In a landmark judgment by the Delhi High Court, a significant trademark dispute involving the ‘WHITE BOY’ mark has been resolved. The Court’s decision to cancel the registration highlights the importance of establishing prior and continuous use, ensuring the protection of trademark rights for the rightful owner. This case sets a precedent for trademark disputes in the Indian legal landscape.
Facts
- Respondent No 2 deliberately chose an identical trademark for identical goods to capitalize on Petitioner’s goodwill.
- Examination Report failed to acknowledge Petitioner’s earlier application and priority claim.
- Respondent No 2’s lack of documents evidencing use of the mark ‘WHITE BOY’ post registration raises suspicions.
- Mr. Gaurav Dua, husband of Respondent No 2, used ‘WHITE BOY’ mark before the Petitioner in the same field.
- The impugned mark registered in favor of Respondent No 2 may need cancellation for trademark act violations.
- The husband of Respondent No 2 previously operated under ‘M/s White Boy Shirts’, switching to ‘WHITE BOY’.
- Respondent No 2’s application for ‘WHITE BOY’ mark was on a proposed-to-be-used basis.
- Petitioner’s long and continuous use of ‘WHITE BOY’ has established immense goodwill.
- The impugned trademark might need removal under Section 47 of the Trademarks Act for lack of bona fide intention to use.
- Petitioner’s established use since 2010 as opposed to Respondent No 2’s proposed use should be considered.
Analysis
- The Petitioner has established themselves as the prior and continuous user of the trademark ‘WHITE BOY’ since 2010.
- The documentary evidence confirms the establishment of the proprietary firm named ‘White Boy Apparels’ in 2010 for the production of readymade apparel.
- The lack of evidence depicting direct use of ‘WHITE BOY’ by the Petitioner on products for the initial period does not weaken their claim of continuous trademark use since 2010.
- The Petitioner has further supported their claim with tax invoices showing the sale of ‘WHITE BOY’ shirts to third parties since 2020.
- Respondent No 2 filed the registration application for the impugned trademark on a proposed-to-be-used basis, while failing to provide documentary evidence of the trademark’s use before or after the registration.
- The choice of the impugned trademark by Respondent No 2 is likely influenced by the trading name ‘M/s White Boy Shirts’ used by her husband.
- The prior use of the trademark ‘WHITE BOY’ by the Petitioner, coupled with sales data, outweighs the future intentions of Respondent No 2, establishing the Petitioner’s rightful claim to the trademark.
- Section 11(3)(a) aims to prevent registration of a mark if its use in India could be prohibited by the law of passing off protecting unregistered trademarks.
- The registration of an identical mark in the name of Respondent No 2 is deemed untenable.
- Likelihood of deceiving the public or causing confusion is a key factor in this decision.
- Protection of consumers is a primary concern as per the Trademarks Act.
- This decision aligns with Section 9(2)(a) of the Trademarks Act.
Decision
- The registration of the mark “WHITE BOY” under No 4886714 in class 25 is cancelled.
- The Trademarks Registry is directed to issue an appropriate notification regarding the cancellation of the registration.
- The Trademarks Registry is instructed to send the notification to llc-ipo@gov.in for compliance.
Case Title: JITENDRA KUMAR Vs. THE REGISTRAR OF TRADEMARKS, NEW DELHI & ANR. (2024:DHC:4402)
Case Number: C.O. (COMM.IPD-TM)-92/2023
