Ardo Medical Ag Vs Ms Sdb International and Anr. & Anr.

The present Rectification Petition has been filed under Section 57 of the Trade Marks Act, 1999 (“ Act ”) seeking rectification of the Register of

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Trade Marks by cancellation / removal of the Trade Mark ‘ ’ bearing Trade Mark Certificate No. 4578111 registered in Class 44 (“ Impugned Trade Mark ”) registered in favour of Respondent No. 1. PROCEEDINGS IN THE PRESENT SUIT:

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The notice in the present Petition was issued vide Order dated 04.04.2025 and the Respondents were given a time of four weeks to file their respective replies to the present Petition, further, the learned Counsel for the Parties were also granted liberty to file their respective written synopsis within a period of four weeks.

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Page 1 of 8

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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Vide Order 29.07.2025, the learned Counsel for Respondent No. 2 submitted that Respondent No. 2 does not wish to file a Reply to the present Petition. Respondent No. 1 did not appear despite service and accordingly Respondent No. 1 was given a last and final opportunity to file its Reply.

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None appeared for Respondent No. 1 even on 13.10.2025 and accordingly, Respondent No. 1 is proceeded ex-parte. SUBMISSIONS ON BEHALF OF THE PETITIONER: 5. The learned Counsel for the Petitioner made the following submissions:

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5.1. The Petitioner, Ardo Medical AG, is a Swiss company with its head office in Unterägeri and subsidiaries in Germany, United States, United Kingdom and Netherlands. The Petitioner has been developing, producing and distributing products to support premature babies and newborns in the development, accompany mothers through their pregnancy, childbirth and breastfeeding and offer safety and comfort. The Petitioner’s signature products relate to breast-pumps, perineal massage fluids and products for breast care. These products have been developed by the Petitioner company for over 25 years under the Mark

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‘ ’ (“ Petitioner’s Mark ”).

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5.2. The Petitioner is the registered owner of the Petitioner’s Mark in United Kingdom, Switzerland and United States bearing Application Nos. UK00800998581, 64519/2008, and 4924734 respectively. The Petitioner’s Mark is also a protected Mark under the WIPO Madrid System bearing International Registration Number 998581 with effect from 30.03.2009 to 30.03.2029 in Classes 5, 10, and 44. The details of registrations of the Petitioner’s Mark is as under:

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Page 2 of 8

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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Mark	Jurisdiction	Application Details
	Switzerland	Application No. 64519/2008 Registration date: 10.12.2008
	International Registration under the Madrid System	Application No. 998581 Registration date: 30.04.2009
	United Kingdom	Application No.: UK00800998581 Registration date: 12.04.2010
	United States of America	Application No.: 4924734 Registration date: 29.03.2016

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5.3. The Petitioner is also using the following websites for the sale of the Petitioner’s products:

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Domain Name	Jurisdiction
https://ardo.ch/	Switzerland
https://ardo.de/	Germany
https://ardomedical.nl/	Netherlands
https://www.ardomedical.co.uk/	United Kingdom
https://www.ardo-usa.com/	United States of America
http://www.ardo.com.cn/	China
https://ardomedical.com/	International
https://ardomedical.in/	India

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5.4. The Petitioner has an average global sale between 10 Million Swiss Francs to 15 Million Swiss Francs for the past 5 years from the year 2019 till the year 2024. The Petitioner’s sales turnover in India for the past 5 years has been 100,000 Swiss Francs. Petitioner’s registrations over the Petitioner’s Mark in various jurisdictions undoubtedly reflects that the Petitioner has been using the Petitioner’s

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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Mark, which is identical to the Impugned Mark, at least 12 years before Respondent No. l applied for the registration of the Impugned Mark. The Petitioner has also been advertising the Petitioner’s products by setting up exhibitions in international trade fairs and publishing advertisements in print and electronic media containing the Mark

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5.5. Sometime in 2020, Respondent No. l approached the Petitioner directly with an order for the Petitioner’s products. The Petitioner had already engaged some distributors in India at the relevant time who had facilitated Respondent No. l’s order directly from the Petitioner. However, there was no separate distributorship agreement between Petitioner and Respondent No. l. From June 2020 to January 2021, the Respondent No.1 continued to order the Petitioner’s products on a prepayment basis. As per the last order placed by Respondent No. l, 1300 Swiss Francs had been paid by the Respondent No. l to the Petitioner. The Petitioner had shipped Petitioner’s products worth about 300 Swiss Francs but Respondent No. l stopped ordering from the Petitioner sometime after January 2021. The balance 1000 Swiss Francs paid by Respondent No.1 continues to remain pending with the Petitioner, which the Petitioner is willing to refund to Respondent No. l.

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5.6. The Petitioner found out about the Respondent No. l’s registration over the Impugned Mark sometime in January 2025 when it was negotiating with some prospective distributors for the Petitioner’s products in India. The Petitioner discovered that Respondent No. l had misrepresented itself as the proprietor of the Petitioner’s Mark and obtained registration for the Impugned Mark from Respondent No. 2 in July 2020. The registration over the Impugned Mark has been obtained

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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in a mala fide manner without disclosing the Petitioner’s registrations for the Petitioner’s Mark in various countries and the Petitioner’s status as a prior user of the Petitioner’s Mark.

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5.7. The Petitioner approached Respondent No.1 under the belief that the Respondent No.1 must have made a typographical error while obtaining registration over the Impugned Mark. During the verbal telephonic discussions with Respondent No. l in February 2025, the Petitioner was informed that some unsold stock of the Petitioner’s products was lying with Respondent No. 1. Respondent No. 1 wanted the Petitioner to pay for this unsold stock along with the balance of 1000 Swiss Francs which was paid by Respondent No. 1 as pre-payment at the time when it used to order the Petitioner’s products. Upon payment of the balance amount, the Respondent No.1 assured the Petitioner to carry out the necessary paperwork to reflect the Petitioner as the registered owner of the Impugned Mark with the Respondent No. 2. The Petitioner’s representative issued a communication dated 10.02.2025 to Respondent No. l asking for the final amount which was due from the Petitioner to Respondent No. l for clearing out the unsold stock and the balance money paid by the Respondent No. l to the Petitioner. However, Respondent No. l did not respond to the said communication and has demanded an amount of almost ₹20,00,000 to assign the Impugned Mark to the Petitioner. Therefore, it is clear from Respondent No. 1’s conduct that it is a Trade Mark squatter and has deceitfully registered the Impugned Mark with the intention to extract a hefty payment from the Petitioner.

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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5.8. The Supreme Court in S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683, held that under the scheme of the Act is such that the rights of the prior user of the Trade Mark are superior over the rights of the prior registrant of Trade Mark.

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5.9. This Court in Kia Wang v. The Registrar of Trademarks & Anr. , 2023:DHC:6684, Russell Corpn. Australia Pty. Ltd. v. Ashok Mahajan , 2023:DHC:5556 and BPI Sports LLC v. Saurabh Gulati & Anr., 2023 SCC OnLine Del 2424, has directed rectification of the register of Trade Marks, on the ground that the registration of the Trade Mark was applied for in bad faith.

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5.10. In light of the above, it is stated that the Impugned Trade Mark has been wrongly entered in the Register of Trade Marks and therefore is liable to be cancelled in terms of Section 57 of the Act.

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SUBMISSIONS ON BEHALF OF THE RESPONDENTS:

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Respondent No. 1 is proceeded against ex-parte .

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Respondent No. 2 is a formal party. The learned Counsel appearing for Respondent No. 2, has submitted that they shall comply with any directions passed by this Court.

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ANALYSIS AND FINDINGS:

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At the outset, it is to be noted that in the absence of any appearance and reply by Respondent No. 1, the averments made in the present Petition have remained uncontroverted, accordingly, for all purposes, they are deemed to have been admitted.

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The Petitioner has obtained registration of the Petitioner’s Mark in various jurisdictions and is the prior user of the Petitioner’s Mark. Respondent No. 1, having dealt with the Petitioner in the past was well

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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aware of the Petitioner’s products bearing the Petitioner’s Mark and it’s goodwill. The Petitioner has been able to establish its case of being the prior

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user of the Trade Mark ‘ ’ which was coined and adopted by the Petitioner in 2008 and the Petitioner has subsequently incorporated ‘ARDO’ in the websites being used to sell the Petitioner’s products across various jurisdictions. The Supreme Court in S. Syed Mohideen (supra) has held that the rights of the prior user of a Trade Mark are superior to the rights of the prior registrant of the Trade Mark.

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It is trite law that a prior user’s rights will override the rights of a subsequent user even though the latter’s mark may be a registered Trade Mark. The Petitioner has categorically pleaded use of the Petitioner’s Mark from 2008 and claimed that the Petitioner’s Mark is prior to that of Respondent No. 1, who despite being impleaded as a party by the Petitioner and being served with the notice of this petition, chose to remain absent, instead of contesting the position. In the absence of a reply controverting the pleadings, the same have to be treated as admitted albeit in this case Petitioner has been able to show prior user. Therefore, in wake of prior use of the Petitioner’s Mark, coupled with several registrations abroad as well as the continuous and uninterrupted use of the Petitioner’s Mark in course of trade in respect of the goods aforementioned, the Petitioner’s Mark has become linked with the Petitioner’s products and is associated with the Petitioner.

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This Court in Kia Wang (supra) , Russell Corpn. (supra) and BPI Sports (supra) , has directed the rectification of the Register of Trade Marks when the registration of the Trade Mark itself was done in bad faith. Respondent No. 1 has sought an exorbitant amount of money from the

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Page 7 of 8

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

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Petitioner to transfer the ownership of the Impugned Mark in the name of the Petitioner. The conduct of Respondent No. 1 portrays bad faith and that the Impugned Mark was registered by Respondent No. 1 with an intention to extort the Petitioner into paying Respondent No. 1 a hefty amount for the transfer of the ownership of the Impugned Mark.

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Respondent No. 1’s approach of applying for the Impugned Mark identical to the Petitioner’s Mark which is globally reputed reflects a deliberate practice of Trade Mark Squatting. This manipulative tactic entails adopting, seeking registration of, or even securing registration for Trade Marks linked with established brands, with the calculated intent of later selling these rights at a premium to the genuine Trade Mark proprietors. Such conduct undermines the sanctity of the Trade Mark Register and highlights the necessity to uphold and protect the rights of bona fide proprietors.

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Accordingly, the present Petition is allowed and Respondent No. 2, the Registrar of Trade Marks, Mumbai is directed to remove / cancel /

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rectify the Impugned Trade Mark ‘ ’ bearing Trade Mark No. 4578111 registered in Class 44 from the Register of Trade Marks. 14. The Registry is directed to send a copy of the present order to the Trade Mark Registry at e-mail - [email protected] for compliance.

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TEJAS KARIA, J

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OCTOBER 13, 2025 / ‘AK’

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Page 8 of 8

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C.O. (COMM.IPD-TM) 92/2025

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:1 7.10.2025 15:18:02

Ardo Medical Ag v. Ms Sdb International and Anr. & Anr.

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Ardo Medical Ag v. Ms Sdb International and Anr. & Anr.

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