High Court of Bombay Hears Rectification Petition Filed by Le Shark Apparel Limited Seeking Cancellation of Respondents' Registered Trade Mark No. 466002 in Class 25. Petition Based on Grounds of Non-Use Under Section 47 and Fraudulent Registration Under Section 57 of the Trade Marks Act, 1999.

Commercial Miscellaneous Petition for rectification of registered trade mark

Petition by Le Shark Apparel Limited seeking rectification/cancellation of Respondent Nos. 1 and 2's registered Trade Mark No. 466002 in Class 25

Petitioner alleges dishonest adoption of an identical mark, lack of bonafide intention to use, and non-use; claims the mark was copied from petitioner's predecessor's prior registered marks abroad

IPAB admitted the rectification petition on 8th October 2018; IPAB was abolished and the petition transferred to High Court on 4th April 2021; Petitioner's own trademark application was refused on 7th April 2021, review petition filed but order pending

Whether the impugned trade mark is liable to be expunged under Section 47(1)(a) for want of bonafide intention to use? Whether the impugned trade mark is liable to be expunged under Section 47(1)(b) for non-use during a continuous period of five years? Whether the impugned trade mark should be rectified under Section 57 as an entry made without sufficient cause due to fraudulent adoption?

Petitioner argued that the impugned mark is an identical copy of earlier registered marks of the petitioner's predecessor in the UK and other countries, indicating a dishonest adoption and lack of bonafide intention to use. No plausible explanation was offered by the respondents for adopting an identical inherently distinctive mark, and hence a dishonest intention must be presumed. The respondents' claims of extensive use and goodwill are unsupported by corroborative evidence such as certified sales figures, advertising expenses, assessment orders, or promotional materials; the invoices produced are fabricated. The mark has not been used bonafide for the statutory periods under Section 47(1)(a) and (b), warranting cancellation.

By this Commercial Miscellaneous Petition, the Petitioner is seeking rectification of the Respondents’ registered Trade Mark No. 466002 registered in Class 25 for, “Articles of Clothing, including Boots, Shoes and Slippers, Scarves and Raincoats” under Sections 47 and 57 of the Trade Marks Act, 1999. Mr. Kadam has submitted that the impugned mark of Respondent Nos. 1 and 2 deserves to be expunged under Section 47(1)(a) of the Act for want of bonafide intention to use the impugned mark. He has submitted that there is a lack of bonafide use upto a period of three months before the date of the Rectification Petition. He has submitted that the absence of a bonafide intention to use the impugned mark is borne out from the fact that it is a mere dishonest copy and adoption of trademarks that were registered prior in time by the Applicant’s predecessor in interest in the United Kingdom, France and the Benelux countries and now subsist in the name of the Petitioner.

Respondent No. 1 applied for registration of the impugned mark on 13 January 1987 on a 'proposed to be used' basis. Registration was granted by Respondent No. 3 on 15 October 1991. The Petitioner's predecessor had earlier registrations for similar device marks in the UK and other countries from 1984 onwards. On 20 March 2018, the Petitioner filed the present Rectification Petition. The IPAB admitted the petition on 8 October 2018. On 4 April 2021, the IPAB was abolished and the petition was transferred to the High Court. The Petitioner's own trademark application was refused on 7 April 2021; a review petition was filed and heard on 7 May 2021 with a pending order. The matter was reserved for judgment on 23 April 2025 and pronounced on 14 October 2025.

• Trade Marks Act, 1999: 18, 47, 57