High Court of Delhi

Jitendra Kumar Vs. The Registrar of Trademarks, New Delhi and Ors. (Neutral Citation: 2024:DHC:4402)

MANU/DE/3664/2024

28.05.2024

Intellectual Property Rights

Lack of evidence depicting direct use of mark on products for the initial period does not debilitate claim of continuous usage of trademark, as a trade name also qualifies for trademark protection

Present petition has been brought under Sections 47 and 57 of the Trademarks Act, 1999 to cancel the registration of the trademark "WHITE BOY,", in favour of Respondent No. 2. The Petitioner, who attempted to register the same trademark "WHITE BOY" in the identical class just one day after Respondent No. 2's application, challenges the validity of Respondent No. 2's mark on the basis of prior user rights.

Section 9(2)(a) entails an absolute proscription on the registration of a mark, if it is potentially deceptive or capable of causing confusion. In the case at hand, the contesting marks are indistinguishable and are used on identical products namely, garments categorized under class 25. These resemblances accentuate the likelihood of consumers being confused about the origin of the goods. The documentary evidence presented confirms that the Petitioner established a proprietary firm named 'White Boy Apparels' in 2010 for the production of readymade apparel. Since its inception, the firm has been actively engaged in commercial activities within this industry. While the documentation from 2010 to 2019 does not explicitly demonstrate the use of the "WHITE BOY" trademark on the products, it unequivocally shows that the firm operated under the business name 'White Boy Apparels.'

Under Section 2(1)(m) of the Trademarks Act, the definition of a 'mark' includes a name, which arguably encompasses a trading name of an entity. Additionally, Section 2(1)(zb) defines a 'trademark' as a mark that can be graphically represented and serves to distinguish one person's goods or services from those of others. A trade name can effectively be interpreted as a trademark under the relevant legal definitions and precedents. Thus, in the Court's opinion, the lack of evidence depicting direct use of "WHITE BOY" by the Petitioner on products for the initial period does not debilitate their claim of continuous trademark use since 2010, as a trade name also qualifies for trademark protection.

The Petitioner has further bolstered their assertion of continuous commercial use by submitting tax invoices that demonstrate the sale of "WHITE BOY" shirts to third parties since 2020. These invoices lend strong support to the Petitioner's claim of active trademark usage. Given the lack of corroborative evidence from Respondent No. 2, the Court finds that the Petitioner's documented and sustained use of the trademark "WHITE BOY" since 2010 clearly establishes them as the prior user. This prior use, substantiated by sales data, outweighs the unverified and future-oriented intentions of Respondent No. 2, leading to the conclusion that the Petitioner holds the rightful claim to the trademark "WHITE BOY."

The Petitioner has established that he is the prior and continuous user of the trademark "WHITE BOY" since 2010. Consequently, the registration of an identical mark in the name of Respondent No. 2 is untenable, as it is likely to deceive the public or cause confusion, thus contravening the principles intended to protect consumers, set forth in the Trademarks Act. Registration of the mark "WHITE BOY" under No. 4886714 in class 25 is cancelled. Petition allowed.

Tags : Registration Prior use Deception

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