Recently, Rong Thai International Group Co. Ltd. (the petitioner) filed a rectification petition before the Delhi High Court to seek cancellation of the trade mark ‘BAOJI’ in class 25, which was registered in favour of ENA Footwear Pvt. Ltd. (herein referred to as the Respondent No. 1). The Petitioner alleged non-use of the mark by the Respondent, citing Section 47(1)(b) of the Trade Marks Act, 1999.
Factual Matrix
Petitioner, a company incorporated in Thailand, engaged in the business of, inter alia, manufacture and distribution of footwear and other related goods. The petitioner had claimed extensive use of the trade mark “
” and sold products under the trade mark “” in various countries, including India, as well as through online marketplaces. The petitioner owned a domain name under Home – Baoji Official Site, which is accessible for public view worldwide and claimed immense goodwill and reputation due to continuous and extensive use of the trade mark/ logo.
Petitioner claimed the registration of the trade mark in class 18 for leather and imitations of leather goods. The petitioner further asserted that their application for registration under Class 25 for footwear was rejected due to the Respondent’s existing registration. The petitioner had contended that they only learnt about Respondent No. 1’s registration of the impugned mark on July 20th 2017, upon receiving the examination report of the Registrar dated July 1st 2016. The petitioner has primarily relied upon an investigation report dated November 11th, 2019, carried out by an independent investigator, stating that the said report confirmed that Respondent No. 1 was not using the impugned mark ‘BAOJI’ and even recorded the alleged statement of Mr. Rohit Sharma, Director of Respondent No. 1, that they did not manufacture any products under the mark ‘BAOJI’. It was further contested that since more than five years had elapsed since the date of registration with no bona fide use by Respondent No. 1, the impugned mark is liable to be removed from the trade mark register in terms of Section 47(1)(b) of the Act.
Respondent No. 1 had contested the assertions put forward by the petitioner, vehemently affirming their consistent use of the impugned mark ‘BAOJI’ since the year 2000 for footwear-related goods. They provided concrete evidence in the form of sales invoices spanning from 2012 to 2022 to support their claim of ongoing commercial activity involving the mark. Furthermore, Respondent No. 1 challenged the credibility of the investigation report commissioned by the petitioner, alleging bias and misrepresentation. By presenting these counterarguments, Respondent No. 1 sought to refute the allegations of non-use and uphold the legitimacy of their usage of the mark ‘BAOJI’.
Additionally, Respondent No. 1 asserted that the impugned mark was granted registration on December 26th, 2013, and was effective from February 12th, 2007. It was further submitted that the application was filed on August 10th, 2020, and for removal of the impugned mark, non-use for a continuous period of five years up to three months prior to the date of filing the application had to be proved.
Judgment of the Court
After careful consideration of the submissions from both parties and an analysis of Section 47(1)(b) of the Trade Marks Act, 1999, the Delhi High Court dismissed the petitioner’s claim. The petitioner had failed to prove the alleged non-use of the impugned mark. The registration certificate for the impugned mark was issued in favour of Respondent No. 1 on December 26th, 2013. This date had signified the official entry of the impugned mark into the register. The application for rectification in this case had been filed on August 10th 2020. Accordingly, the critical date for assessing the use of the mark had been set as May 10th, 2020, which had been three months prior to the filing of the rectification application.
The court had held that the sale invoices submitted as evidence had clearly demonstrated Respondent No. 1’s consistent engagement in transactions using the impugned mark from 2012 through 2022. This evidence established uninterrupted use of the impugned mark over a significant period, covering the relevant timeframe for assessing non-use. Additionally, the court noted that the investigation report, being a single self-sourced document, lacked the comprehensive perspective of multiple sale invoices. Consequently, the evidence of sustained use of the impugned mark by Respondent No. 1 outweighed the findings in the investigation report regarding non-use.
Authors: Manisha Singh and Lisha Chauhan
First Published by: Mondaq here