Disposed

Certiline Srl, Via Piave, 8, 1-21100 Varese, Italy v. Indigo Prints Pvt. Ltd. B-95, Flatted Factory Complex, Okhla PHASE-3, New Delhi

Delhi HC10 Jan 2024C.O. (COMM.IPD-TM)/105/2022

Case brief

AI extract

What is this about?

A petition sought cancellation of the registered 'CERTICARD' trademark on the ground that the registrant claimed use since April 2013 without any evidence and had never launched a product using the mark. The Court found the user claim false, held the registration was fraudulently obtained, cancelled the registration, and disposed of the petition.

What the court decided

AI extract

Certiline Srl, Via Piave, 8, 1-21100 Varese, Italy Vs… — Intellectual Property | Delhi HC (2024)

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$~20

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

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C.O. (COMM.IPD-TM) 105/2022

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CERTILINE SRL, VIA PIAVE, 8, 1-21100 VARESE, ITALY

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..... Petitioner Through: Mr. Sharabh Srivastava and Ms. Anshukaamah, Advocates.

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versus

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INDIGO PRINTS PVT LTD. B-95, FLATTED FACTORY COMPLEX, OKHLA PHASE-3, NEW DELHI & ANR

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..... Respondents

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Through: Ms. Aarti Manchanda, Advocate for R-1.

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Mr. Harish Vaidyanathan Shankar, CGSC, Srish Kumar Mishra and Mr. Alexander Mathai Paikaday, Advocates for R-2.

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CORAM: HON'BLE MR. JUSTICE SANJEEV NARULA O R D E R

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10.01.2024

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The present petition seeks cancellation of trademark ‘ CERTICARD’ registered under trademark No. 3495867 in Class 17 [ “impugned mark” ] in the name of Respondent No. 1/ Indigo Prints Private Limited.

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Counsel for the Petitioner argues that, amongst several grounds urged in the petition, the impugned mark is liable to be cancelled solely for the reason that Respondent No. 1 has furnished false user details at the time of obtaining registration. To support this contention, he places reliance on the

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This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/05/2024 at 12:48:18

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online status page of the impugned mark, which reflects that Respondent No. 1 applied for registration claiming use of the impugned mark since 1^st April, 2013. However, this assertion is false, as is evident from the reply filed by Respondent No. 1, wherein they have admitted to not having launched any their product using the impugned mark. Further, there are no documents furnished by Respondent No. 1 before the Trademark Registry or annexed with their reply to support their claim of use at the time of registration. In view of the above, counsel for Petitioner submits that registration of the impugned mark was obtained fraudulently and therefore should be cancelled.

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On the other hand, counsel for Respondent No. 1 states that although the impugned mark may not have been applied to any physical product, Respondent No. 1 has been marketing by utilising the trademark ‘CENTICARD’. However, she candidly admits that no documents to support the claim of use since 1^st April, 2013, were filed before the Trademark Registry or along with the reply to the present petition.

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In the opinion of the Court, in absence of any cogent material on record to prove the claim of user from 1^st April, 2013, it cannot be held that Respondent No. 1 had been using the impugned mark from the date claimed. Respondent No. 1 has admitted that they have still not actually launched any physical product using the impugned mark. Furthermore, although they claim to have procured raw materials and created a marketing channel for launch of their product, however, there is no evidence furnished to support this claim. In view of the above, the registration obtained by Respondent No. 1 is evidently on the basis of a false statement, which amounts to fraud. Thus, the registration of the impugned mark is liable to be cancelled.

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This is a digitally signed order.

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The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 13/05/2024 at 12:48:18

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This conclusion of the Court is supported by the view expressed in other decision rendered by this Court in Suresh Kumar Jain Vs. Union of India & Anr¹ . The said decision was affirmed in LPA No. 676/2010² , wherein the Division Bench observed as under:

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“7. … Once we accept that the appellant has not been able to place on record any evidence to show that the appellant had been using the trademark since April 1995, which was the basis of seeking the registration, the conclusion would be that the registration was obtained on the basis of a false statement and would amount to fraud.”

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The decision in Suresh Kumar Jain (supra) was also followed by this Court in Vivek Kochher & Anr. Vs. M/s KYK Corporation Ltd. & Anr.³ .

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In view of the foregoing, the Court concludes that the impugned mark is liable to be cancelled. Accordingly, the following directions are issued: 7.1. Registration of Respondent No. 1’s impugned mark ‘CERTICARD’ under No. 3495867 in Class 17 is cancelled. Trademark Registry shall issue appropriate notification to this effect within two weeks from date of receipt of the copy of this order.

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7.2. Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.

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Before parting, the Court notes that none of the other grounds urged in the present petition have been examined. In the opinion of the Court, the ground of false use claim at the time of registration is sufficient to require cancellation of the impugned mark, and the petition succeeds solely on that ground.

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