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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
BPI Sports LLC - Petitioner
Versus
Saurabh Gulati and Another - Respondents
C.O. (COMM. IPD-TM) 16 of 2021 & I.A. 13589 of 2021
Decided On : 27-04-2023
The petitioner, a US company, sought rectification of the register of trademarks by removal of the trademark “BPI SPORTS” registered in favor of Respondent 1 in Class 5 for “health food supplements, dietary supplements and nutritional supplements.” The petitioner claimed prior adoption and use of the mark in the US and common law rights over it, alleging that Respondent 1 fraudulently obtained registration based on proposed to be used basis, with no intention to use the mark. The petitioner relied on judgments recognizing transborder reputation and goodwill, arguing that the mark had acquired a reputation in India through imports and online presence. The Court analyzed the principles of passing off, territoriality, and the requirement of goodwill and reputation in the country of the defendant. It found that the petitioner failed to establish sufficient transborder reputation and goodwill in India to support a passing off action. However, the Court held that the respondent’s actions amounted to “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Act, as the respondent had registered the petitioner’s mark with no intention to use it and to block the petitioner’s attempt to register it. The Court directed the removal of the impugned mark from the register of trademarks.
Fact of the Case:
The petitioner, a US company, sought rectification of the register of trademarks by removal of the trademark “BPI SPORTS” registered in favor of Respondent 1 in Class 5 for “health food supplements, dietary supplements and nutritional supplements. The petitioner claimed prior adoption and use of the mark in the US and common law rights over it, alleging that Respondent 1 fraudulently obtained registration based on proposed to be used basis, with no intention to use the mark. The petitioner relied on judgments recognizing transborder reputation and goodwill, arguing that the mark had acquired a reputation in India through imports and online presence.
Finding of the Court:
The Court analyzed the principles of passing off, territoriality, and the requirement of goodwill and reputation in the country of the defendant. It found that the petitioner failed to establish sufficient transborder reputation and goodwill in India to support a passing off action. However, the Court held that the respondent’s actions amounted to “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Act, as the respondent had registered the petitioner’s mark with no intention to use it and to block the petitioner’s attempt to register it.
Issues: 1. Whether the petitioner had established sufficient transborder reputation and goodwill in India to support a passing off action? 2. Whether the respondent’s actions amounted to “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Act?
Ratio Decidendi: 1. The Court held that the petitioner failed to establish sufficient transborder reputation and goodwill in India to support a passing off action. The Court applied the principles of territoriality and the requirement of goodwill and reputation in the country of the defendant, finding that the petitioner’s evidence of imports, online presence, and advertisements was insufficient to establish the necessary goodwill and reputation in India. 2. The Court held that the respondent’s actions amounted to “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Act. The Court found that the respondent had registered the petitioner’s mark with no intention to use it and to block the petitioner’s attempt to register it, constituting “trademark squatting” and a breach of good faith.
Final Decision: The Court directed the removal of the impugned mark from the register of trademarks.
JUDGMENT :
C. HARI SHANKAR, J.
The lis
1. This is a petition under Section 57 of the Trade Marks Act, 1999. The petitioner seeks rectification of the register of trade marks by removal, therefrom, of the trademark “BPI SPORTS” registered as a word mark in favour of Respondent 1 in Class 5 of the NICE classification, for “health food supplements, dietary supplements and nutritional supplements”.
2. The case set up by the petitioner is, fundamentally, that Respondent 1 has fraudulently obtained registration of the impugned mark BPI SPORTS, which belongs to the petitioner and stands registered in its favour, albeit in the US. The petitioner alleges that Respondent 1 is resorting to trade mark squatting, as it has no intention of using the mark BPI SPORTS and has merely got the mark registered in its favour, so as to avoid the mark being registered in favour of the petitioner.
Facts
3. The petitioner is a company incorporated in Florida, USA. It claims to be a leading player in the dietary and nutritional supplements sector. The word mark “BPI SPORTS” and the device mark stand registered in favour of the petitioner on 15th July 2014 and 28th November 2017 respectively in the US, in Class 5 in respect of dietary and nutritional supplements. The petitioner claims to have been using the said mark “BPI SPORTS” for dietary and nutritional supplements since 28th January 2009. As per the averments in the petition, the petitioner commenced using the mark “BPI SPORTS” in India in January 2019. As such, even as on date, the petitioner has, to its credit, only four years' experience of use of the asserted mark “BPI SPORTS” in India.
4. The petitioner claims that Respondent 1 was one of the persons who was importing the goods of the petitioner in India, under the mark [IMAGE]. According to the petitioner, Respondent 1 surreptitiously applied and obtained registration, in its favour, of the word mark BPI SPORTS in Class 5 for health food supplements, dietary supplements and nutritional supplements. Application No. 4422891 was submitted by Respondent 1, for the said registration on 28th January 2020, on “proposed to be used” basis, and the word mark BPI SPORTS was registered in favour of Respondent 1 with effect from the said date vide certificate dated 26th September 2020. It is this registration of which the present petition seeks evisceration from the register of trade marks.
5. The petitioner came to learn of the impugned registration of the mark BPI SPORTS in favour of Respondent 1 on 20th May 2021, when the petitioner submitted Application No. 4978941 to the office of Registrar of Trade Marks for registration of the device mark [IMAGE] in its favour.
6. The petitioner, by the present petition under Section 57[57. Power to cancel or vary registration and to rectify the register.-
(1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.] of the Trade Marks Act, 1999, seeks removal of Respondent 1's word mark ‘BPI Sports’ from the register of Trade Marks and consequent rectification of the register.
7. Notice was issued in this petition on 21st October 2021. As Respondent 1 did not choose to appear despite service of notice, this Court proceeded ex parte against Respondent 1 vi
The registration of a trademark with no intention to use it and to block the petitioner’s attempt to register it constitutes “bad faith” within the meaning of Section 11(10)(ii) of the Trade Marks Ac....
The main legal point established in the judgment is the requirement for evidence of goodwill and reputation in the Indian market to establish the spillover of transnational reputation for a trade mar....
Dishonest adoption of identical abbreviated mark in same field, without bona fides explanation and false prior use claim, defeated by prior global/India rights via registrations, franchises, domains,....
A trade mark that is phonetically and visually identical to a well-known mark, if registered without bona fide intent and in bad faith, is liable to be removed from the Register of Trade Marks under ....
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
Prior adoption and user rights establish entitlement to trademark protection, and their absence undermines claims for rectification, regardless of phonetic similarity.
A claim of passing off depends on demonstrating substantial goodwill and reputation within the domestic market at the time of a mark’s adoption. Global recognition is insufficient without objective e....
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