The Delhi High Court has dismissed a Chinese company’s petition seeking rectification of the trademark ‘LARK’ after finding that the Indian Company was able to corroborate its user claim in Class 42 and the impugned mark has continuously been in use.

The High Court was considering a Petition filed by the Petitioner Company Hubei Ji Su Kan Dian Technology under Section 47 and 57 of the Trade Marks Act, 1999, seeking rectification of the Trade Mark, ‘LARK’.The Single Bench of Justice Tejas Karia held, “Therefore, the Impugned Mark has been put to use and has continuously been used by Respondent No. 1 and its predecessor-in-title for the development of Poultry and Cattle Feed Machinery and its associated software and hardware. Hence, the registration of the Impugned Mark was not obtained on basis of false user claim.”

Advocate Dheeraj Kapoor represented the Petitioner while Advocate Manish Dhir represented the Respondent.

Factual Background

The Petitioner, a company incorporated under the laws of China, is engaged in the business of development of computer programs and is using the Mark ‘LARK’ for providing the said services for a wide variety of purposes. The first Respondent is the registered proprietor of the Impugned Mark, which was applied for in the year 2016 with the date of use since July 25, 1994, advertised in the Trade Mark Journal No. 1775 and registered on May 3, 2017, covering services included in Class 42. The Petitioner claimed to be a bona fide user of the mark ‘LARK’ and its formative marks (Petitioner’s Mark) for computer programs, software applications, related tools and had applied for the registration of the said Mark and its variants.

The Petitioner operates a website with the domain name ‘www.larksuite.com’ registered since April 2018. In April 2019, the Petitioner came to know of the registration of the Impugned Mark by the Respondent in respect of design and development of computer hardware and software (Impugned Services), as the same was cited in the Examination Report in respect of the Petitioner’s application for the registration of the Petitioner’s Mark under the Application in respect of its services in Class 42 filed on proposed-to-be-used basis. Aggrieved by the same, the Petitioner approached the High Court seeking Rectification of the Impugned Mark to the effect that the specification of the Impugned Services be removed from the scope of rights of the Respondent pertaining to the Impugned Mark.

Reasoning

The Bench explained that as per the Proviso to Section 47(1), an application under Section 47(1)(a) or (b) of the Act in relation to any goods or services can be refused if it is shown that during the relevant period, there is bona fide use of the Trade Mark in question by the proprietor in relation to either goods or services of the same description; or goods or services associated with those goods or services in respect of which the Trade Mark in question is registered. “If either of the two conditions of bona fide use of the Trade Mark in question by the proprietor is satisfied under the proviso to Section 47(1) of the Act, the application under Section 47(1) for the removal of the Mark on the ground of non-use would be liable to be refused”, it added.

The Bench further explained that to determine whether goods or services are of the same description under the proviso to Section 47(1) of the Act, the relevant factors to consider are the nature and composition of goods or services, their respective uses and functions, and the trade channel through which they have been marketed and sold. However, the Bench also noted that each case has to be decided based on its own facts and circumstances, and depending upon the goods or services in question, one or two of these characteristics may have greater significance or emphasis over the other.

Considering that the source and the trade channel of the Poultry and Cattle Feed Machinery and the Impugned Services are the same, and that the latter is used in conjunction with the former, the Bench held that they fall within the same description, and thus, the Impugned Services shall be accorded the protection envisaged under the proviso to Section 47(1). The Bench also noticed that the documents relied upon by the Respondent established the use of the Impugned Mark since 1994 and the use of the Impugned Services since the year 2016.

“Thus, Respondent No. 1 is the prior registered proprietor and user of the Impugned Mark in respect of services in Class 42. Accordingly, it follows that there is no mala fide adoption of the Impugned Mark qua Impugned Services by Respondent No. 1 as Respondent No. 1 is the prioruser of the Impugned Mark in respect of the Impugned Services”, the order read.

Thus, finding that the Respondent was able to corroborate its user claim in Class 42, the Bench thus dismissed the Petition.

Cause Title: Hubei Ji Su Kan Dian Technology Co. v. Lark Engineering Company (India) Pvt. Ltd. (Neutral Citation: 2025:DHC:11926)

Appearance

Petitioner: Advocates Dheeraj Kapoor, Gautam Kumar, Manisha Singh, Abhai Pandey, Anju Agrawal, Swati Mittal, Nishant Rai, Manish Aryan, Shivani Singh, Akhya Anand

Respondent: Advocate Manish Dhir

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Delhi High CourtJustice Tejas Karia

Tulip Kanth

Assistant Editor

Tulip Kanth is an Assistant Editor at Verdictum having over 5 years of experience in the field of legal journalism and editing. She extensively covers judgments of the Supreme Court, High Courts as well as Tribunals. She has previously worked with a legal publishing website where she oversaw the work of other editors and has also created updates on notifications of different Government Ministries. She holds an English Honours Degree from SGTB Khalsa College, Delhi University and has completed her LLB course with specialisation in Corporate Law from Amity University.