1. This petition has been brought under Sections 47 and 57 of the Trademarks Act, 1999 to cancel the registration of the trademark "WHITE BOY," registered under No. 4886714 in class 25, 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.
2. Mr. Abhinav Bhatia, counsel for Petitioner, put forth the following facts and contentions for cancellation of the impugned registration:
2.1. The Petitioner established a sole proprietorship by the name of M/s. White Boy Apparels in the year 2010 for manufacturing and trading in shirts under an arbitrary and fanciful trademark "WHITE BOY." The mark has been in continuous and uninterrupted use since 2010, and has become an integral element of the firm's commercial identity.
2.2. Petitioner applied for registration of the wordmark "WHITE BOY" in class 25 on 03rd March, 2021, with a user claim since 10th January, 2013 under application No. 4887214. The Examination Report issued by Respondent No. 1 [Registrar of Trademarks] on 17th March, 2021 cited Respondent No. 2's then pending application No. 4886714, filed on 02nd March, 2021, for her mark "WHITE BOY" in class 25 in relation to "readymade garments, hosiery, under garments, sports wear clothing and footwears including uniforms, dresses, jeans, jackets, trackpants, leggings, shirts, t-shirts, trousers, suits, vests, coats, sherwanis, kurta, pyjamas, shawl, childrens clothing, mens & womens clothing, caps, hats, headwear, neckwear, socks, tops, lehenga, chunni, skirts, night-suits, innerwear, swimwear, bra, panties; tights; brassieres; blazers, gloves, socks, ties, woolen garments, boots, shoes and slippers included in class 25."
2.3. Respondent No. 2 filed her trademark application on a proposed-to-be-used basis. Notwithstanding, the Examination Report issued on 13th March, 2021 failed to acknowledge the Petitioner's earlier application, even though his claimed date of use predates that of Respondent No. 2. Overlooking the Petitioner's established priority claim to the trademark "WHITE BOY," Respondent No. 1 proceeded to advertise Respondent No. 2's application in the Trademarks Journal on 28th June, 2021. This oversight subsequently led to the erroneous grant of registration to Respondent No. 2, despite the clear precedence of the Petitioner's claim.
2.4. The Petitioner has, by virtue of long and continuous use as well as robust advertising and promotional activities, acquired immense goodwill and reputation under the trademark "WHITE BOY." This mark being exclusively associated with the Petitioner, now carries a secondary meaning.
2.5. According to her trademark application, Respondent No. 2 had not yet begun using the "WHITE BOY" mark for the goods specified. Contrarily, the Petitioner has actively used this mark since founding of White Boy Apparels in 2010, unequivocally establishing him as the prior user. Pertinently, the Petitioner and the husband of Respondent No. 2 are competitors in the market. Given this relationship, it is reasonable to assume that Respondent No. 2 was well aware of the Petitioner's extensive business operations. The deliberate choice by Respondent No. 2 to adopt an identical trademark for identical goods suggests a strategy tainted with bad faith, aimed at capitalizing on the Petitioner's established goodwill and market reputation. This act of appropriation is designed to confuse consumers, leading them to believe there is an association or collaborative venture between the two parties. While evaluating and........