In a recent judgment, the Madras High Court dealt with a rectification petition filed by Heritage Foods (India) Limited (HFL), seeking cancellation of a trademark registered in Class 29 by Good Health Agrotech Pvt. Ltd. (Good Health). The dispute revolved around the use of the mark “HERITAGE” by both parties in the food industry.

Background

Heritage Foods, the petitioner, is a listed company engaged in the manufacture and sale of dairy and food products. HFL has been using the trademark “HERITAGE” since 1993 as part of its corporate identity and holds multiple trademark registrations in Class 29. To substantiate its claim of prior and continuous use, the petitioner submitted purchase orders, invoices, and advertising material, including documents dating back to 1992.

HFL argued that the respondent’s use of a deceptively similar mark for related goods—specifically edible oils—was likely to cause confusion among consumers. It also highlighted that while it had opposed other trademark applications by Good Health, the specific registration under challenge had gone unnoticed and was therefore liable to be rectified from the trademark register as an entry made without sufficient cause.

Respondent’s Defense

Good Health Agrotech countered that it was an honest and concurrent user of the mark “HERITAGE,” claiming use from as early as April 1991. Though their original application filed in 1994 was abandoned, a subsequent application in 2003 led to the contested registration. The respondent acknowledged an error in the stated user date and submitted a correction application in 2011.

To support its claim, Good Health submitted several documents, including a 1994 application for a certificate of authorization to grade and market vegetable oils under the “HERITAGE” brand and invoices dating from 1995. The respondent emphasized the absence of any actual confusion in the marketplace and argued that the petition suffered from delay, laches, and acquiescence. It also noted that the civil suit earlier filed by HFL had been dismissed for non-prosecution and not revived.

Court’s Analysis

The Court acknowledged that both parties had established use of the mark “HERITAGE,” though for different categories of goods. While HFL had demonstrated substantial use of the mark in relation to dairy products, there was insufficient evidence to show use in connection with edible oils. Conversely, Good Health had provided credible documentation showing use of the mark specifically for edible oils since the early 1990s.

In view of the concurrent use by both parties, and taking into account the respondent’s bona fide adoption and use of the mark, the Court found that special circumstances existed to invoke Section 12 of the Trade Marks Act, 1999 which permits the registration of identical or similar marks by more than one proprietor under certain conditions.

Conclusion

The Madras High Court declined to cancel the respondent’s trademark registration, instead recognizing Good Health as an honest and concurrent user. To balance the rights of both parties and prevent consumer confusion, the Court directed that the respondent’s use of the “HERITAGE” mark be strictly limited to edible oils. The Registrar of Trade Marks was instructed to incorporate this limitation into the register.

This ruling underscore the importance of timely enforcement of trademark rights and highlights the Court’s willingness to consider equitable factors such as honest concurrent use in trademark disputes.