The Madras High Court was dealing with the cancellation petition filed by V. Lakshminarayanasamy, the Petitioner, who is the registered owner of the trademark in Class 7 for motors and fans. The Petitioner is aggrieved by the registration of an identical mark in favour of the Respondent, Siva Bhaskaren. This note discusses the contentions raised by the parties and the order passed by the Court.

Petitioner in the rectification petition contends:

1. Prior Use and Registration: The Petitioner claimed to be the prior registered proprietor of the ‘SUGUNA’ trademark and “SI” monogram in Class 7, used for motors, fans, and exhausts since 1959. They argued that they had acquired substantial goodwill and reputation over the mark.
2. Deceptive Similarity: The Petitioner contended that the Respondent’s use of the ‘SUGUNA’ mark was dishonest and with malafide intention to benefit from the Petitioner’s established mark. They argued that the Respondent’s mark was deceptively similar and likely to cause confusion among consumers.
3. False Claims by Respondent: The Petitioner claimed that the Respondent’s assertions of using the ‘SUGUNA’ mark for wet grinders, mixer grinders, and washing machines since 1994 were false and motivated.

Respondent countered the contentions raising the following in support of their case:

1. Long-term Use and Goodwill: The Respondent claimed to have been in business for over 24 years, using the ‘SUGUNA’ brand name since 1994. They argued that they had acquired significant reputation and goodwill, and their use of the mark was extensive, continuous, and successful.
2. The Petitioner is not the original proprietor and acquired rights to the mark only under a Will after 2005.
3. Distinct Products: The Respondent emphasized that their products, such as wet grinders, mixer grinders, and washing machines, were entirely different from the Petitioner’s products, which included motors, fans, and exhausts. They argued that this distinction meant there was no likelihood of confusion among consumers.
4. Honest and Concurrent Use: The Respondent asserted that their use of the ‘SUGUNA’ mark was honest and concurrent. They claimed that their mark was uniquely designed and dissimilar to the Petitioner’s mark. They also argued that the fact they were granted registration disproved the Petitioner’s claims.
5. No Deceptive Similarity: The Respondent contended that there was no chance of confusion or deception as their mark was visually and structurally different from the Petitioner’s mark. They argued that their mark did not contravene Sections 9(2)(a), 11(1)(a), 11(1)(b), or 11(2) of the Trademarks Act.
6. Protection under Section 12: The Respondent sought protection under Section 12 of the Trademarks Act, stating that their use of the mark was honest and concurrent, and that they were the lawful registered proprietor.

The court framed the following issues:

• Whether the Petitioner or the Respondent is the prior user of the mark ‘SUGUNA’?
• Whether the impugned mark of the Respondent is deceptively similar to the Petitioner’s mark, in so much as to cause confusion?
• Whether the adoption of the Respondent’s mark is honest and concurrent?
• Whether the Petitioner is entitled to rectification on the grounds of violation of Section 9, 11 and 18 of the Act?

Both sides did not examine any witnesses and relied on oral submissions to substantiate their case.

Court’s findings

Prior user of the mark

• The Petitioner is the proprietor of the ‘SUGUNA’ trademark in Class 7 used since 1959, with the first registration granted in the year 1964 and is periodically renewed and valid and subsisting. The trademark covers motors (not for land vehicles) and grinding machines, including flexible shaft machines.
• The argument that the Petitioner cannot claim trademark use prior to the original proprietor’s death ought not to succeed. This is considering that the Petitioner as the beneficiary under the original proprietor’s Will, inherited all rights and interests in the trademark, including prior use rights. In this regard, the Trademark Registry and the registered Will confirm this transfer of rights, ensuring that the Petitioner continues the legacy of the original proprietor’s trademark rights.
• The Petitioner has filed documents evidencing sales turn over and advertisement expenses from the year 1960. On the other hand, the Respondent’s claim of first use of the ‘SUGUNA’ mark since 1994 is not supported by evidence. The invoices filed by the Respondent are from the year 2001 only and thus, their claim of use from 1994 is rejected. Thus, on the basis of the documentary evidence the Petitioner is established as the prior user of the ‘SUGUNA’ mark, with continuous use since at least 1960.
• In the instant case the Petitioner has established long-standing use, substantial growth, and significant goodwill associated with the ‘SUGUNA’ mark over several decades. In the circumstances, the Respondent’s adoption of the same mark is deemed mala fide and dishonest, aimed at unfairly capitalizing on the Petitioner’s reputation and goodwill.

Marks are Deceptively similar

• On a comparison of the rival marks and , though the marks are not identical they are highly similar particularly due to the common use of the word ‘SUGUNA.’ The artistic representation of the letter ‘S’ in the Respondent’s mark is found to be deceptive and similar to that in the Petitioner’s mark, creating a likelihood of consumer confusion.
• The Respondent has failed to provide evidence to demonstrate that their mark has acquired distinctiveness and thus, lacks the ability to be distinguished from the Petitioner’s mark. The Respondent’s contention that different trade channels and product categories (wet grinders vs. motors and pump sets) eliminate the likelihood of confusion ought to fail. The Court observed that the consumers may associate the Respondent’s goods with the Petitioner, and thus, the risk of passing off cannot be ruled out.

No Honest and concurrent use

• The Respondent’s adoption of the ‘SUGUNA’ mark is without any justification and failed to provide a valid reason for its use and thus, cannot claim honest and concurrent use under Section 12 of the Trademarks Act.

Trade channels and Goods overlap

• A trademark cannot be registered if its use in India could be prevented under the law of passing off. The Respondent’s argument that the products of both parties are very different and sold through separate trade channels and there is no chance of confusion ought to fail. The Petitioner is dealing with motor and pump sets and also holds valid registration for grinding machines and the Respondent is into wet grinders and the chances or likelihood of confusion or deception cannot be ruled out merely on the basis of sectoral differences.

Given the above and considering the established legal principles, the Court held that the registration in favor of the Respondent cannot be upheld and accordingly directed removal of the mark in class 7 from the Register.

Comment

The judgment reaffirms the principles of trademark law, emphasizing the protection of prior rights and the prevention of consumer confusion. It reinforces that claim of honest concurrent use must be substantiated with evidence.