2026 Supreme(Del) 467

THE HIGH COURT OF DELHI AT NEW DELHI
Tushar Rao Gedela, J.
Panasonic Holdings Corporation & Anr.- Petitioners
Versus
Siddharth Vij & Anr. - Respondents
C.O. (COMM.IPD-TM) 171 of 2025, I.A. 18595 of 2025 & I.A. 18596 of 2025, C.O. (COMM.IPD-TM) 172 of 2025, I.A. 18603 of 2025 & I.A. 18604 of 2025
Decided On : 05-06-2026

Registration of a trademark identical or deceptively similar to an existing, established mark, without credible, contemporaneous justification for its adoption, constitutes an entry made without sufficient cause, warranting removal under trademark rectification provisions.

Headnote:(A) Trademarks Act, 1999 - Sections 47 and 57 - Removal and rectification of the register - Deceptive similarity between marks - Standard for determining confusion - Triple identity test - Likelihood of confusion among average consumers - Adoption of a mark with prior knowledge of an existing, established mark - Conclusiveness of registration objections - Duty to provide justification for adoption. (Paras 29, 33)

(B) Statutory Interpretation - Bona fide intention for use - Section 47 requiring proof of lack of bona fide intention - Section 57 allowing rectification where entry is made without sufficient cause - Requirement for contemporaneous justification during registration proceedings - Unsubstantiated claims for adoption are insufficient to avoid cancellation - Post-facto justifications raised for the first time in judicial proceedings are unpersuasive and meritless. (Paras 25, 27, 30)

Facts of the case:
A petitioner, an established enterprise in the electrical goods sector, sought the removal of a registered mark from the trademark register, alleging it was visually, structurally, and phonetically similar to its own prior registered mark. The respondent asserted that its mark was inspired by a religious site, despite this explanation being absent during initial registration proceedings, and argued that the marks were sufficiently distinct to coexist.

Findings of Court:
The court observed that the petitioner had demonstrated substantial goodwill and market reputation by the time the respondent initiated its registration process. The respondent's attempt to justify the adoption of the mark through belated claims was found unpersuasive and lacked any contemporaneous evidence or justification provided to the authorities. The court concluded that the impugned mark lacks sufficient distinction and is inherently prone to deceiving the general public.

Issues: Whether the impugned mark is deceptively similar to the prior registered mark of the petitioner and whether the registration was obtained without sufficient cause, thereby warranting its removal from the register.

Ratio Decidendi: The court held that where a mark is deceptively similar to a pre-existing, well-known mark in respect of identical goods, and the adoption lacks a credible, contemporaneous justification, the registration is deemed to have been made without sufficient cause. The application of the triple identity test—comparing products, distribution channels, and end-users—confirms the high likelihood of confusion, necessitating the rectification of the register to protect public interest and established reputation.

Result: Petitions allowed; the registry is directed to remove the impugned marks from the register within four weeks.

Table of Content
1. consolidation of trademark cancellation petitions for common adjudication. (Para 2)
2. establishing petitioner's prior rights, goodwill, and market reputation. (Para 3 , 4 , 5 , 6 , 7 , 8 , 9)
3. grounds for challenge regarding deceptive trademark registration. (Para 10 , 11 , 12)
4. court verifies petitioner's established reputation prior to respondent's market entry. (Para 15 , 16 , 17 , 18 , 19 , 20)
5. failure to justify mark adoption and registry error in registration. (Para 21 , 22 , 23 , 24 , 25 , 26)
6. determination of deceptive similarity using the triple identity test. (Para 27 , 28 , 29)
7. application of section 57(2) for removing marks registered without cause. (Para 30 , 31 , 32 , 33)
8. final order for rectification and removal from the trade mark register. (Para 34 , 35 , 36)

JUDGMENT :

TUSHAR RAO GEDELA, J.

1. Present petitions have been filed under Sections 47 and 57 of the Trade Marks Act, 1999 seeking removal/cancellation of the entry in Trade Marks Register with respect to the word mark ‘PONTA’ bearing trademark registration no.4134589 [in C.O. (COMM.IPD-TM) 172/2025] and device mark bearing trademark registration no.4885149 in Class-9 [in CO(COMM.IPD-TM) 171/2025], registered in the name of respondent no.1.

2. With the consent of the parties, both the above petitions are being disposed of vide this common judgment.

3. The petitioner no.1 is a company incorporated under the laws of Japan in the year 1918 and claims to be engaged in manufacture, marketing and sale of electrical products and operates across multiple business segments.

4. The petitioner claims to have entered in India in the year 1972 and by virtue of certain relaxations in the Foreign Direct Investment by the Government of India the petitioner no.1 through its subsidiaries and associated companies started actively expanding its business operations in India.

5. It is stated that in order to expand its presence in India, the petitioner no.1 acquired the business of the ‘SHAH Family Group’ together with the goodwill which included the trademarks such as ‘ANCHOR’, ‘PENTA’ and ‘ROMA’ amongst others, in the year 2007 for a consideration of 110 Crores.

6. The trademark application bearing no.516905 in Class-09 for the word mark ‘PENTA’, which is the subject matter of the present petition, was filed by the predecessor-in-title on 18.09.1989. The petitioner claims using the said mark continuously since then till date in respect of electrical switches, sockets, regulators etc.

7. Petitioner claims that the trademark ‘PENTA’ has grown by leaps and bounds since the time of acquisition and the petitioner no.2 has consistently posted enormous sales figures for its business under the said mark. The petitioner has furnished its sales turnover for the FY 2013-14 at approximately Rs.3,26,02,33,791.19/- which grew to Rs.6,31,60,38,458.87/- in the year 2024 up till November, 2024. Petitioner claims that it has a countrywide network of authorized distributors, stockists, dealers and retailers who extend to various States like Maharashtra, Gujarat, Rajasthan etc.

8. Petitioner stated that its products bearing the trademark ‘PENTA’ are also available on various e-commerce platforms such as Flipkart, Amazon etc. Petitioner also asserts that it spent a large amount of finances, resources and efforts in marketing and popularizing its products. The promotions are also carried out through websites, third-party online platforms, in print (both national and regional) as well as on television throughout the country. Apart from the offline presence, the petitioner also asserts significant presence online through various social media platforms like Facebook, YouTube, Instagram, X (formerly Twitter).

9. On the basis of the aforesaid, petitioner claims to enjoy substantial goodwill and immense reputation in India. It also asserts that the high sales turnover, extensive promotional activities, both offline and online, and the high quality products manufactured by the petitio

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