Delhi High Court Cancels 'STONEX WORLD' Mark for Deceptive Similarity with 'STONEX'

The Delhi High Court on 10 August 2026 ordered the cancellation of the trademark "STONEX WORLD" registered in favour of Mohit Kumawat, finding it deceptively similar to the "STONEX" marks owned by Stonex India Private Limited. Justice Jyoti Singh allowed the rectification petition under Section 57 of the Trade Marks Act, 1999, and directed the Registrar of Trade Marks to remove the mark from the Register within eight weeks.

A Tale of Two Marks and a Fragmented Device

Stonex India, a company specializing in luxury marble and natural stones, has used the "STONEX" mark since 2003. It holds registrations for the word mark STONEX and various derivative device marks across multiple classes and jurisdictions. The petitioner alleged that Mohit Kumawat dishonestly adopted a device mark containing the abbreviation "SW" but deliberately omitted the words "STONEX WORLD" when filing his application for registration in Class 19.

The first Examination Report dated 10 October 2023 specifically flagged this discrepancy, directing the applicant to file Form TM-M "to confine the TRADEMARK as device uploaded by the Applicant does not contain the word STONEX WORLD." Instead of confining the mark to the incomplete device, Kumawat filed a TM-M claiming the omission was a clerical error and sought to include the full words. The Registry accepted this without any further substantive examination.

Procedural Manipulation Exposed

The court expressed serious concern over the manner in which the trademark was registered. Justice Jyoti Singh noted that Respondent No. 2 (the Registrar) was aware that an incomplete device had been uploaded but allowed the mark to proceed with the added words "STONEX WORLD" without conducting a fresh search for conflicting marks.

"If Respondent No. 2 knew that an incomplete fragmented device mark, without the words STONEX WORLD, was uploaded in the first instance and a direction was already issued to Respondent No. 1 to confine the mark to the uploaded device, why was the device mark accepted with the words STONEX WORLD and that too, without even enquiring whether this was a mere clerical error or a deliberate omission."

The second Examination Report dated 12 February 2024 dealt only with a correction of the proprietor category, and at no stage did the Registry cite Stonex India's earlier marks as conflicting. The court termed this "a serious procedural violation" that allowed Kumawat to "succeed in its design to obtain registration in the absence of Petitioner's marks being cited as conflicting marks." Notably, Kumawat did not appear in court and was proceeded against ex parte .

Dominant Mark Test Settles the Issue

On the merits of deceptive similarity, the court applied the dominant mark test. It found that "STONEX" is the essential feature of both marks and that the addition of "WORLD" was insufficient to distinguish them. Citing the Division Bench decision in South India Beverages Pvt. Ltd. v. General Mills Marketing & Anr. and the Supreme Court's recent ruling in Pernod Ricard India Private Limited and Another v. Karanveer Singh Chhabra , the court observed:

"Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for identification of the product and usually, the dominant portion of the mark is that which has the greater strength or carries more weight."

Given that the goods are identical (marbles, granites, stones, and allied products) and share common trade channels and consumer base, the court held there was "every likelihood of confusion amongst members of the public," making the registration contrary to Section 11(1) of the Trade Marks Act .

Final Order and Implications

The court allowed the petition and cancelled the registration of "STONEX WORLD" under Application No. 5957794 in Class 19. It directed the Registrar to remove the entry from the Register within eight weeks "for the sake of maintaining its purity."

The judgment reinforces that procedural shortcuts in trademark registration will be strictly scrutinised, and that the dominant mark principle remains a vital tool in assessing deceptive similarity. It also serves as a warning to applicants who attempt to manipulate the examination process by filing incomplete representations of their marks.

"For both the abovestated reasons, impugned registration cannot be sustained in law. Thus the petition is allowed, cancelling registration of the impugned mark."