In a trademark rectification dispute before the Madras High Court, STAR PLASTICS (Petitioner), secured an order canceling the trademark registration of “S Star Trading Co.” held by Sanjeev Antony, trading as M/s.S.Star Trading Co. (1st Respondent) under Class 11. The Registrar of Trademarks was identified as the 2nd Respondent. The case centered on the Petitioner’s assertion of prior use and registration of the “STAR” trademark and device, alleging that the 1st Respondent’s mark was deceptively similar and adopted in bad faith.
The Petitioner, a partnership firm established in 1983, presented evidence of its longstanding use of the “STAR” device across multiple classes, with registrations dating back to 1988. The Petitioner argued that it had established distinctiveness and goodwill in the market, particularly in the state of Kerala, and alleged that the 1st Respondent’s use of a similar mark was intended to deceive consumers and trade upon the Petitioner’s reputation.
The 1st Respondent, operating under the name “S Star Trading Co.,” contended that “STAR” is a common and laudatory term, asserting that no party could claim exclusivity over it. They argued that their use of the mark was honest, given that their business name included “STAR.” However, the Court found this argument unconvincing, noting that the words “Trading Co.” in the 1st Respondent’s mark were displayed in an illegibly small font, suggesting an intention to capitalize on the dominant “STAR” device and wordmark of the Petitioner.
The Court emphasized that the Petitioner’s prior use and registration of the “STAR” device provided it with protection under the Trademarks Act, 1999, even though the word “STAR” is common. The Petitioner demonstrated its distinctive use of the mark through advertisements, invoices, and longstanding market presence. By contrast, the 1st Respondent’s adoption of the mark was deemed dishonest, with the Court observing a likelihood of consumer confusion.
Relying on established case law, including Star Television Productions Ltd. v. Eurosport and Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., the Court held that even a descriptive or common mark could acquire protection if it achieved distinctiveness or secondary meaning. The 1st Respondent’s mark was found to infringe upon the Petitioner’s rights due to its striking similarity and lack of bona fide use.
In its order, the Court directed the Registrar of Trademarks to cancel the 1st Respondent’s trademark registration No. 3933822 under Class 11, concluding that the adoption of the mark was neither honest nor concurrent. The Petition was allowed, with no costs awarded.
Citation: STAR Plastics v. S Star Trading Co., O.P. No. 3933822 (H.C. Madras Sept. 13, 2024). Available at: https://indiankanoon.org/doc/115341237/
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