-Use and Rectification of Trade Marks
Introduction:The case of Allied Blenders and Distillers Limited versus Kulbir Singh and Another revolves around a trademark dispute under the Trade Marks Act, 1999, where the petitioner sought the cancellation and rectification of a registered trademark held by the respondent. This petition highlights key principles of trademark law, particularly concerning non-use of a mark and the criteria for removing it from the register. The High Court of Delhi examined whether the impugned mark "ROGER" registered in Class 33 for alcoholic beverages had been genuinely used by the respondent, and if the petitioner qualified as a "person aggrieved" to challenge its registration. The judgment underscores the importance of active commercial use in maintaining trademark rights and addresses the burden of proof in rectification proceedings. It draws on established precedents to clarify when a mark can be expunged due to prolonged non-use, emphasizing that mere registration without utilization does not suffice to retain monopoly over the mark.
Factual Background:The petitioner, Allied Blenders and Distillers Limited, operates a well-established business in manufacturing and marketing Indian Made Foreign Liquor and related goods, with its merchandise sold globally under various distinctive trade marks catering to different consumer segments. Over several decades, the petitioner has introduced multiple well-known brands, including "OFFICER'S CHOICE," "OFFICER'S CHOICE BLUE," "CLASS 21," "CALYPSO," "SUMO," "100 GUNEAS," "LORD & MASTER," "KYRON," "STERLING RESERVE," among others. The trade mark relevant to the present controversy is "JOLLY ROGER," which the petitioner's predecessors adopted in 1991. The petitioner's group entity, BDA Private Limited, applied for registration of the composite mark "JOLLY ROGER" in 2006, granted under Registration No. 1487257 in Class 33. Following a merger of the alcohol beverages business with the petitioner, the mark stands registered in the petitioner's name. The petitioner has extensively used the mark "JOLLY ROGER" since 2010, with products bearing this mark sold across the country. The petitioner claims that the mark "JOLLY ROGER" has acquired significant goodwill and reputation in the alcoholic beverages market in India, as evidenced by its website providing information on all products bearing the mark, leading to enhanced awareness and recognition. The petitioner further claims substantial financial investment to promote sales of its products bearing the mark "JOLLY ROGER," supported by sales figures from 2010-11 to 2023-24, showing consistent growth and totaling significant units sold. The impugned mark "ROGER" was registered under Registration No. 1799370 in Class 33 in the name of Respondent No.1, having address at C/o Roger Industries Limited, Agra-Mathura Road, Artoni, Agra, Uttar Pradesh, with the application filed on 24.03.2009 and valid till 24.03.2029. On 15.07.2024, the petitioner received a cease-and-desist notice issued by Roger Industries Limited through its director, Respondent No.1, calling upon the petitioner to cease and desist from its business operations using the mark "JOLLY ROGER." The petitioner sent a detailed reply dated 25.07.2024 to the petitioner and subsequently filed the present petition before this court. Respondent No.1 submitted that it is not the first adopter of the mark "ROGER" in India and that the said mark is a common name, further claiming several third-parties have registered trade marks containing the word "ROGER" with no monopoly over its usage for all goods and classes. The learned counsel for the petitioner submitted that Respondent No.1 completely failed to put the impugned mark in use in relation to goods covered in Class 33. It is further submitted that a bare perusal of the memorandum of association of Roger Industries Limited shows that there is no intention to use the impugned mark for Class 33 goods. A perusal of the said memorandum of association was handed over to this court by the learned counsel for the petitioner and the same is taken on record. The learned counsel for the petitioner submitted that it is clear from Respondent No.1's affidavit dated 30.04.2009 filed before the registrar of trade marks during the prosecution of the impugned mark that there was no intention to use the impugned mark for goods in Class 33, and that the impugned mark is used in relation to Respondent No.1's footwear trade. It was submitted that the petitioner has filed and registered several "JOLLY ROGER" marks in Class 33 during the period from November 2020 to August 2024, which were not objected to or opposed by Respondent No.1, who establishes that Respondent No.1 never intended to use the impugned mark in relation to Class 33 goods. It was submitted that the petitioner is undergoing immense hardship on account of the registration of the impugned mark by Respondent No.1 and therefore, the petitioner is a "person aggrieved" as contemplated under Section 47 of the Act. It was further submitted that as the impugned mark has not been used in relation to goods in Class 33 for a period of 5 years 3 months before the present petition was filed, it is liable to be removed from the register of trade marks. In view of the foregoing submissions, it was prayed that the present petition be allowed and consequently, the impugned mark be expunged from the register of trade marks.
Procedural Background: The present petition was filed by the petitioner under Sections 9, 18, 47 and 57 of the Trade Marks Act, 1999, seeking cancellation of the trade mark No. 1799370 registered in Class 33 for the mark "ROGER" in the name of Respondent No.1, and for rectification of the trade marks register under Rule 7 of the Delhi High Court Intellectual Property Rights Division Rules, 2022. Vide order dated 01.10.2024, this court directed that notice be issued to Respondent No.1 through all modes and granted four weeks' time to file the reply. Thereafter, this petition was taken up by this court on 15.01.2025, however, none appeared for Respondent No.1 despite issuance of notice vide order dated 01.10.2024 and the respondents were further granted a duration of two weeks to file the reply. This matter was called again for hearing on 28.04.2025 and this court in the order of even date noted that despite Respondent No.1 being served on 11.11.2024 via speed post, no one had entered appearance on his behalf and no reply was filed by Respondent No.1 despite repeated liberty being granted to do so. Accordingly, Respondent No.1's right to file a reply was closed and Respondent No.1 was proceeded ex-parte vide order dated 28.04.2025. Respondent No.1, despite repeated opportunities granted by this court, has failed to enter appearance and file a reply. Therefore, in accordance with the order dated 28.04.2025, Respondent No.1 was proceeded ex-parte. The learned counsel for Respondent No.2 submitted that Respondent No.2 will comply with the directions passed by this court in this matter. At the outset, it is to be noted that in the absence of any appearance and reply by Respondent No.1, the pleadings made in the present petitions remain uncontroverted. It is clear that Respondent No.1 is not interested in contesting the matter. Accordingly, the pleadings herein are deemed to have been admitted by Respondent No.1.
Core Dispute: The central issue in this case pertains to whether the impugned trade mark "ROGER" registered under No. 1799370 in Class 33 should be cancelled and removed from the register on the ground of non-use for a continuous period of at least five years from the date on which the mark was entered in the register of trade marks up to a date three months prior to the date of filing the present petition. The petitioner argued that it is the prior adopter and user of the mark "JOLLY ROGER" since 1991 in respect of goods falling in Class 33 and has been using the said mark since the year 2010, and is the registered proprietor of the said mark. It is further submitted that the petitioner is a "person aggrieved" as contemplated under Section 47 of the Act. It was further submitted that the impugned mark has not been used in relation to goods in Class 33 for a period of 5 years 3 months before the present petition was filed, it is liable to be removed from the register of trade marks. Respondent No.1 entered repeated opportunities granted by this court, has failed to enter appearance and file a reply, and therefore the petitioner's claims stand uncontroverted. The dispute thus focuses on establishing the petitioner's status as a person aggrieved due to the existence of the unused mark blocking its operations, and proving the factum of non-use by the respondent in relation to Class 33 goods, despite the mark being registered for alcoholic beverages.
Discussion on Judgments:The parties and the court referred to several key judgments to support their positions on non-use, the concept of a "person aggrieved," and the removal of unused trade marks from the register. In Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. (2003) 11 SCC 92, the Supreme Court held that before the High Court or the registrar directs the removal of the registered trade marks they must be satisfied in respect of the following: that the application is by a "person aggrieved," that the trade mark has not been used by the proprietor for a continuous period of at least five years and one month prior to the date of the application, of the trade mark during this period by the proprietor, and that there were no special circumstances which affected the use of the trade mark during the said period. This judgment was cited by the petitioner to emphasize the burden on the respondent to prove genuine use or special circumstances justifying non-use, and the court relied on it to assess whether the impugned mark met the test of locus standi and continuous non-use. In Infosys Technologies Ltd. v. Jupiter Infosys Ltd. (2011) 1 SCC 125, the Supreme Court described the phrase "person aggrieved" in the following terms: the position that emerges from the above provisions is this, whether the application is under Section 46 or under Section 56 or a composite application under both sections, it is a prerequisite that the applicant must be a person aggrieved, Section 46(1) of the 1958 Act enables any person aggrieved to apply for removal of registered trade mark. This judgment was invoked by the court to define who qualifies as a person aggrieved, noting that actions were commenced to maintain the purity of the register and that a person aggrieved would necessarily have a wider sweep, however, there was no element of public mischief in favour in rectification of a register under Section 46 of the 1958 Act (Section 47 of 1999 Act) and thus, the person aggrieved in the context of removal of trademark on account of non-use would necessarily mean a person who is interested in removal of the impugned mark. The Supreme Court referred to the following passage from the decision of Lords in Powell's Trade Mark (1894) 11 RPC 4, although they were no doubt inserted to prevent officious interference by those who had no interest at all in the register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, inasmuch as it is a public mischief that there should remain upon the register a mark which ought not to be there, and by which many persons may be affected, who, nevertheless, would not be willing to enter upon the risk and expense of litigation, whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark, he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved. This precedent was cited in the context of explaining the broad interpretation of "person aggrieved" to include those whose business might be restricted by an unused mark on the register, and the court applied it to determine that the petitioner, being in the same industry, had standing to challenge the impugned mark. In Kellogg Company v. Pops Food Products (P) Ltd. (2018) SCC OnLine Del 6562, a coordinate bench of this court relied upon the Supreme Court's ruling in Hardie Trading, observing that the principal issue to be addressed is whether the petitioner is a person aggrieved, in Hardie Trading Ltd. v. Addisons Paint and Chemicals Ltd. (supra), the Supreme Court explained the expression "person aggrieved" as used in Section 46 of the 1958 Act (pari materia to Section 47 of the 1999 Act) was materially different from the connotation of the said expression as used in Section 56 of the 1958 Act, the court had observed that registration should not have been granted or was incorrectly granted, these situations included: (a) contravention of failure to observe a condition for registration; (b) absence of an entry; (c) an entry made without sufficient cause; (d) a wrong entry; and (e) any error or defect in the entry. The Court further explained that any type of defect in the entry. This judgment was referred to by the court to underscore that in cases of non-use, the aggrieved party need not prove fanciful grievance but a likelihood of injury, and it supported the petitioner's claim by highlighting that no special circumstances were shown for the non-use. In A.K. Al Muhairid v. Chaman Lal Sachdeva (2024) SCC OnLine Del 1026, a coordinate bench of this court observed as under: therefore, in view of the decision of this court in Disney Enterprises Inc. v. Balraj Muttneja 2014 SCC OnLine Del 781, no further evidence required if position in this matter has been reiterated by the court on several occasions, including recently in Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan (2023) 4 HCC (Del) 301, wherein the following relevant observation was made: under such circumstances, in the absence of denial by the respondent, the court has no reason to disbelieve the pleadings as also the investigator's affidavit on record, the respondent has chosen not to appear in the matter despite being served, specific court notice was issued even to the lawyer/trade mark agent of the respondent, in the context of non-use, it is the settled legal position that use has to be genuine use in the relevant class of goods and services, unless the non-use is explained by way of special circumstances, the mark would be liable to be removed for non-use, in the present case, no special circumstances have been cited. This recent judgment was cited to affirm that in the absence of the respondent's appearance and any evidence of use, the court can proceed to remove the mark, and it was used in the context of the petitioner's uncontroverted evidence of non-use in Class 33, where the respondent failed to demonstrate any genuine commercial utilization.
Reasoning and Analysis of the Judge: The judge meticulously analyzed the provisions of Section 47(1)(b) of the Trade Marks Act, 1999, which allows for the removal of a trade mark from the register if it has not been used for a continuous period of five years up to three months before the rectification petition is filed, unless special circumstances are shown. The court noted that the petitioner has successfully discharged the burden by providing evidence that it is the registered proprietor of multiple trade marks bearing the mark "JOLLY ROGER" in Class 33, under which it sells and markets its products. Secondly, it is uncontroverted that the petitioner has been using the mark "JOLLY ROGER" since the year 2010 and that its predecessors had adopted the said mark in 1991. Thirdly, the sales figures of the petitioner's products in Class 33 under the mark "JOLLY ROGER" reflect that it is a well-established brand in the alcoholic beverages market in India. Lastly, given the similarity between the impugned mark and the petitioner's mark, an unwary consumer of average intelligence is likely to get confused and deceived by the impugned mark. In view of the above discussion, this court has no qualms that there is a likelihood of injury or damage to the petitioner if the impugned mark is not removed from the register. Therefore, the petitioner satisfies the test of being a "person aggrieved" under Section 47 of the Act. Under Section 47 of the Act, after establishing its locus standi, the petitioner has to discharge the burden of proving the factum of non-use of the impugned mark for a continuous period of at least five years from the date on which the mark is entered in the register of trade marks, up to a date at least three months prior to the date of filing the present petition. It is the petitioner's case that Respondent No.1 never intended to use the impugned mark in relation to Class 33 goods. The learned counsel for the petitioner drew this court's attention to the affidavit of Mr. Ankur Sachdeva, Chief Revenue Officer of the petitioner, wherein it is clearly stated that the impugned mark is not in use in the market in relation to Class 33 goods and that being in the same industry, he has never come across any product of Respondent No.1 in Class 33. It is further pointed out by the learned counsel for the petitioner that in Respondent No.1's affidavit dated 30.04.2009 filed before the registrar of trade marks during the prosecution of the impugned mark, it is admitted that the trade mark "ROGER" is used by Respondent No.1 in relation to its products in footwear trade. The learned counsel for the petitioner also relied upon the memorandum of association of Roger Industries Limited to contend that Respondent No.1 and Roger Industries Limited had no intention to use the impugned mark in relation to goods falling in Class 33. In view of the above, the court observed that the impugned mark is not in use in the market in relation to Class 33 goods.
Final Decision: The court allowed the petition and directed that the impugned trade mark "ROGER" bearing registration No. 1799370 in Class 33 be removed/expunged/rectified from the register of trade marks. The registry is directed to update the register accordingly and notify the same to the concerned trade marks registry within four weeks.
Law Settled in This Case:This case reinforces the principle that a registered trade mark can be removed from the register if it remains unused for a continuous period of five years and three months prior to the filing of a rectification petition, without any special circumstances justifying the non-use. It clarifies that a "person aggrieved" under Section 47 includes entities in the same trade whose business may be hindered by the existence of an unused mark, even without proving actual damage, as long as there is a likelihood of restriction on their legal rights. The judgment emphasizes that the burden shifts to the registrant to prove genuine use once the petitioner establishes non-use through evidence like affidavits and market surveys, and in ex-parte proceedings, uncontroverted pleadings can lead to removal. It also settles that intent to use at the time of registration does not substitute for actual commercial use, and marks registered without bona fide intention for the specified class are vulnerable to cancellation.
Case Title: Allied Blenders and Distillers Limited Vs Kulbir Singh & Anr.
Date of Order: 22.08.2025
Case Number: C.O. (COMM.IPD-TM) 191/2024
Neutral Citation: 2025:DHC:7158
Name of Court: High Court of Delhi
Name of Judge: Hon'ble Mr. Justice Tejas Karia
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
