Shubham Goldiee Masale Pvt. Ltd. wins legal battle as court orders removal of Jai Shiv Oil Industries' trademark from the register.
In a significant ruling, the Delhi High Court has ordered the cancellation of the trademark "GOLDI" held by Jai Shiv Oil Industries, finding it deceptively similar to the existing trademark "GOLDIEE" owned by Shubham Goldiee Masale Pvt. Ltd. The court concluded that the similarity between the two trademarks was likely to cause confusion among consumers, thereby infringing on the rights of the petitioner, Shubham Goldiee Masale Pvt. Ltd.
The judgment, delivered by Justice Tushar Rao Gedela, addressed petitions filed under various sections of the Trade Marks Act, 1999, including sections 47, 57, and 125. The petitioner, represented by advocates Mr. Ajay Amitabh Suman and Ms. Deasha Mehta, claimed that the "GOLDIEE" trademark had been in continuous use since 1980 and had acquired significant distinctiveness and goodwill in the market. The trademark "GOLDIEE" is registered under Classes 29 and 30, which include goods like spices and related food products.
In contrast, the respondent, Jai Shiv Oil Industries, registered the "GOLDI" trademark in the year 2000 for mustard oil under Class 29 and later for foodstuffs (oil cake) under Class 31. The court found that the respondent failed to demonstrate a bona fide adoption or use of the "GOLDI" trademark prior to its application, inferring a fraudulent registration.
The court's decision emphasized the likelihood of confusion due to the phonetic, visual, and structural similarities between "GOLDIEE" and "GOLDI." Furthermore, both parties operate within similar business domains, targeting overlapping consumer bases and using common distribution channels, which heightened the potential for consumer confusion.
The ruling also invoked Sections 9 and 11 of the Trade Marks Act, highlighting that the "GOLDI" trademark lacked distinctiveness and was barred from registration under the Act's provisions. The judgment referenced previous cases to support the decision, emphasizing the importance of protecting established trademarks from deceptively similar registrations.
As a result, the court directed the Registrar of Trade Marks to remove the "GOLDI" trademark from the register within six weeks. This decision underscores the judiciary's role in upholding trademark integrity and protecting businesses from unfair market practices.
Bottom Line:
Trade Marks Act, 1999 - Prior user and deceptive similarity - A trademark registered later cannot continue to subsist on the Register of Trade Marks if it is deceptively similar to a prior registered and used trademark, causing likelihood of confusion among consumers.
Statutory provision(s): Sections 47, 57, 9, 11, 125 of the Trade Marks Act, 1999
Shubham Goldiee Masale Pvt. Ltd v. Jai Shiv Oil Industries, (Delhi) : Law Finder Doc id # 2880433
