Case Analysis On Anshul Vaish , Partner Rohit Wrapers V Hari Om And Co. And Anr.

The Delhi High Court’s through its recent landmark judgment Anshul Vaish v. Hari Om analysed the themes of trademark law pertaining to trademark rectification, deceptive similarity, linguistic deception and the principle of prior use. The dispute centered around the competing use of the mark “ROHIT” in the PVC pipes industry where the mark was used in English by the petitioner and its Hindi transliteration by the respondent. The petitioner, a partnership firm using the mark “Rohit Wrapers” since 2000, challenged the registration of the Hindi version of “ROHIT” by the respondent, who claimed use since 2005. The petitioner presented conclusive evidence including TIN, excise registration, BIS certifications, and sales records proving earlier adoption and continuous commercial use. In contrast, the respondent’s evidence was discredited on the grounds of forged documents and a false claim of usage prior to formal business amendments in 2007. The Court emphasized that phonetic and linguistic translations can create confusion in a multilingual society like India. It upheld that the petitioner’s mark, despite being in English, had acquired distinctiveness and commercial goodwill, and that the Hindi mark adopted by the respondent infringed upon this identity. The judgment reiterates the importance of good faith in trademark adoption, the dominance of prior user rights, and the nuanced challenges of linguistic plurality in Indian trademark law.

Background of the case

The petitioner is a partnership firm engaged in the business of manufacturing and trading PVC pipes post its incorporation. The petitioner adopted mark “” (hereinafter “Rohit Wrapers”) along with its variants like Rohit Tubes”, “Rohit Varadan”, “Rohit Gold” and “Rohit Durable” in a bona fide manner, without reference to any pre-existing mark. Seeing this the petitioners filed applications for the registration of its mark through application no 1989126 dated 05th July 2010 which was duly advertised in Trade Mark Journal no. 1730 on 01st February 2016. The mark was registered unopposed. The respondent no . 1 also applied for his mark  “” (hereinafter “ROHIT”) in Hindi under application no. 1532767 dated 20th February 2007 and application no. 2408221 dated 09th October 2012, in Class 17 for goods PVC pipes and fittings thereof, claiming use since 01st January 2005. The same was also registered unopposed.

Thus, the rectification petitioner was filed by the petitioner before the Trade Mark Registry. It was established that the petitioners started using their mark for commercial use since 2000 while respondents used theirs from 2005. The respondent issued a legal notice dated 28^th March 2015 to the petitioners on the grounds of infringement and/or passing off which was met by a counter from the petitioner through their letter dated 16^th April 2015. However, the respondent no.1 did not respond to the reply and averments and made in the reply to notice issued by the petitioners and continued using the impugned mark.  Thus, the present petition was filed.

Issues Before the Court

1. Whether the respondent’s mark “ROHIT” (in Hindi) is deceptively similar to the petitioner’s mark “ROHIT” (in English)?
2. Whether the petitioner was a prior user of the trademark “ROHIT” in relation to PVC pipes?
3. Whether the respondent had acted in bad faith and made false user claims?

Core Assertions

Claims raised by the Petitioner

The petitioner contends that their mark has been in continuous, extensive, and exclusive use by the petitioner for over two decades, thereby acquiring significant goodwill and reputation in the market. Since the bona fide adoption of the mark in the year 2000, it has consistently featured the term “Rohit” as its most prominent and essential component which being not only the trade name of the petitioner but also the primary identifier of their brand. The petitioner also assert that the public and trade circles exclusively associate the “ROHIT” marks with the petitioner’s business, a fact evidenced through various commercial elements such as packaging, invoices, and branding materials. To further substantiate their claim the petitioner produced their TIN Registration certificate dated 22nd April 2000, Central Excise Registration Certificate dated 5th December 2002, Sale invoices ranging from 28th September 2004 to 22nd July 2016, and Purchase invoices spanning 24th May 2007 to 25th April 2016 to showcase business and commercial use. It is further asserted that the trade name “Rohit Wrapers” falls squarely within the meaning of “use of the mark” under trademark law, making the petitioner’s usage both valid and legally significant. The petitioner highlights that the dominant feature “ROHIT” has been employed in numerous derivative trademarks since 20th April 2000 and has secured trademark registrations for each of these marks. However, in what is described as a blatant attempt to ride upon the goodwill painstakingly built by the petitioner, Respondent No. 1 also engaged in the business of manufacturing PVC pipes and has wrongfully adopted the dominant component of the petitioner’s trade name, “ROHIT”. The petitioner alleges that Respondent No. 1 has done so with malafide intent and bad faith. The respondent falsely claimed a user date of 1st January 2005 while applying for the mark, and in support of this, submitted documents which the petitioner asserts are fabricated and manufactured solely to establish a fictitious date of use.

The petitioner also highlighted that the impugned mark was not distinctive at the time of its registration and did not acquire any distinctiveness thereafter since the respondent’s mark was adopted after the petitioner’s. This, the petitioner argues, is in direct contravention of Section 9(1)(a) of the Trade Marks Act, 1999. The false claim of user since 1st January 2005, also misled the public into associating the respondent’s goods with those of the petitioner,  violating  Section 9(2)(a) of the same Act. The petitioner also invoked Section 11(1) of the Trade Marks Act, 1999, which prohibited the registration of marks identical or deceptively like earlier trademarks where a likelihood of confusion exists. The petitioner argued that the use of the impugned mark was deceptively similar and unfairly capitalized on the established distinctiveness and goodwill of the petitioner’s brand leading to violation of Sections 11(2) and 11(3)(a) as well. Besides that, the respondent No. 1 knowingly misrepresented itself as the first adopter or lawful proprietor and secured registration solely to obstruct the petitioner’s market presence. This violated Section 18(1) of the Act and  thus the pray for the rectification of the impugned mark.

Claims raised by the Respondent

The respondent asserts that it has been using the impugned trademark consistently since the year 2005 and that its right to the mark was formalized through the grant of registration for Trademark Application No. 2408221 in the year 2012. This registration was obtained without facing any opposition, thereby indicating the legitimacy and acceptance of the respondent’s claim at the time. It was contended that the respondent was the first and original adopter of the impugned mark and is, therefore, the prior user in terms of the application filing. Respondent proved the commercial usage of its brand by reproducing the sales and invoices of pipes and fittings from 2005 onwards which had the impugned mark evidencing bona fide and continuous user claim. To substantiate these assertions, the respondent had filed invoices and other documentary evidence indicating uninterrupted use of the trademark over the years. These documents were presented as proof of ongoing commercial operations under the impugned mark. The respondent claimed that trademark registration for the impugned mark was formally granted in its favour on 20th February 2007, and the corresponding registration certificate or related documentation were attached.

Analysis

Court held that both marks to be deceptively similar.  Although a trade mark must be viewed as a whole, courts can be accorded latitude to emphasis its dominating characteristic. Here, “ROHIT” was having the maximum/min element. Under s. 24 (2), in a country which is multilingual such as India, even if a mark is translated into another language and is also a widely spoken language; it does not change the position that the mark has the right to be protected. The argument is based on such precedents as M/s Bhatia Plastics v. In the case of Peacock Industries and Indian Express Ltd. v. Chandra Prakash Shivhare where the Court has pointed out that the similarity of scripts and phonetics in case of identical goods can mislead the consumers. The Court found that the marks in other languages or writing were found to infringe based on identical meaning, sound or impression.

Thus, language variation does not offer immunity from infringement when the translated mark is likely to evoke the same source association in the mind of an average consumer with imperfect recollection. Thus, the Hindi transliteration of “ROHIT” was held to be deceptively similar and likely to mislead the public into believing an association with the petitioner.

The Court further found that the petitioner was the prior user of the mark. A Partnership Deed dated April 13, 2000, explicitly states the business activity of PVC pipe manufacturing. Other documents like TIN registration from 2000, Central Excise Certificate from 2002, and BIS certification from 2003 corroborate continuous and bona fide use. Invoices balance sheets and registration with UP Jal Nigam prove commercial activity since 2000.This consistent use by petitioner of “ROHIT” both as a trade name and trademark helped build up substantial goodwill. The respondent’s claimed user date of 2005 is unsupported hence lacks credibility. Hence, the Court found that since this mark has been long used by this petitioner, it deserves all protection being a prior user under trademark law.

The Court found compelling evidence that the respondent had acted in bad faith and made false user claims regarding the trademark “ROHIT.” The Honourable court primarily declared documents submitted by respondent to be fabricated. The documents had grave anomalies prima facie as TIN was added to the invoices dated in years 2005-2005 while the same was only granted in 2007. The respondent remained silent, giving no answers to the Court; therefore, the Court considered the documents as forged. The 1997 Partnership Deed did not, in its original form, state PVC pipes as part of the business but was added only in a modified deed in 2007. Hence, the respondent’s version that he has been dealing in PVC pipes since 2005 stands belied. The business was run under the name “M/s Hariom & Company”; none of the partners had the name “Rohit,” and also no reason was given for adopting that mark. It was held that the respondent is fabricating evidence intentionally to falsely establish prior use and thereby gain unfair trademark registration.

Sections 47 and 57 of the Trade Marks Act, 1999 say that marks are liable to rectification or cancellation if they were registered by making false claims, registered fraudulently, or infringe the rights of a prior user. In this case, the Court concluded that the respondent’s mark met all these criteria. The respondent failed to substantiate its claim of use from 2005, relied on forged documents, and adopted a mark deceptively like the petitioner’s well-established mark. The petitioner had prior use, significant goodwill, and operated in the same line of business that is manufacturing PVC pipes. Since the marks were identical phonetically and visually, the goods being the same, and trade channels being identical, there lies no scope to believe that consumer confusion cannot take place. The Court ordered cancellation of registration of a trademark over the name of the respondent and directed Trade Marks Registry to rectify its record thereby consequently holding that petitioner has better and protected rights over a trademark.

Conclusion

The case stands out as a judgment that reaffirmed the crucial Indian trademark law principles particularly the established doctrines like prior user deceptive similarity and bad faith registrations. Delhi High Court dissected evidentiary claims meticulously and found overwhelming proof in favour of petitioner’s bona fide use of trademark ROHIT since year 2000. Relying on backdated and forged documents, respondent undermined credibility and displayed intention to ride shamelessly on goodwill of the petitioner intentionally. The court took up the question of trademark infringement quite well and correctly held that language variation does not offer immunity from infringement when the translated mark is likely to evoke the same source association in the mind of an average consumer with imperfect recollection. By instructing rectification of respondent’s questioned mark Court reaffirmed registration cannot supersede rights of earlier honest concurrent user maintaining integrity of trade mark register and right of consumer to clarity.

Author: Kritika Aggarwal, in case of any queries please contact/write back to us via email to [email protected] or at Khurana & Khurana, Advocates and IP Attorney.