On Friday, the Delhi High Court was hearing a rectification petition filed under Section 57 of the Trade Marks Act, 1999, seeking the removal of a registered trademark used for a cow-urine-based floor cleaning product. The dispute concerned alleged deceptive similarity between rival marks and competing claims of prior use.
Brief Facts:
The case arose from a trademark dispute between a non-governmental organisation and the respondents over the use of similar marks for cow-urine-based floor cleaners. The petitioner claimed rights over the mark “GAUNYLE”, while the respondents were selling their product under the registered mark “PATANJALI GONYLE FLOOR CLEANER” in the same class of goods. Alleging confusion and wrongful registration, the petitioner approached the High Court seeking rectification of the Trade Marks Register.
Contentions of the Petitioner:
The counsel for the Petitioner contended that it was the prior adopter and user of the mark and that the respondents’ mark was phonetically and deceptively similar, being used for identical goods. The counsel argued that the impugned registration violated Sections 9(2)(a) and 11(1)(a) of the Trade Marks Act, and that the petitioner’s prior user rights were protected under Section 34.
Contentions of the Respondents:
The counsel for the Respondents argued that they were the prior users and registered proprietors of the impugned mark and had been using it much earlier than the petitioner. They maintained that the prominent use of the well-known house mark “PATANJALI” clearly distinguished their product and eliminated any likelihood of confusion. The Petitioner’s claim of prior use was also disputed due to alleged inconsistencies in supporting documents.
Observation of the Court:
The Court noted that prior adoption and continuous user form the cornerstone of trademark rights and that “priority in adoption confers superior rights, and a subsequent user cannot claim precedence merely on the strength of registration.” On examining the record, the Court observed that the burden to prove prior user lay squarely on the party asserting it and that such burden must be discharged through credible and consistent documentary evidence.
While dealing with the allegation of deceptive similarity, the Court observed that phonetic resemblance alone is not determinative and that trademarks must be compared as a whole. It was noted that “the assessment of similarity must be undertaken holistically, taking into account visual, phonetic and conceptual aspects, along with surrounding circumstances.” The Court emphasised that the test is from the perspective of an average consumer with imperfect recollection.
Importantly, the Court highlighted the presence of the well-known house mark “PATANJALI” in the impugned mark and observed that such a prominent and reputed house mark can act as a strong distinguishing feature. Relying on the principle laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., the Court reiterated that where the manufacturer’s name is clearly indicated, the likelihood of confusion is substantially reduced.
On the issue of rectification, the Court observed that Section 57 read with Sections 9 and 11 of the Trade Marks Act can be invoked only when the impugned mark is shown to be deceptively similar to an earlier trademark and likely to cause confusion. The Court further noted that the protection of prior user under Section 34 is conditional upon proof of genuine, continuous prior use, which, in the present case, was found wanting.
The decision of the Court:
The Court dismissed the rectification petition, holding that the petitioner failed to prove prior user. It found no deceptive similarity between the marks when viewed as a whole. Accordingly, the registration of the impugned mark was upheld.
Case Title: Holy Cow Foundation V. Patanjali Gramodyog Nyas (Trust) And Ors.
Case No.: C.O. (COMM.IPD-TM) 85/2021
Coram: Hon’ble Mr Justice Tejas Karia
Counsel for the Petitioner: Adv. Subhashree Sil, Adv. Kuber Mahajan and Adv. Abhay Aren.
Counsel for the Respondent: Adv. Junaid Alam, Adv. Nishant Mahtta, Adv. S. Nitin and Adv. Nitish Singh.
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