Not Necessary To Use Trademark In Physical Form, May Be Used In Any Other Relation To Goods: Delhi High Court

The Delhi High Court has made it clear that it is not necessary that a trademark must be used in a physical form in relation to the goods.While referring to Section 2(2)(c) of the Trademarks Act 1999, a division bench of Justices Navin Chawla and Shalinder Kaur held that the mark may be used in any other relation whatsoever to such goods.It observed, “The “use of a mark” in relation to goods is therefore, the use of the same upon, or in any physical or in any other relation whatsoever, to such goods.”The Court thus upheld a Commercial Court order restraining the partnership firm M/s KRB Enterprises engaged in manufacturing rice, etc., from infringing the trademark of KRBL Limited, which owns the famous India Gate rice brand.The Respondent-company claimed that 'KRBL' along with device paddy are both essential features of its registered mark, in use since the year 2000.The Appellant-firms on the other hand claimed that 'KRBL' is merely Respondent's corporate name and the latter is not selling goods under that trade name. It contended that since trademark protection is contingent on 'actual use', the Respondent cannot claim any right.Further, the firm pointed out that Respondent had filed an application for withdrawal/ cancellation of the trademark, constituting abandonment.The Respondent-company explained that the withdrawal was sought because they were influenced by poor legal advice and on discovering the mistake, they immediately applied for registration of the said mark by filing another trademark application.The High Court accepted this explanation offered by the Respondent and held, “...there should be an active intention to abandon the usage of the mark. In the present case…the Respondent has been in continuous use of the mark, and even though it withdrew its application under Class-30, the very next day filed a fresh application for the reregistration of the same, which clearly evidences an intent of not to abandon the said mark.”So far as contention of the disputed trademark merely being the Respondent's corporate name is concerned, the High Court held,“In the present case, the Respondent has placed on record voluminous documents to show the use of its mark not only in relation to the goods, but also in form of advertisement etc…In fact, as is admitted, the Respondent is also the registered proprietor of its mark.”Finally stating that Appellants' mark 'KRB' is similar to the Respondent's registered mark 'KRBL', the High Court dismissed the appeal.Appearance: Mr. Rajshekhar Rao, Sr. Adv. with Mr. Sumit K. Batra, Mr. Manish Khurana, Mr. Ajay Sabharwaland Ms. Priyanka Jindal, Advs for Appellants; Mr. Jayant Mehta, Sr. Adv. with Mr. Aniruddha Bakhru, Mr. Shravan Kumar Bansal, Mr. Rishi Bansal, Ms. Kanupriya Sabharwal, Ms. Ayushi Arora and Mr. Ranjit Sinha, Advs for RespondentCase title: KRB Enterprises & Ors. v. M/S. KRBL LimitedCitation: 2025 LiveLaw (Del) 638Case no.: FAO (COMM) 69/2024Click here to read order

Not Necessary To Use Trademark In Physical Form, May Be Used In Any Other Relation To Goods: Delhi High Court

Kapil Dhyani

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