Prior users have superior rights over registrants in trademark disputes, particularly when bad faith is evident in adoption.

JUDGMENT

Preface:

1. The petitioner, by way of the present rectification petition filed under Section 57 of the Trade Marks Act, 1999 , [1Hereinafter referred as “TM Act], seeks cancellation of the trademark ‘BLUE-JAY’ registered in favour of the respondent nos.1 and 2 vide trademark application no.815236 in Class 25, and its consequent removal from the Register of Trade Marks.

Brief Facts:

2. The petitioner is a company duly organised and existing under the laws of the State of New York, USA, having its address at 1271, Avenue of the Americas, New York, NY 10020, United States of America. The petitioner is the intellectual property holding company of Major League Baseball, [2Hereinafter referred as “MLB] and controls the licensing and merchandising of all MLB Clubs as well as the affiliated entities of MLB.

3. The petitioner adopted the trademark ‘BLUE JAYS’/ ‘TORONTO BLUE JAYS’ in 1976 in connection with the MLB franchise based in the city of Toronto and has since continuously using the trademark and its variations. Moreover, the petitioner’s trademark has been registered in numerous jurisdictions and countries around the world, including the USA, UK, EU, Australia, Brazil, China, and South Korea, among others.

4. Relevantly, the petitioner being the owner of various iterations of BLUE JAYS mark(s), [3Hereinafter collectively referred as “BLUE JAYS marks] in India, has filed the following applications:

5. Additionally, the petitioner maintains its official websites viz. https://www.mlb.com and www.mlb.com/bluejays, through which its merchandise and services are made available to consumers all around the world. The petitioner also has a substantial presence across various social media platforms.

6. The respondent nos.1 and 2 are the partners of a partnership firm trading as M/s. PMS Creations, having its address at 70B/32 A, Rama Road Industrial Area, New Delhi-110015 and are engaged in manufacturing and trading of shirts, blazers, suits, waist coats, pants, trousers, jeans, jackets and readymade garments and other allied and cognate goods under the impugned mark ‘BLUE-JAY’. The respondent no.3 is the Registrar of Trade Marks.

7. The present dispute arises out of the adoption of the impugned mark ‘BLUE-JAY’ by Mr. Ajay Kumar Gupta and Mr. Sumit Vijay, trading as A.S. Creation, [4Hereinafter referred as the “erstwhile applicants], who, after adopting the said mark, applied for its registration on a ‘proposed to be used’ basis vide application no.815236 on 19.08.1998 in Class 25. The said mark was subsequently advertised in Journal No.9999-0, and was published on 25.08.2003.

8. Upon becoming aware of the advertisement of the impugned mark ‘BLUE-JAY’, the petitioner filed a Notice of Opposition on 03.02.2004, in response to which the erstwhile applicants filed their Counter Statement on 09.11.2004.

9. In the meanwhile, the erstwhile applicants, by virtue of an Assignment Deed dated 22.07.2011, assigned the impugned mark ‘BLUE- JAY’ in favour of M/s. PMS Creations, of which respondents nos.1 and 2 are partners.

10. As the petitioner was unable to file its evidence in support of the Notice of Opposition within time, it filed an Interlocutory Petition seeking condonation of delay in filing the same. However, the Deputy Registrar of Trade Marks vide its order dated 08.10.2015, held that the Notice of Opposition was deemed to have been abandoned and accordingly dismissed the same. Aggrieved thereby, the petitioner preferred an appeal vide Appeal no.OA/6/2016/TM/DEL before the erstwhile Intellectual Property Appellate Board, however, after its abolition, the same was transferred to this Court and was numbered as C.A.(COMM.IPD-TM) 152/2022.

11. Meanwhile, since the impugned mark ‘BLUE-JAY’ proceeded for registration on 08.06.2017,