Registration of a trademark may be cancelled if it is found to be deceptively similar to a prior registered mark and has not been used for five years, reflecting both private and public interest.

JUDGEMENT :

JYOTI SINGH, J.

1. This rectification petition is filed on behalf of the Petitioner under Sections 47 and 57 of The Trade Marks Act, 1999 (‘1999 Act’) for a direction to the Registrar of Trade Marks to remove the entry in the Register in respect of Registration No. 3713450 in Class 09 in respect of trademark ‘ACCKO’.

2. To the extent necessary, the facts as canvassed in the petition are that Petitioner was incorporated in the year 2016 and is the holding company for Acko General Insurance Limited, the first digital company in India to receive a license from IRDAI on 18.09.2017, renowned for its insurance products that are simple, convenient, customer friendly and priced appropriately. Acko was incorporated with an inspiration to build insurtech solutions and products that could define and accelerate the next wave of insurance penetration in India. Petitioner by itself currently provides services focused on auto insurance and mobile products and appliances such as repairing, servicing of electronic or mechanical gadgets, household appliances etc., and is in the process of creating a high transaction volume- automated pricing and underwriting technology, which insurance companies can use to cater to newer customers faster.

3. It is stated in the petition that Petitioner is the registered proprietor of the mark ACKO HEALTH in Class 09 in respect of “Downloadable software in the nature of a mobile application or website that provides access to information advise, food and exercise databases and circulation tools in the fields of diet, weight loss, diet planning and lifestyle wellness”. ACKO is the predominant feature of its corporate name as well as the name of its subsidiary. The mark ACKO also serves as house mark of the Petitioner/Acko Group along with its distinct and unique stylized representation

. In India, the mark was registered on 01.12.2017 in Classes 38 and 42 with first user dating back to 2016. The mark ACKO has been declared as a ‘well-known’ trademark and finds inclusion in the list of well-known trademarks under Application No. 816729 published in Trade Marks Journal No. 2144 dated 19.02.2024. The regsitrations secured by the Petitioner are as follows:-

4. It is averred that Petitioner has been vigilant in protecting its intellectual property rights vis-a-vis third parties and has actively taken steps to enforce its rights in the trademark ACKO by sending cease and desist notices to third parties using the mark ACKO and has also filed cancellation/rectificaiton petitions.

5. In this petition, grievance of the Petitioner relates to Respondent No.1’s unauthorized adoption and registration of the mark ‘ACCKO’ under number 3713450 in Class 09, which Petitioner claims is deceptively similar, both visually and phonetically, to Petitioner’s prior adopted and distinctive as also well-known registered trademark ACKO in respect of “mobile and accessories”. Respondent No.1 applied for registration of the impugned mark on 28.12.2017 on ‘proposed to be used’ basis and the mark was registered on 28.01.2018 in the name of Respondent No.1.

6. Learne