Extensive Use & Goodwill Over 90 Years: Delhi High Court Rules In Favour of HEMPUSHPA, Cancels ACTIVEPUSHPA Mark
The Delhi High Court was considering a Rectification Petition filed under Section 57 of the Trade Marks Act for the cancellation/removal/rectification of the registered Trade Mark ‘ACTIVEPUSHPA’.
Justice Tejas Karia, Delhi High Court
While noting that the HEMPUSHPA Mark has extensive use and goodwill over a period of 90 years, the Delhi High Court has ordered the cancellation of the mark ACTIVEPUSHPA due to deceptive similarity.
The High Court was considering a Rectification Petition filed under Section 57 of the Trade Marks Act, 1999 for the cancellation/removal/rectification of the registered Trade Mark ‘ACTIVEPUSHPA’ (Impugned Mark) in the name of Respondent from the Register of Trade Marks being contrary to the provisions of Sections 9, 11, 12, 18, 34, 47, 57 and 125 of the Act.
The Single Bench of Justice Tejas Karia held, “The Petitioner having extensive use and goodwill over a period of 90 years, it was very obvious for Respondent No. 1 to adopt the Impugned Mark that is deceptively similar to the Petitioner’s Mark and use the common word between the Petitioner’s Mark and the Impugned Mark prominently, which increases the likelihood of confusion in the minds of public at large. Even the test of phonetic similarity is satisfied in the present case as the word ‘PUSHPA’ is common as held in K.R. Chinna Krishna (supra).”
Advocate Ajay Amitabh Suman represented the Petitioner, while Advocate Rahul Vidhani represented the Respondent.
Factual Background
The Petitioner claimed that it is engaged in the business of manufacturing and marketing of medical preparations, ayurvedic syrups and tonics (Petitioner’s Goods) and is the proprietor of the Trade Mark, ‘HEMPUSHPA’ (Petitioner’s Mark) in Class-05. The Petitioner adopted the Mark and filed an application for its registration. The Petitioner claimed that the Petitioner’s Mark has been in use for more than 90 years and is the number 1 Ayurvedic Tonic for women. The Petitioner’s Goods have been popularised and extensively advertised using the Petitioner’s Mark by various Bollywood celebrities. According to the petitioner, the Respondent dishonestly adopted the Impugned Mark in relation to the Impugned Goods as the same was identical with and/or deceptively similar to the Petitioner’s Mark, including phonetically, visually, structurally, in its basic idea, in its essential and prominent features.
Accordingly, the Impugned Mark was claimed to cause and create confusion in the market, as the same was deceptively similar to the Petitioner’s Mark. The Respondent applied for the registration of the Impugned Mark claiming use in Class-05 for Ayurvedic Medicine and Medicine, which has been registered. The Respondent also filed Applications for the registration of ‘KUDOS ACTIVE PUSHPA LABEL’, which was opposed by the Petitioner. Being aggrieved by the registration of the Impugned Mark, the Petitioner filed the Petition for cancellation/rectification/removal of the Impugned Mark from the Register of Trade Marks.
Reasoning
The Bench noted that the Marks in question are ‘HEMPUSHPA’ and ‘ACTIVEPUSHPA’, and both are registered Word Marks. “There is no cavil that the Petitioner’s Mark has prior registration and user as compared to the Impugned Mark”, it stated.
The Bench found that the Petitioner’s Mark has superior rights over the Impugned Mark, and the first Respondent had not questioned the prior use and registration of the Petitioner’s Mark. The Bench was of the view that the adoption by Respondent of the Impugned Mark was dishonest as the Respondent was aware of the goodwill and reputation of the Petitioner and to gain unfair advantage of the same, the Impugned Mark was adopted by Respondent to ride on coat tails of the Petitioner’s Mark.
“The Petitioner has statutory as well as common law rights to protect the Petitioner’s Mark from being infringed or diluted due to deceptive similarity between the Petitioner’s Mark and the Impugned Mark. The adoption of the Impugned Mark by Respondent No. 1 is dishonest, tainted and fraudulent and the registration of the Impugned Mark is illegal”, it added.
“Hence, the dissection by Respondent No. 1 in actual use of the Impugned Mark clearly shows that Respondent No. 1 has adopted the Impugned Mark with dishonest intention to ride on the goodwill of the Petitioner", it further held.
The Bench thus held that the Impugned Mark is deceptively similar to the Petitioner’s Mark given that the word ‘PUSHPA’ is a dominant part of the Petitioner’s Mark that requires protection and the same is not descriptive, generic or common to trade. The Bench stated, “Respondent No. 1 is guilty of dishonest adoption and use of the Impugned Mark, which is likely to cause passing off of the Impugned Goods and confusion / deception in the minds of the consumer. As a result, the Impugned Mark is liable to be rectified and cancelled from the Register of Trade Marks.”
Thus, allowing the Petition, the Bench directed the second Respondent to cancel / remove / rectify the registered Trade Mark ‘ACTIVEPUSHPA’ in the name of the first Respondent from the Register of Trade Marks being contrary to the provisions of Sections 9, 11, 12, 18, 34, 47, 57 and 125 of the Act.
Cause Title: Rajvaidya Shital Prasad and Sons v. Karna Goomar (Neutral Citation: 2025:DHC:11881)
Appearance
Petitioner: Advocates Ajay Amitabh Suman, Shravan Kumar Bansal, Rishi Bansal, Pankaj Kumar, Deepak Srivastava, Rishabh Gupta, Shruti Manchanda, Deasha Mehta
Respondent: Advocates Rahul Vidhani, Purva Chugh