The Madras High Court was called upon to adjudicate a trademark dispute between RPG Enterprises Limited and RPG Marble Private Limited in a rectification petition instituted under Section 57 of the Trademarks Act, 1999, challenging the registration of the mark

Background

RPG Enterprises Limited filed the rectification petition challenging the registration of the impugned mark in Class 42. The Registrar of Trademarks was impleaded as the first respondent, while RPG Marble Private Limited and its Directors were arrayed as the other respondents.

The Petitioner asserted that its trademark “RPG”, used extensively since 1979, had acquired substantial goodwill and reputation and was exclusively associated with the Petitioner and its group companies, attaining the status of a well-known trademark. It contended that the impugned mark incorporated “RPG” as its dominant and distinctive element, rendering it deceptively similar to the Petitioner’s mark and likely to cause confusion or suggest a commercial association. The Petitioner further alleged that the registration diluted the distinctiveness of its mark and conferred an unfair advantage upon the Respondents and therefore sought its removal from the Register for having been made and remaining there without sufficient cause.

Petitioner’s Submissions

1. Dominant mark: “RPG” is identical to the petitioner’s well-known mark, and the addition of “Marble Pvt. Ltd.” does not distinguish it.
2. Wrong entry: The respondents’ marble and granite business falls under Class 19, not Class 42, rendering the registration improperly classified under Section 57(2).
3. Dishonest adoption: The respondents allegedly adopted “RPG” to imitate the petitioner’s mark, and the claimed derivation from the directors’ initials did not establish bona fide adoption or attract the own-name defence.
4. Insufficient evidence of use: The respondents failed to substantiate their claimed use since 7 April 2000, with certain invoices not bearing the impugned mark.
5. Reputation and commercial nexus: The petitioner’s longstanding rights and reputation in “RPG”, recognised as a well-known mark and included in the Registrar’s list on 29 May 2023, warranted protection even against use for dissimilar goods having a commercial nexus.
6. Delay and acquiescence: The petitioner disputed the alleged 2002 notice, claiming knowledge of the respondents’ use only in 2017, and argued that delay did not bar rectification of a dishonestly obtained registration.
7. Public interest: The registration was a wrong entry made without due cause, and its removal was necessary to protect the petitioner’s rights and maintain the purity of the Trademarks Register.

Respondents’ Submissions

1. “RPG” was independently coined from the initials of the respondents’ directors and had been continuously used since April 2000, generating substantial goodwill in marble, granite, stones and allied products.
2. The respondents’ business was distinct from the petitioner’s, whose registrations covered Classes 5, 9, 12, 16 and 30, whereas the impugned mark was registered in Class 42.
3. The mark “RPG Marble Pvt. Ltd.” had to be considered as a whole, taking into account its stylised “R” and distinctive blue-and-beige colour combination.
4. The petitioner allegedly knew of the respondents’ use since 2002 but initiated rectification proceedings only in 2017, attracting delay, laches, waiver and acquiescence.
5. The petitioner had allegedly suppressed material facts regarding the 2002 legal notice, despite its own annual report identifying the law firm involved.
6. The petitioner’s recognition of “RPG” as a well-known trademark in 2023 could not retrospectively invalidate a mark adopted in 2000 and applied for in 2006.
7. The petitioner had no registration in Class 42 and failed to establish sufficient reputation or distinctiveness in “RPG” at the time of the respondents’ adoption.
8. The respondents contended that the Class 42 registration resulted from the Registry’s examination and should not prejudice their bona fide adoption.
9. The petitioner’s 2018 civil suit, dismissed for non-prosecution with restoration pending, was relied upon to demonstrate a lack of diligence and entitlement to discretionary relief.

Court’s Findings and decision

1. The Court examined whether the rectification petition was barred by waiver, delay, laches and acquiescence under Section 33 of the Trademarks Act.
2. The respondents relied on a legal notice dated 13 February 2002 to establish the petitioner’s prior knowledge, despite the rectification petition being filed only in 2017.
3. The petitioner denied knowledge of the 2002 notice, claiming it discovered the infringement in 2017 and that delay alone could not defeat its trademark rights.
4. The Court found the petitioner’s witness evasive during cross-examination, particularly regarding the law firm that issued the 2002 notice, which was identified as the petitioner’s legal adviser in its 2016–17 Annual Report.
5. The Court concluded that the petitioner had prior knowledge since 2002 and that its nearly 15 years of inaction amounted to acquiescence, attracting the bar under Section 33.
6. Accordingly, the petition was dismissed without detailed examination of the remaining issues.

Comment

The decision underscores that prolonged inaction despite prior knowledge of an allegedly infringing trademark can prove fatal to rectification proceedings, with acquiescence under Section 33 emerging as a decisive bar to relief.