In the case of Koteshwar Chemfood Industries Pvt. Ltd. v. Sachdeva and Sons Industries Pvt. Ltd., the Delhi High Court granted relief to Koteshwar Chemfood by ordering the rectification of Sachdeva and Sons’ trademark registration for the mark “PRIME.”
Koteshwar Chemfood had filed a petition under the Trade Marks Act, 1999, seeking cancellation of the trademark “PRIME” (No. 1258793) registered in Class 30 in favor of Sachdeva and Sons. The petitioner argued that Sachdeva’s mark, registered for a range of products, including salt, was deceptively similar to Koteshwar’s own mark “PRIME,” which had been in use since 1995 for iodized salt.
Koteshwar Chemfood contended that it had established substantial goodwill in the market with its “PRIME” iodized salt and had been using the mark openly and continuously since its adoption. The petitioner claimed that the respondent had only used the “PRIME” mark for rice, despite securing registration for other goods in Class 30, including salt. The respondent’s registration, dating back to 2006, was based on a “proposed-to-be-used” basis for products beyond rice, leading Koteshwar to assert that there was no actual usage of the mark for salt. This non-usage formed the core of the petitioner’s case for cancellation and rectification of the registration.
Despite several attempts, the respondent did not appear before the court, nor did they present evidence to counter the claims of non-usage for goods beyond rice. The court found that the petitioner had indeed established prior use of the “PRIME” mark for iodized salt and had various copyright and trademark registrations in its favor. The court also noted that the respondent’s trademark registration had expired on January 1, 2024, and had not been renewed.
The court concluded that the concurrent registration of the “PRIME” mark in Class 30 for both parties could lead to consumer confusion, especially since both marks covered similar goods like salt. It ruled that there was deceptive similarity between the two trademarks and found that the respondent’s registration for goods beyond rice, including salt, was unjustified due to non-use. As a result, the court directed the rectification of Sachdeva and Sons’ trademark registration, specifically removing salt and spices from the scope of their registered goods.
The Trademark Registry was instructed to implement the necessary changes, and the petition was disposed of with the rectification order in place.
Citation: Koteshwar Chemfood Industries Pvt. Ltd. v. Sachdeva and Sons Industries Pvt. Ltd., C.O. (COMM.IPD-TM) 375/2021 (Del. H.C. Sept. 17, 2024). Available at: http://indiankanoon.org/doc/80688388/, Visited on: 24/09/2024.
