Madras High Court Orders Removal of ‘PREMIO’ Trademark Under Section 47 of the Trade Marks Act for Non-Use

In a significant ruling concerning intellectual property rights, the Madras High Court has mandated the removal of the trademark ‘PREMIO’ from the Trade Marks Register. Justice N. Senthilkumar presided over the petition filed by Crompton Greaves Consumer Electricals Limited, determining that the proprietor, Wipro Enterprises Private Limited, failed to demonstrate genuine commercial usage of the mark for over five years.

The Conflict Over ‘PREMIO’ and ‘PREMION’

The dispute arose when the Petitioner, Crompton Greaves, discovered the existence of the ‘PREMIO’ mark while seeking registration for their own product range, which they intended to market under the brand ‘PREMION’. The Petitioner argued that despite the ‘PREMIO’ mark being registered in 2013, it had remained dormant.

Crompton Greaves contended that as a "person aggrieved," they were entitled to seek the rectification of the register under Section 47 of the Trade Marks Act, 1999. Their position was corroborated by an all-India survey, which failed to identify any available products currently sold under the ‘PREMIO’ brand.

Respondent’s Defense: Bad Faith Allegations

Wipro Enterprises countered the petition by questioning the maintainability of the application. They alleged that the Petitioner had adopted the name ‘PREMION’ in bad faith, aiming to capitalize on a deceptively similar mark. Wipro argued that the Petitioner was fully aware of the existing registration and that the attempt to remove the mark was an act of "invading the 1st Respondent’s right." Furthermore, Wipro cited the "criminality" of using such marks during the subsistence of a registration, framing the Petitioner’s actions as an infringement.

Key Observations

The Court’s decision rested on the technical burden of proof regarding trademark usage. Justice N. Senthilkumar highlighted the lack of evidence provided by the respondent:

• On the burden of proof: "It is to be noted that the 1st Respondent has not produced any document or adduced oral evidence to disprove the above affidavits filed by the petitioner and to invalidate the petitioner’s claim of non-use of registered trademark by the 1st Respondent."
• On the scope of Section 47 : "In fact, the 1st Respondent has not filed any document in support of their defence. Thus the petitioner has made out a case that after registering their trademark, the 1st respondent has not done anything to carry out the trade by using the trademark for a period of more than five years."
• On the status of the trademark: "Therefore, the impugned trademark PREMIO is liable to be removed from the register under Section 47 (1)(b) of the Trade Marks Act, 1999."

Judicial Precedents Applied

The Court relied heavily on the established legal framework for the removal of unused trademarks. Reference was made to Hardie Trading Ltd. v. Addisons Paint & Chemicals , which clarifies that the High Court or Registrar must be satisfied that the applicant is a "person aggrieved" and that the mark has not been used for a continuous period of at least five years preceding the application. By failing to rebut the evidence of non-use, the respondent's mark was found to meet the criteria for removal.

The Verdict: Clearing the Path

Allowing the rectification petition, Justice N. Senthilkumar directed the Registrar (the 2nd respondent) to remove the ‘PREMIO’ trademark from the register.

This judgment serves as a reminder to trademark proprietors that registration does not grant indefinite immunity from removal if the mark is not put to bonafide commercial use. For businesses, it reinforces the principle that while trademark registration protects brand identity, it requires active, demonstrable market presence to remain valid under the statutory framework of the Trade Marks Act.