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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Yves Saint Laurent Parfums S. A. – Appellant
Versus
Vinod Asrani, Trading As M/s St Louis Inc – Respondent
C.O. (COMM.IPD-TM) 369 of 2022
Decided On : 21-08-2023
Rectification - Trade Marks Act - The court directed the Registry of Trade Marks to remove the impugned mark 'WHITE OPIUM' from the register as it had expired and the respondent did not intend to use it in the future.
Fact of the Case:
The petitioner challenged the registration of the word mark 'WHITE OPIUM' in favor of the respondent under Section 57 of the Trade Marks Act.
Finding of the Court:
The court directed the Registry of Trade Marks to rectify the register by removing the impugned mark 'WHITE OPIUM' as it had expired and the respondent did not intend to use it in the future.
Issues: Challenge to registration of word mark, expiration of the mark, intention of future use by respondent
Ratio Decidendi: The court's decision was influenced by the expiration of the mark and the respondent's statement of not intending to use it in the future.
Final Decision: The petition was disposed of with the direction to rectify the register by removing the impugned mark 'WHITE OPIUM'.
ORDER (Oral)
1. This is a rectification petition by the petitioner under Section 57 of the Trade Marks Act challenging the registration of the word mark "WHITE OPIUM" in favour of the respondent in Class 3 vide registration no. 2085079 with effect from 14 January 2011.
2. Ms. Meenu Sharma, learned Counsel for the respondent submits, on instructions, that the mark has expired by efflux of time as has not been renewed and her client does not intend to use the said mark in future or any further.
3. As such, the Registry of Trade Marks is directed to rectify the register by removal therefrom of the impugned mark "WHITE OPIUM" registered in favour of the respondent vide registration no. 2085079 dated 14 January 2011.
4. This petition is disposed of in the aforesaid terms.
The expiration of a registered mark and the lack of intention to use it in the future can lead to its removal from the register.
The court can order the removal of a registered mark from the register of Trade Marks if the respondent expresses no objection to its removal.
The court prioritized peaceful resolution and familial harmony in disposing of the petitions seeking rectification of the register of Trade Marks.
The main legal point established in the judgment is that a rectification petition seeking removal of a device mark from the register of trade marks must establish a fresh cause of action for rectific....
The impugned mark was ineligible for registration due to similarity with an earlier trade mark, as per Section 11(1)(b) of the Trade Marks Act.
The central legal point established in the judgment is the application of Section 11(1)(b) of the Trademarks Act to determine the likelihood of confusion based on phonetic similarity and the priority....
Registered trademarks can be removed for non-use exceeding five years, reinforcing the burden of proof on the registered proprietor to demonstrate genuine usage.
In a case where issue of invalidity is raised or arises independent of a suit, prescribed statutory authority will be sole authority to deal with matter.
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