At first glance, the Delhi High Court’s decision in Panasonic Holdings Corporation v. Siddharth Vij may seem like a straightforward trademark dispute about cancellation of a deceptive similar mark. Panasonic filed the petition and argued that the respondent’s PONTA marks in Class 9 were too close to its earlier PENTA marks, and the Court agreed that the registrations were liable to be removed from the Register.

But the case is interesting for reasons beyond the usual comparison of marks. The judgment also shows how closely courts may look at the story behind a trademark, when that story was first told, whether it remained consistent, and whether the evidence supporting it can be trusted. For brand owners and trademark practitioners, the decision is a useful reminder that the stand taken during prosecution and the arguments presented can have an impact on rectification/cancellation proceedings under Section 57 of the Trade Marks Act, 1999.

The dispute: PENTA versus PONTA

The dispute arose from Panasonic’s challenge to the respondent’s registrations for the word mark PONTA and a related device mark in Class 9. Panasonic relied on its earlier registrations and use of PENTA, and argued that the rival marks were deceptively similar and covered identical goods.

The respondent argued that its adoption of PONTA was honest and bona fide. During the rectification proceedings, it explained that the mark was inspired by Paonta Sahib, a historic Sikh shrine. It also relied on material suggesting that “PONTA” had meanings in several foreign languages. In considering the rival submissions, the Court made the following key observations:

1. What troubled the Court was not only what the respondent said, but when it said it. At the examination stage the Trade Marks Registry had raised objection to the PONTA mark under Section 11 by citing Panasonic’s PENTA registrations, the respondent’s reply simply stated that the marks were different and sought waiver of the objection. It did not mention Paonta Sahib. Nor did it refer to any religious, historical, linguistic, or commercial reason for adopting the mark.
2. The Court found this omission significant. If the Paonta Sahib explanation was genuinely the basis for adopting PONTA, the Court asked, why was it not disclosed when the Registry first raised the objection? The explanation surfaced only after the registration was challenged, which made it look like a later justification rather than the real reason for adoption.
3. The Court also rejected AI-generated research reports about the meaning of PONTA as unreliable, since there was no corroborative evidence of the existence of such a word in foreign languages other than reports generated through AI tools.
4. The Court found visual and structural similarity between the marks. The Court noted that merely replacing ‘E’ with the letter ‘O’ does not create any distinction. Further, the representation of the device mark gives an impression as if it is ‘E’ and not ‘O’ .
5. Taking into account the target customers of the goods, the Court remarked that buyers such as electricians, petty contractors, and the general public may not inquire or attempt to find out the actual manufacturer of the goods and may purchase them, believing them to be manufactured by the petitioner.
6. The Court also rejected the respondent’s reliance on Section 12 (honest and concurrent use) of the Act. It noted that the PONTA application had been filed on a “proposed to be used” basis, and that the respondent began using the mark only after Panasonic’s PENTA mark had already acquired goodwill. The Court further observed that Panasonic’s mark had been cited in the Examination Report, yet the respondent offered no explanation at that stage. In these circumstances, the adoption could not be regarded as honest.

The Court directed the Registrar of Trade Marks to remove the registered mark ‘PONTA’ (word mark) and the device mark within four weeks of the order.

Key Takeaways

1. Prosecution is not just paperwork: The trademark prosecution should not be treated as a routine exercise. When an applicant is trying to overcome an objection based on an earlier mark, it is usually better to put the real adoption story on record early. That may include the reason for choosing the mark, the basis for distinguishing it from the cited mark, and any relevant commercial or factual background. The delay in providing the explanation for adoption may affect the credibility of that explanation.
2. AI-assisted research still needs reliable proof: The Court declined to rely on the AI-generated material because it was not authenticated or independently corroborated. This is in line with the application of evidentiary principles followed by the Courts. In other words, AI can be used to identify leads, translations, linguistic references, or research points, but those outputs still need to be verified through reliable and admissible sources.
3. Reasons for adoption should be credible: A trademark adoption story should be credible, timely, and supported by proper evidence. For trademark owners, the strength of a registration may depend not only on whether it was granted, but also on whether the record behind it can withstand scrutiny when challenged before a court.