Prior use and established reputation of a trademark can lead to cancellation of later registrations that may cause consumer confusion.

JUDGMENT :

AMIT BANSAL, J.

1. The present rectification petitions have been filed under Sections 47 and 57 of the Trade Marks Act, 1999 seeking rectification/ cancellation of registrations of the impugned mark ‘RAPIDO’ the details of which are as follows:

i. Trade Mark No. 4459206 in class 39 dated 2^nd March, 2020.

ii. Trade Mark No. 4459194 in class 12 dated 2^nd March, 2020.

iii. Trade Mark No. 4459197 in class 25 dated 2^nd March, 2020.

iv. Trade Mark No. 4459208 in class 42 dated 2^nd March, 2020.

PROCEEDINGS IN THE PETITIONS

2. Notices in the present petitions were issued to the respondents on 31^st May, 2024. The respondent no.1, which is the contesting respondent, was served through ordinary mode on 5^th July, 2024 and through speed post on 1^st August, 2024.

3. Despite service, neither an appearance has been made on behalf of the respondent no.1, nor did he file any reply to the petitions.

4. Accordingly, the right of the respondent no.1 to file reply to the petitions was closed vide the Order of Joint Registrar dated 4^th December, 2024 and the respondent no.1 was proceeded against ex-parte.

5. Even today, none appears on behalf of respondent no.1.

BRIEF FACTS

6. The petitioner was incorporated in the year 2015 and is engaged in the business of providing innovative bike-taxi solutions under the marks ‘RAPIDO’ and ‘ ’ (hereinafter ‘RAPIDO marks’). As on date, the petitioner has a pan-India presence and is present in 24 states and 117 cities in India.

7. The petitioner registered its domain www.rapido.bike on 23^rd September, 2015. The petitioner primarily operates through its mobile application which was launched on 30^th September, 2015 and is available for download from Google Play Store and Apple Store, among others. The petitioner’s application for customer has been downloaded more than 50 million times from Google Play Store and has an average rating of 4.5 from over 2.1 million reviewers. Further, on Apple Store, the petitioner’s application has an overall rating of 4.8 from over 8.9 lakh reviewers. Since its incorporation, the petitioner has earned tremendous goodwill and reputation under the RAPIDO marks among its customers.

8. The petitioner holds multiple trade mark registrations for its RAPIDO marks in classes 39 and 42. The earliest registration in favour of the petitioner is for the mark ‘ ’ in Class 39 with effect from 14^th November, 2017.

9. The details of the revenue generated by the petitioner from the financial year 2014-15 to 2022-23 have been provided in paragraph no.16 of the petitions. Pertinently, the revenue of the petitioner for the financial year 2022-23 is over Rs. 497 crores, i.e., almost 500 crores.

10. The details of the advertisement expenditure incurred by the petitioner from the financial year 2018-19 to 2022-23 is given in paragraph no.18 of the petitions. The expenditure incurred by the petitioner towards advertisement activities in the financial year 2022-23 is to the tune of ₹240 crores.

11. Further, many vehicles (which fall in class 12) used by the petitioner in providing its services bear the RAPIDO marks and the petitioner’s captains riding the vehicles of the petitioner wear the clothing (which fall in class 25) supplied by the petitioner, which also prominently bear the RAPIDO marks. The aforesaid is evident from the example provided by the petitioner in paragraph no.13 of the petitions, which is also extracted below for ease of reference:

12. The petitioner’s business under the RAPIDO marks has received wide media and public attention and the petitioner and its RAPIDO marks have been featured on reputed channels/ platforms including The Times of India, Forbes India, India Today, Live Hindustan and BW Dispute.

13. The petitioner is aggrieved by the fact that the respondent no.1 has obtained registration of the word mark ‘RAPIDO’ in classes 39, 12, 25 and 42, which are the subject matter of present petitions.

SUBMISSIONS OF THE PETITIONER

14. Ms. Aishwarya Kane, appearing on behalf of the petitioner, submits