Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2025 Supreme(Online)(Bom) 173097

HIGH COURT OF BOMBAY
R.I. Chagla, J
Le Shark Apparel Limited – Appellant
Versus
Anil Shah – Respondent
COMMERCIAL MISCELLANEOUS PETITION NO. 538 OF 2022

Advocates:
For the Appellants/Petitioners: Rohan Kadam, Rucha Vaidya, Dominic Alvares, Manosij Mukharjee, Pooja Gupta, Ritik Gupta, Suvarna Joshi
For the Respondents: Lakshyaved R. Odhekar, Omkar N. Mhasde

A registered trademark may be rectified and expunged if it is proved to have been adopted fraudulently, lacks bonafide intention for use, or if the proprietor relies on fabricated documentation to sustain claims of continuous and genuine commercial use of the mark.

Headnote:(A) Trade Marks Act, 1999 - Sections 47 and 57 - Rectification of register - Removal of registered trademark - For want of bonafide intention to use and absence of bonafide use - Submission of fabricated documents - Adverse inference from false proof - Exercise of power to maintain purity of the register. (Paras 62, 63, 64, 65, 82)

(B) Locus Standi - Person aggrieved - Test of legal injury - Likelihood of damage by infringing mark remaining on register - Commercial interest in accessing market with own trademark provides standing for rectification petition. (Paras 20, 78)

Facts of the case:
The petitioner sought rectification of a registered trademark on the grounds of non-use and fraudulent adoption. The petitioner, having international presence, asserted that the respondent’s registered mark was an identical copy of its own, conceived without any bonafide intention to use it in the country. The respondent contended long-standing use and generated goodwill, relying on submitted invoices to support these claims. The petitioner challenged the authenticity of these documents, citing discrepancies in dates and business entities involved.

Findings of Court:
The court observed that the challenged mark was a virtual replica of the petitioner's prior international registration. It found that the evidence of use presented by the respondent was based on fabricated invoices that were clearly inconsistent with corporate existence records. Consequently, the court held that the mark was born of fraud and that the respondent had failed to satisfy the requirement of bonafide use, thus failing to justify the continued retention of the mark on the register.

Issues: The main issues were whether the registered proprietor possessed a bonafide intention to use the mark; whether the mark had been used bona fide for the continuous periods prescribed under the statute; whether the mark was adopted through fraudulent means; and whether the petitioner possessed the required standing to seek removal of the entry.

Ratio Decidendi: A registered trademark is vulnerable to rectification when it is demonstrated that the mark was adopted through fraudulent means and that the registered proprietor has failed to provide reliable evidence of bonafide use. The submission of fabricated documents to sustain a claim of use disentitles the proprietor to seek any equitable consideration, and the court is duty-bound to ensure the purity of the register by expunging such marks.

Result: Petition allowed; registered trademark expunged from the register.

Table of Content
1. establishing the factual history and timeline of trademark registration and ownership. (Para 1 , 2)
2. petitioner's contention for rectification based on non-use and fraud under sections 47 and 57 of the act. (Para 3 , 4 , 5 , 6 , 7 , 8 , 9 , 10 , 11 , 12 , 13 , 14 , 15 , 16 , 17 , 18 , 19 , 20 , 21 , 22 , 23 , 24 , 25 , 26 , 27 , 28)
3. respondent's defense regarding maintainability, lack of evidence of petitioner's usage, and standard of proof for rectification. (Para 29 , 30 , 31 , 32 , 33 , 34 , 35 , 36 , 37 , 38 , 39 , 40 , 41 , 42 , 43 , 44 , 45 , 46 , 47 , 48 , 49 , 50 , 51 , 52 , 53 , 54 , 55 , 56 , 57 , 58 , 59 , 60)
4. court’s analysis regarding fraudulent intent, reliance on fabricated evidence, and requirements for trademark rectification. (Para 61 , 62 , 63 , 64 , 65 , 66 , 67 , 68 , 69 , 70 , 71 , 72 , 73 , 74 , 75 , 76 , 77 , 78 , 79 , 80 , 81 , 82)
5. final order granting rectification and removing the impugned trademark from the register. (Para 83 , 84)

JUDGMENT :

1. By this Commercial Miscellaneous Petition, the Petitioner is seeking rectification of the Respondents’ registered Trade Mark No. 466002 registered in Class 25 for, “Articles of Clothing, including Boots, Shoes and Slippers, Scarves and Raincoats” under Sections 47 and 57 of the Trade Marks Act, 1999 (“the Act”).

2. The brief background of material dates and events are as under :-

(i) The trademark “LESHARK” and the device, which is claimed by the Petitioner to be a unique, original and fanciful portmanteau of ‘Le’ and ‘Shark’ with a unique graphic of a shark was conceived and adopted by the predecessors of the Petitioner in United Kingdom (Le Shark Limited) in the year 1984.

(ii) The Petitioner’s predecessor (Le Shark Limited) was granted registration of the device mark in the United Kingdom in Class 25 (shirts, T-shirts, jumpers, trousers) under Registration No. UK00001218623 on 14th May 1984.

(iii) The Petitioner’s predecessor (Le Shark Limited) was granted registration for the device mark in the United Kingdom in Class 25 (shirts, T-shirts, jumpers, trousers) under Registration No. UK00001219092 on 18th May 1984.

It is pertinent to note that subsequent to Le Shark Limited, the said mark was owned by Joseph Leshark Limited in 1988 who assigned it back to Leshark Limited on 19th January 1995. Leshark Limited assigned the mark to Hamsard 2353 Grabal Alok on 10th November 2005 who further assigned the mark to the Petitioner.

(iv) The Petitioner’s predecessor (Le Shark Limited) was granted registration of the mark in United Kingdom in Class 25 (shirts, T-shirts, jumpers, trousers) under Registration No. UK00001220074 on 5th June 1984.

(v) The Petitioner’s predecessor (Le Shark Limited) was granted registration of the mark in the United Kingdom in Class 25 (shirts, T-shirts, jumpers, trousers) under Registration No. UK00001250917 on 16th September 1985.

(vi) The Petitioner’s predecessor in the 1980’s and 1990’s had considerable goodwill and had its associates / affiliates in India. The Petitioner’s predecessor through one of its affiliates Aldgate Warehouse (Wholesale) Limited used to source its clothing materials from manufacturers in the Indian subcontinent.

It is pertinent to note that the Respondents manufactured garments for Aldgate Warehouse (Wholesale) Limited.

(vii) The Petitioner’s predecessor’s mark was registered in France and Benelux in the year 1987.

(viii) Respondent No. 1 applied for registration of the impugned mark under Application No. 466002 in Class 25 for articles of clothing, including boots, shoes and slippers, scarves and raincoats in India on a ‘proposed to be used basis’ on 13th January 1987.

It is the Petitioner’s case that this mark is identical to the trademark registered by the Petitioner’s predecessor in UK under Registration No. UK00001250917.

(ix) On 15th October 1991, the impugned mark was granted registration by Respondent No. 3.

(x) The Petitioner’s predecessor obtained registration of the trademark i

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2025 Supreme(Online)(Bom) 173097

HIGH COURT OF BOMBAYR.I. Chagla, JLe Shark Apparel Limited – AppellantVersusAnil Shah – RespondentCOMMERCIAL MISCELLANEOUS PETITION NO. 538 OF 2022

A registered trademark may be rectified and expunged if it is proved to have been adopted fraudulently, lacks bonafide intention for use, or if the proprietor relies on fabricated documentation to sustain claims of continuous and genuine commercial use of the mark.

Cases Referred (5)

HIGH COURT OF BOMBAY
R.I. Chagla, J
Le Shark Apparel Limited – Appellant
Versus
Anil Shah – Respondent
COMMERCIAL MISCELLANEOUS PETITION NO. 538 OF 2022