The Delhi High Court has affirmed that prior use and deceptive similarity can override later trademark registrations, even when the later mark is formally registered. In a decisive ruling, the Court cancelled two registrations of the mark 'GOLDI' held by respondents, finding them deceptively similar to the petitioner’s long-standing 'GOLDIEE' trademark, and held that such confusion undermines the foundational purpose of trademark law.
Background & Facts
The Dispute
The petitioner, Shubham Goldiee Masale Pvt. Ltd., is a Kanpur-based manufacturer of spices and edible oils, operating under the trademark 'GOLDIEE' since 1980. The respondents, Jai Shiv Oil Industries and others, registered the mark 'GOLDI' in Class 29 (edible oils) in 2005 and in Class 31 (oil cake for animals) in 2012. The petitioner challenged these registrations on grounds of deceptive similarity, prior use, and fraudulent acquisition.
Key Facts
- The petitioner adopted and used the trademark 'GOLDIEE' since 01.10.1980, with the earliest registration dated 01.10.1980 in Class 29 and a subsequent registration on 27.03.1996 in Classes 29 and 30.
- The respondent no.1 filed its first application for 'GOLDI' in Class 29 on 04.08.2000, claiming use from 01.01.2000.
- The respondent no.1 filed a second application for 'GOLDI' in Class 31 on 15.09.2010, again claiming use from 01.01.2000.
- The petitioner’s turnover under 'GOLDIEE' reached Rs. 43.44 Crores in FY 2000-01, rising to Rs. 297.05 Crores by FY 2012-13.
- The petitioner submitted extensive evidence of advertising in vernacular newspapers between 2001 and 2011, ISO 9001:2000 certification (2005), HACCP certification (2007), and participation in major marathons (Delhi 2010, Mumbai 2011).
- The petitioner’s products are distributed through approximately 1,200 distributors and C&F agents across India.
- The respondent no.1 assigned the impugned 'GOLDI' mark to respondent no.3 via Assignment Deed dated 17.09.2015.
- Respondent no.1 and respondent no.3 failed to file any reply, appear in proceedings, or rebut the petitioner’s claims despite being served on 04.11.2024.
Procedural History
- 04.08.2000: Respondent no.1 files trademark application for 'GOLDI' in Class 29.
- 15.09.2010: Respondent no.1 files trademark application for 'GOLDI' in Class 31.
- 16.09.2005: Registration granted for 'GOLDI' in Class 29.
- 16.03.2012: Registration granted for 'GOLDI' in Class 31.
- Late August 2014: Petitioner becomes aware of respondent’s registration.
- 2021: Petitioner files rectification petitions before the Intellectual Property Appellate Board (IPAB).
- 18.01.2022: Petitions transferred to Delhi High Court following abolition of IPAB.
- 29.08.2022: Court notice issued to respondents.
- 16.12.2022: Respondent no.2 served; respondent no.1 remains unserved.
- 17.09.2015: Assignment of 'GOLDI' mark to respondent no.3.
- 06.11.2024: Service completed on respondent no.1 and proposed respondent no.3.
- 19.02.2025: Respondent no.3 impleaded as party.
- 01.05.2025: Right to file replies closed for respondents.
- 04.08.2025: Respondents proceeded ex-parte.
- 08.04.2026: Judgment delivered by Delhi High Court.
Relief Sought
The petitioner sought cancellation and removal of the impugned 'GOLDI' trademarks registered under No. 945240 (Class 29) and No. 2023762 (Class 31), along with a stay on their operation during pendency of proceedings.
The Legal Issue
The central question was whether a later-registered trademark 'GOLDI' can remain on the Register of Trade Marks when it is phonetically, visually, and structurally deceptively similar to a prior-registered and prior-used mark 'GOLDIEE', and whether the absence of any rebuttal from the respondent justifies cancellation under Sections 9, 11, and 47 of the Trade Marks Act, 1999.
Arguments Presented
For the Petitioner
Mr. Ajay Amitabh Suman argued that 'GOLDIEE' was adopted in 1980 and registered since then, establishing prior rights. He contended that 'GOLDI' is deceptively similar to 'GOLDIEE' in all aspects - phonetically (identical pronunciation), visually (near-identical script), and structurally (only omission of 'EE'). He relied on Fybros Electric (P) Ltd. v. Vasu Dev Gupta and FDC Limited v. Docsuggest Healthcare Services to establish that similarity in marks, coupled with common trade channels and consumer base, creates likelihood of confusion. He further argued that the respondent’s failure to explain the origin of 'GOLDI' or provide evidence of use prior to 2000 amounted to fraud under Section 47(1)(a), and that the mark lacked distinctiveness under Section 9(2)(a).
For the Respondent
No arguments were presented by the respondents, who remained absent throughout the proceedings. The Court noted that no pleadings, affidavits, or evidence were filed to rebut the petitioner’s claims or to establish bona fide adoption of 'GOLDI'.
The Court's Analysis
The Court conducted a detailed comparative analysis of the two marks, noting that the only difference between 'GOLDIEE' and 'GOLDI' is the omission of the letters 'EE'. In both English and Hindi scripts, the dominant and most prominent element of each label is the word 'GOLDI' or 'GOLDIEE', with identical font, style, and positioning. The Court held that an average consumer with imperfect recollection would be likely to confuse the two, especially since both parties operate in the same market - edible oils and foodstuffs.
"Except for the removal of the letters 'EE' from the mark 'GOLDIEE' of the petitioner, there is no substantial or apparent distinction, inasmuch as the pronunciation would still remain identical and visually both are nearly similar."
The Court emphasized that the classification of goods under the Trade Marks Act is not determinative of whether goods are allied or cognate. Citing FDC Limited, it held that goods in Class 31 (oil cake for animals) and Class 30 (foodstuffs for humans) may still be cognate if they are sold through the same retail outlets and targeted at overlapping consumer segments. The petitioner’s evidence that oil cake for animals is sold alongside human food products in the same stores was accepted as sufficient to establish likelihood of confusion.
The Court further held that the respondent’s failure to file any response, despite being served, rendered the petitioner’s averments and documentary evidence deemed admitted. The absence of any explanation for the adoption of 'GOLDI' - especially given the petitioner’s established reputation since 1980 - led the Court to infer bad faith. The Court applied Section 47(1)(a) to cancel the registration, finding that the mark was obtained without bonafide intention and without proof of use three months prior to application.
The Court also found that Section 9(2)(a) (lack of distinctiveness) and Section 11(1)(a) and (b) (likelihood of confusion with prior registered mark) were clearly attracted. The prior registration and use of 'GOLDIEE' in Classes 29 and 30 precluded the registration of a deceptively similar mark in related classes.
The Verdict
The petitioner succeeded. The Court cancelled and directed the removal of the trademark 'GOLDI' registered under No. 945240 (Class 29) and No. 2023762 (Class 31) from the Register of Trade Marks. The Registrar of Trade Marks was directed to comply with this order within six weeks from the date of judgment. No costs were awarded.
What This Means For Similar Cases
Prior Use Trumps Later Registration
- Practitioners must prioritize documenting and preserving evidence of prior use and advertising from the earliest date of adoption.
- Even if a mark is registered later, a senior user with documented sales, advertising, and market presence can successfully challenge registration under Sections 11 and 47.
- The burden shifts to the respondent to explain the origin of a similar mark; silence or non-appearance is fatal.
Deceptive Similarity Is Not Limited to Identical Classes
- Courts will examine commercial reality, not just class boundaries, to determine if goods are cognate or allied.
- Retail overlap, consumer overlap, and complementary use (e.g., human food and animal feed sold in same stores) can establish likelihood of confusion.
- Trademark applications must be scrutinized for phonetic, visual, and structural similarity - even minor omissions (like 'EE') may not suffice to avoid deception.
Fraud and Non-Response Are Grounds for Cancellation
- Failure to respond to rectification petitions, even if technically permissible, invites adverse inference and facilitates cancellation under Section 47(1)(a).
- Absence of evidence of bona fide adoption or use prior to application is treated as fraudulent conduct.
- Practitioners should advise clients to file comprehensive affidavits even in ex-parte proceedings to avoid default cancellation.
