Delhi High Court Remands Trademark Opposition Case for Fresh Consideration

Court Rules Prior Use Not Necessary for Trademark Opposition under Section 21; Emphasizes 'Earlier Trademark' Status

In a significant ruling, the Delhi High Court has set aside a previous order dismissing an opposition to a trademark registration, clarifying that prior use of a registered trademark is not a prerequisite for filing an opposition under Section 21 of the Trade Marks Act, 1999. The judgment was delivered by Justice Tejas Karia, who presided over the case of "Street One GMBH v. Registrar of Trade Marks and others."

The case centered around an appeal by Street One GMBH, which opposed the registration of a trademark by another entity, claiming deceptive similarity and likelihood of confusion with its own registered trademark, "STREET ONE," used since 1983. The opposition was initially dismissed by the Registrar of Trade Marks on the grounds of lack of evidence for prior use.

Justice Karia observed that the Registrar erred in dismissing the opposition, as the Trade Marks Act does not necessitate prior use for opposing a trademark. The court underscored that the registration of a trademark provides prima facie evidence of its validity, granting the registrant valuable rights irrespective of actual use. The court emphasized that the statutory framework allows 'any person' to oppose a trademark under Section 21 without establishing prior use.

The ruling aligns with precedents set by the Supreme Court in "American Home Products Corpn. v. Mac Laboratories (P) Ltd." and further clarified in "Sun Pharma Laboratories Ltd. v. Finecure Pharmaceuticals Ltd.," which assert that the likelihood of confusion does not hinge on the actual use of the trademark.

The matter has been remanded to the Registrar for a fresh decision on the opposition, instructing a re-evaluation based on the provisions of Section 11 of the Act, which addresses the identity or similarity of goods and the likelihood of public confusion.

The decision is expected to have significant implications for the interpretation of trademark law in India, particularly concerning the rights conferred by registration and the process of opposing trademarks.

Bottom Line:

Trade Marks Act, 1999 - Section 11 - Prior use of a registered trade mark is not necessary for filing opposition under Section 21 of the Act - Registered trade mark qualifies as 'earlier trade mark' under Section 11 of the Act irrespective of actual use.

Statutory provision(s): Trade Marks Act, 1999 - Sections 11, 21, 47

Street One GMBH v. Registrar of trade Marks, (Delhi) : Law Finder Doc Id # 2821475