Deceptive similarity of trade marks can lead to cancellation of registrations under the Trade Marks Act, prioritizing the rights of prior users over subsequent registrations.

JUDGMENT :

TEJAS KARIA, J.

1. The present Petitions have been filed seeking rectification of the Register of Trade Marks by cancellation/removal of the Trade Mark and the Device Mark registered in favour of Mr. Dhruv Singh i.e. Respondent No. 1, which are “FUNSHINE” and (“Impugned Marks”) bearing Application number 3583213 and 3583212 respectively in Class 30, on account of being deceptively and identically similar to Petitioner's Trade Mark, i.e., “FUNFINE”, and other allied Trade Marks.

2. The present Petitions have been transferred from the Intellectual Property Appellate Board (“IPAB”) consequent upon the abolition of IPAB, and upon promulgation of the Tribunals Reforms (Rationalization and Conditions of Service) Ordinance, 2021.

FACTUAL BACKGROUND

3. The Petitioner is the sole proprietor of M/s Parul Food Products. The Petitioner is engaged in the business of manufacturing and marketing of Puffs, Namkeen, Biscuits, Rusk, Chips and Confectionery goods falling in Class 30 since the year 2005. The first registration obtained by the Petitioner with respect to “FUNFINE” was the “FUN FINE (LABEL)” which was obtained through an Application bearing no.1743394 dated 14.10.2008.

4. The Petitioner holds the proprietorship of the Trade Mark, Label and Artistic Work “FUNFINE”, in respect of the said goods falling under Class 30 and started using the Trade Mark, Label and Artistic Work “FUNFINE” since 01.04.2005.

5. In order to distinguish its goods from those of its competitors and to establish and secure its statutory rights under the Trade Marks Act, 1999 (“Trade Marks Act”), the Petitioner has filed multiple Trade Mark applications, several of which have been duly registered, while others are pending. In particular, the Petitioner is the registered proprietor of the following Trade Marks in Class 30:

6. The Petitioner is also the original conceiver, adopter and user of the artistic work “FUNFINE” and it has been continuously, extensively and openly using the distinctive artistic work “FUNFINE” having unique colour combinations, layout and lettering style in relation to the said goods since the year 2005. The aforesaid artistic work used by the Petitioner is an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 (“Copyright Act”).

7. The Petitioner is the registered proprietor of the original artistic works “FUNFINE” under Copyright Registration bearing nos. A-96975/2013, A-108162/2013, A-108161/2013, A-108163/2013, A-108160/2013, A-114602/2015, A-117482/2017, A-117481/2017, A-115976/2017, A-115980/2017, A-118692/2017, A-118695/2017, A-126473/2018, A-146471/2018, A-126472/2018, A-126470/2018, A-125487/2018, A-126468/2018, A-126464-2018, A-126467/2018, A- 126469/2018.

8. Since its adoption by the Petitioner, the Trade Mark and Artistic Work consist of the term “FUNFINE” as its prominent feature, which not only forms part of the Trade Name of the Petitioner but is also distinctively associated with