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Rectification Of Trademark On The Basis Of Prior Use Of Trade Name

This article examines the legal principles surrounding the rectification of a trademark registration based on prior use of a trade name. It focuses on a petition brought under Sections 47 and 57 of the Trademarks Act, 1999, aiming to cancel the registration of the trademark "WHITE BOY" granted to Respondent No. 2. The petitioner, who claims prior use of the trademark, challenges the registration on the grounds that their continuous use since 2010 establishes superior rights. This analysis explores the facts, findings, legal implications, ratio decidendi, and concludes with the case's significance in trademark law.

The petitioner established a sole proprietorship, White Boy Apparels, in 2010, manufacturing and trading in shirts under the trademark "WHITE BOY." The petitioner claims continuous and uninterrupted use of the mark since its inception. On March 3, 2021, the petitioner applied for registration of the wordmark "WHITE BOY" in class 25, citing a user claim from January 10, 2013. However, Respondent No. 2 had already filed for the registration of the identical mark on March 2, 2021, one day before the petitioner's application.

Documentary evidence confirms the operation of 'White Boy Apparels' since 2010, though explicit use of the "WHITE BOY" trademark on products from 2010 to 2019 is not demonstrated. The petitioner supports their claim with tax invoices showing the sale of "WHITE BOY" shirts since 2020. In contrast, Respondent No. 2's application was on a proposed-to-be-used basis, with no evidence of actual use before or after registration.

Prior Use of Trade Name and Firm Name:
The petitioner has demonstrated a significant period of continuous use of the trade name "White Boy Apparels" since 2010, establishing goodwill and reputation associated with the name. The use of the trade name as a source identifier aligns with the definition of a trademark under Section 2(1)(m) and Section 2(1)(zb) of the Trademarks Act, 1999.

Lack of Evidence from Respondent No. 2:
Respondent No. 2's application was on a proposed-to-be-used basis, indicating no actual use of the mark "WHITE BOY" at the time of application.The absence of documentary proof of use by Respondent No. 2 weakens their claim to the trademark rights.

Commercial Use by Petitioner: Tax invoices submitted by the petitioner demonstrate active commercial use of the "WHITE BOY" mark since 2020, reinforcing their claim of continuous trademark usage.

Ratio Decidendi:
The decisive principle in this case is the doctrine of prior use. The petitioner�s established and continuous use of the "WHITE BOY" mark since 2010, combined with the lack of actual use by Respondent No. 2, establishes the petitioner�s superior rights. The court's reliance on documentary evidence, such as tax invoices and the longstanding operation of 'White Boy Apparels,' underscores the importance of proving continuous and substantive use in trademark disputes.

Concluding Note:
The cancellation of the trademark "WHITE BOY" under No. 4886714 in class 25 emphasizes the critical role of prior use in trademark law. This case reaffirms that mere filing of a trademark application on a proposed-to-be-used basis does not outweigh established prior use. The decision underscores the necessity for businesses to maintain thorough records of their trademark use to support their claims in potential disputes.

Case Title: Jitendra Kumar Vs The Registrar of Trademarks
Order Date: 28.05.2024
Case No. C.O. (COMM.IPD-TM) 92/2023
Neutral Citation:2024:DHC:4402
Name of Court: Delhi High Court
Name of Hon'ble Judge: Sanjeev Narula. H.J.

Ideas, thoughts, views, information, discussions and interpretation expressed herein are being shared in the public Interest. Readers' discretion is advised as these are subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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