Inapplicability of "Section 11(1) and 11(2) When the Mark Is not an 'Earlier Trademark': Delhi HC Reiterates

Recently, the Delhi High Court in Kia Wang Versus The Registrar Of Trademarks & Anr. reiterated that when the mark in question is not an ‘earlier trade mark’, Sections 11(1) and 11(2) are inapplicable. Facts IN 2014, the Petitioner and his wife established ROCKPAPA, a brand dedicated to designing, manufacturing, and distributing various children's products, such as headphones, pencil boxes, and school bags, etc. The Petitioner is actively engaged in product design, manufacturing, and research, with a particular focus on headphones, audio equipment, stereo headphones, high-fidelity loudspeakers, earphones, and audio speakers. He also registered the domain www.rockpapa.com in the same year for selling and promoting the products. The Petitioner claimed worldwide popularity for his products, including Australia, Canada, Europe, the USA, and India. The Petitioner was also selling his products through the Amazon. He also registered the mark 'ROCKPAPA' in different countries. In 2020, Respondent No. 2 applied for the registration of the contested mark in India and obtained registration. In 2021, the Petitioner came to know about the registration of the contested mark, and therefore, this Petition was filed for the removal of the contested mark and rectification of the Register of Trade Marks under Sections 47, 57, and 125 of the Trade Marks Act, 1999 (the Act). The grounds for rectification: The Petitioner challenged the registration on the following grounds: · The Petitioner is the first to adopt and use the trademark, which means he has a stronger claim over the contested mark than Respondent No. 2. Therefore, the registration of the trademark by Respondent No. 2 cannot stand. · The Contested mark lacks distinctiveness and is incapable of distinguishing the goods or services in respect of which it is registered from goods or services of another. It fails to meet the requirements outlined in Section 9(1)(a) of the Act. · The contested mark possesses an inherent capacity to deceive the public and create confusion due to its resemblance to the Petitioner's mark. Consequently, it requires removal, according to Section 9(2)(a) read with Section 57 of the Act, from the Register. · The contested mark bears a deceptive or confusing resemblance to the Petitioner's trademark, particularly concerning similar goods within the same class. This creates a substantial risk of the public either being confused or associating it with the Petitioner's mark. Thus, this registration contravenes Section 11(1) of the Act. · Respondent No. 2's trademark registration infringes Section 11(2) of the Act because the Petitioner's trademark is a well-known mark. The use of a deceptively similar trademark by Respondent No. 2 harms the distinctiveness of the Petitioner's well-known mark. · The use of the contested mark by Respondent No. 2 requires prohibition under the common law of passing off in accordance with Section 11(3) of the Act. The Court issued notices to Respondent No. 1, the Registrar of Trade Marks, and Respondent No. 2, Mr. Sachin Garg, the proprietor of Pooja Creations. In the absence of any representation, the Court proceeded ex parte against Respondent No. 2. Inapplicability of Section 11(1) and 11(2, when the mark isn't an 'earlier trademark': The Court highlighted that the underlying connection between Section 11(1) and Section 11(2) is the identity/similarity with an 'earlier trade mark'. The said expression is defined under the Explanation subsequent to Section 11(4). The Court noted that the Petitioner fails to substantiate their case under any of the categories outlined in the Explanation. This is because the Petitioner's trademark is not registered in India, nor is it covered by an application under Section 18, Section 36E, or Section 154 of the Act. Additionally, the Court observed that the Petitioner’s mark is not a 'well-known trade mark' as defined under Section 2(1)(zg) of the Act. The Petitioner did not sufficiently state in his pleadings that his mark satisfies all the elements to qualify as a well-known trademark, as provided by Section 11(6) of the Act. Also, the contested mark has not been declared a well-known trademark by the Registrar or any Court. Relying on the decision of BPI Sports LLC v. Saurabh Gulati and Another, the Court held that the Petitioner's trademark does not qualify as an 'earlier trademark' within the scope of Section 11(1) and (2), and these provisions are of no aid to him (see para 14-16). Petitioner establishes his prior use: The Court observed that the Petitioner successfully established that he is the prior user of the contested mark and has been using the mark since 2014. The Court casted a glance at several decided judgements and outlined the following points regarding the issue of prior use: · The test is--who is...

Inapplicability of "Section 11(1) and 11(2) When the Mark Is not an 'Earlier Trademark': Delhi HC Reiterates

Masoom Reza