Delhi High Court
Rpg Enterprises Limited vs Rpg Industrial Products Pvt Ltd. on 8 January, 2025
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 203/2022
RPG ENTERPRISES LIMITED .....Petitioner
Through: Mr. Anirudh Bakhru, Mr. Naqeeb
Nawab, Mr. Ashutosh Ranga, Ms.
Sejal, Ms. Apurva Bhutani, Ms. Vijay
Laxmi Rathi and Mr. Umar,
Advocates
Mob: 8209086773
versus
RPG INDUSTRIAL PRODUCTS PVT LTD. .....Respondent
Through: Mr. Anubhav Anand, Advocate for R-
1.
Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Alexander Mathai Paikaday,
Advocates for respondent
Email: [email protected]
(Mob: 9810788606)
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
JUDGMENT
% 08.01.2025
MINI PUSHKARNA, J:
1. The present rectification petition has been filed seeking removal of
trade mark registration no. 2778255 for the mark (“impugned
registration”) in Class 23, registered in the name of respondent no. l, i.e.,
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By:AMAN UNIYAL
Signing Date:08.01.2025
17:08:59
RPG Industrial Products Pvt. Ltd.
2. The petitioner contends that it is an aggrieved party under Sections
47/57 of the Trade Marks Act, 1999, and thus, prays that the present petition
be allowed and the impugned registration be rectified from the Register of
Trade Marks.
3. The facts as canvassed in the petition, are as follows:
3.1 The petitioner is a multi-group conglomerate which consists of
various companies operating under the parent organisation. These
companies, identified as RPG Group Companies use “RPG logo” and trade
mark “RPG” for which permission is granted by way of a license for use of
the RPG logo and trademark as a part of its corporate
identity/business/trademark in relation to promotional and publicity
material.
3.2 The acronym “RPG” stands for the initials of Sh. R. P. Goenka,
founder of the RPG Group and a renowned industrialist widely respected by
people from all walks of life. The RPG Group Companies have been using
the said logo and the letters “RPG”, which forms an integral part of almost
all the businesses that have been undertaken by the RPG Group Companies.
3.3 The petitioner‟s history can be traced back to 1979 and over the years,
it has diversified into various business fields with primary areas of
businesses being tyres, infrastructure, information technology,
pharmaceuticals, energy, senior care, e-commerce and plantations.
3.4 The petitioner has honestly adopted the distinctive and unique trade
mark RPG, which also serves as the trading name/house mark of the
petitioner. Keeping in mind the heritage of the brand RPG, the petitioner hasSignature Not Verified
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adopted the trade mark in conjunction with the core wordmark “RPG”. Further, the marks “RPG” and have been used
for a very long period of time and have, as of date, created an indelible
association in the minds of the general public.
3.5 The petitioner holds various trademark registrations for its RPG
Marks, which are tabulated as under:
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3.6 The petitioner also has a presence on the internet and maintains active
websites at http://www.rpggroup.com/, http://www.rpglifesciences.com/,
http://raychemrpg.com/, http://www.rpgcables.com/,
http://www.kecrpg.com, http://www.saetowers.com,
http://www.harrisonsmalayalam.com, https://www.ceat.com/,
https://www.ceatspecialty.com/ and http://www.zensar.com/. The said
websites clearly display the RPG Marks and the goods and services which
are marketed and offered by the petitioner and are accessible in the whole of
India and worldwide, thus, increasing awareness of the petitioner’s RPG
Marks.
3.7 The petitioner is also the registered copyright owner of ,
vide copyright registration Certificate No. A-49373/88CO issued by the
Deputy Registrar of Copyright since 30th June, 1988 and has been using the
same at least since 1987.
3.8 The petitioner was made aware of the use of the identical trade name
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of respondent no.1 as that of the petitioner. The petitioner sent a cease and
desist notice dated 06th October, 2017 to respondent no.1. The respondent
has failed to reply to the said „cease and desist‟ notice, till date. Since no
response was received from respondent no.1, the petitioner believed that the
dispute had been resolved and no further action was taken. However, in the
month of August, 2018, attention of the petitioner was drawn to the
Registration No. 2778255 in the name of the respondent no.1, while
conducting search of the records of the Trade Mark Registry.
3.9 The search revealed that, respondent no.1 has wrongfully obtained a
registration for the impugned mark, which entirely incorporates the RPG
Marks of the petitioner. Hence, the present petition has been filed.
4. On behalf of the petitioner, it is contended as follows:
4.1 The impugned registration granted in the name of respondent no.1 is
contrary to the various provisions of the Trade Marks Act, 1999, including,
Sections 11, 12 and 18.
4.2 The respondent no. 1‟s claim of use since 01 st April, 2011 is false, as
the respondent has adduced no evidence which corroborates this date. The
earliest document reflecting use of the impugned mark dates to 02 nd March,
2013, which is contested. Claiming a false user date constitutes fraud on the
Registrar and renders the registration liable for cancellation.
4.3 The impugned registration fully incorporates the petitioner‟s well-
known mark, which was adopted without due cause. Such use unfairly
advantages the respondent no. 1 while diluting the distinctive character of
the petitioner‟s mark, leading to violation of Sections 11(1) and 11(2) of the
Trade Marks Act, 1999. Further, by virtue of the petitioner‟s common law
rights, the impugned registration is liable to be cancelled under the law of
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passing off and as per Section 11(3) of the said Act.
4.4 The impugned registration is ex-facie illegal, invalid and defective
since it has been issued in violation of Rule 33 of the Trade Marks Rules,
2017, as the Registrar did not raise any objection under Section 11 of the
Trade Marks Act, 1999, rendering the registration illegal and defective.
5. On behalf of the respondent no.1, the following submissions have
been made:
5.1 The rectification petition under Section 57 of the Trade Marks Act,
1999, is not maintainable as the petitioner is not an aggrieved party.
5.2 The mark or device of respondent no. 1 is entirely distinct and
different from that of the petitioner as the respondent‟s mark features a
unique combination of colours, lettering style, device elements, artwork,
packaging, and overall get-up, which collectively make it inherently
distinctive.
5.3 The mark “RPG” is derived from the initials of the respondent‟s
founder, Sh. Rajendra Prasad Gupta, and was conceived and adopted
honestly and in good faith. It is a very common practice in the country to use
initials of the name of the founder/directors or their surnames as trademarks
or trade names.
5.4 The respondent no. 1 is engaged in the manufacturing of polyester
staple fiber, while the petitioner primarily deals with goods classified in
Class 22. Given the dissimilarity in goods, there is no conflict or rivalry
between the two marks. It is a well-established principle of law that
exclusive rights to a mark for specific goods do not entitle the owner to
prohibit its use by others for entirely different goods.
5.5 The petitioner registered its trademark in Class 25 on 30 th August,Signature Not Verified
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2018, after the respondent‟s registration under Application no. 2778255 on
22nd July, 2017 in Class 23. Moreover, the petitioner issued a notice under
the Trade Marks Act, 1999, on 06th October, 2017, demonstrating prior
knowledge of respondent no. 1‟s mark before registering its own trademark
in Class 25.
5.6 Respondent no. 1 has been using the mark “RPG” openly,
extensively, and uninterruptedly since 2011, without any complaints of
confusion or deception from the market. Consequently, the registration and
use of respondent no. 1‟s mark are not prejudicial to the petitioner in any
manner.
6. Having heard learned counsels for the parties and having perused the
record, it is apposite to compare the two competing marks, which are as
follows:
Petitioner’s Mark Respondent no.1’s Mark
7. Perusal of the aforesaid shows that the dominant and essential feature
of the mark of the respondent no.1 is the word “RPG”, which completely
subsumes the petitioner‟s mark. The use of the mark “RPG” is highly
prominent in the mark of the respondent, masking any other discernible
element in the mind of a consumer of average intelligence having an
imperfect recollection, who would in all likelihood retain only the word
“RPG” upon chancing on the impugned registration. While comparing two
marks, the prominent, essential and distinctive features are to be compared.
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Thus, the Division Bench of this Court in the case of M/s South India
Beverages Pvt. Ltd. Versus General Mills Marketing Inc. & Anr., 2014
SCC OnLine Del 1953, has held as follows:
“xxx xxx xxx
19. Though it bears no reiteration that while a mark is to be
considered in entirety, yet it is permissible to accord more or less
importance or „dominance‟ to a particular portion or element of a
mark in cases of composite marks. Thus, a particular element of a
composite mark which enjoys greater prominence vis-à-vis other
constituent elements, may be termed as a „dominant mark‟.
xxx xxx xxx
23. It is also settled that while a trademark is supposed to be looked
at in entirety, yet the consideration of a trademark as a whole does
not condone infringement where less than the entire trademark is
appropriated. It is therefore not improper to identify elements or
features of the marks that are more or less important for purpose of
analysis in cases of composite marks.
xxx xxx xxx
26. Dominant features are significant because they attract attention
and consumers are more likely to remember and rely on them for
purposes of identification of the product. Usually, the dominant
portion of a mark is that which has the greater strength or carries
more weight. Descriptive or generic components, having little or no
source identifying significance, are generally less significant in the
analysis. However, words that are arbitrary and distinct possess
greater strength and are thus accorded greater protection. [174 F.
Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy
Corporation]xxx xxx xxx”
(Emphasis Supplied)
8. Documents on record show that the petitioner adopted the mark
“RPG” in the year 1979, derived from the initials of its founder. The
petitioner holds various trademark registrations for its “RPG” marks, with
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the earliest Indian Registration for the mark under
Registration No. 850255 in Class 12 dating back to 08th April, 1999.
9. The petitioner has also placed on record documents to show its long,
continuous, extensive and uninterrupted use and promotion. The documents
on record establish the prior use of the trademark “RPG” by the petitioner.
10. The petitioner‟s “RPG” marks have acquired the status of “well-
known” trademarks within the meaning of Section 2(1)(zg) of the Trade
Marks Act, 1999, as held by the Bombay High Court in the case of RPG
Enterprises Limited Versus Riju Ghoshal & Another, 2022 SCC OnLine
Bom 626. The relevant paragraph from the said judgment is extracted
below:
“xxx xxx xxx
51. …….. It is thus prima facie established that the Plaintiff’s RPG
marks have acquired the status of a well-known trade mark and the
Plaintiff has immense reputation and goodwill in the said trade
marks/names and the products offered thereunder. Considering the
factors such as (i) the extent of knowledge of the RPG mark, and its
recognition by the relevant public; (ii) the duration of the use of the
RPG marks; (iii) the extent of the products in relation to which the
RPG mark is being used; (iv) the extent and duration of advertising
and promotion of the RPG mark; (v) the geographical extent of the
trading area in which the RPG mark is used; (vi) the state of
registrations of the RPG mark; (vii) the volume of business under the
RPG marks; and (viii) successful enforcement against
infringers/offenders before the Courts of law/registry, I am of the
opinion that prima facie, the Plaintiff’s RPG mark deserves protection
as a well-known trade mark as the same has come to acquire a
secondary meaning to connote to the public the goods and/or services
emanating from the Plaintiff. It can be very well said that the goodwill
and reputation of the Plaintiff is not limited to a particular category or
business segment and the use of the trade mark RPG in respect of any
category of goods and services is liable to be associated with the
Plaintiff.
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xxx xxx xxx”
(Emphasis Supplied)
11. This Court notes that during the pendency of the present petition, the
mark “RPG” has been published in Journal No. 2106, dated 29th May, 2023,
for inclusion in the list of well-known trademarks maintained by the
Registrar of Trade Marks, India. Document on record pertaining to the same,
is reproduced as under:
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By:AMAN UNIYAL
Signing Date:08.01.2025
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12. It is further to be noted that the goods associated with the impugned
registration are similar, allied, and cognate to those covered under the
petitioner‟s registered mark. While the respondent no. 1 deals in polyester
wool, a material used in clothing manufacture, the petitioner‟s registration
for the mark bearing no. 3930988 in Class 25 covers
clothing, footwear, and headgear, creating an inherent connection.
13. Moreover, since the petitioner‟s mark “RPG” has already been
declared as a well-known mark, it is entitled to protection not only against
identical or similar goods, but also against dissimilar goods. Once it has
been established that the goods of the petitioner bearing the trademark have
acquired goodwill and reputation, and the public associates those goods only
with the petitioner, then, even though the goods may be different, the
possibility of confusion cannot be negated, if the marks are identical.
14. Thus, a Full Bench of Calcutta High Court in the case of Sony
Kabushiki Kaisha Versus Mahaluxmi Textile Mills, 2009 SCC OnLine Cal
531, has held as follows:
“xxx xxx xxx
28. …… Even if the goods or services of the rival traders are different,
in our opinion this factor alone would not altogether eliminate the
possibility of confusion or deception. If a highly distinctive trade mark
is applied to a class of goods which its proprietor does not deal with,
consumers may always wonder as to whether the proprietor of the trade
mark has launched a new product. The purchasing decision of the
consumers may be determined by this factor.
xxx xxx xxx”
(Emphasis Supplied)
15. Likewise, this Court in the case of Daimler Benz Aktiegesselschaft
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and another Versus Hydo Hindustan, 1993 SCC OnLine Del 605, has held
as follows:
“xxx xxx xxx
16. However, if despite legal notice, any one big or small, continues to
carry the illegitimate use of a significant world wide renowned
name/mark as is being done in this case despite notice dated 9.12.1989,
these cannot be any reason for not stopping the use of a world reputed
name. None should be continued to be allowed to use a world famed
name to goods which have no connection with the type of goods which
have generated the world wide reputation.
xxx xxx xxx”
(Emphasis Supplied)
16. Undoubtedly, the petitioner is the prior adopter and user of the mark
“RPG”. The impugned registration is liable to be expunged from the register
of trademarks, as it entirely incorporates the petitioner‟s prior and well-
known mark “RPG”. The use of the impugned registration takes unfair
advantage of and is detrimental to the distinctive character of the petitioner‟s
earlier and well-known mark.
17. The bad faith and dishonesty of respondent no.1 is evident, as it
adopted an identical mark “RPG” despite the petitioner‟s extensive prior use
and reputation built over nearly five decades. At the time of the impugned
registration, the petitioner‟s mark “RPG” was already widely recognized,
making it implausible for the respondent no. 1 to claim ignorance of the
petitioner‟s rights. The adoption of the impugned mark by the respondent
cannot be considered to be honest because the petitioner‟s trademark was
well-known at the time when the respondent got its mark registered. In the
present case, the marks are identical and the goods are allied and cognate
goods. This would lead to confusion and deception as a common consumerSignature Not Verified
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would think that the goods of the respondent emanate from the petitioner
and will lead the common man to associate the goods of the respondent with
the petitioner‟s “RPG” Group.
18. It is settled law that when the adoption of a mark is tainted with bad
faith, no amount of subsequent use can cleanse the vice of dishonest
adoption. Thus, this Court in the case of M/s. Hindustan Pencils Private
Limited Versus M/s. India Stationery Products Co. & Another, 1989 SCC
OnLine Del 34, has held as follows:
“xxx xxx xxx
30. Even though there may be some doubt as to whether laches or
acquiescence can deny the relief of a permanent injunction, judicial
opinion has been consistent in holding that if the defendant acts
fraudulently with the knowledge that he is violating the plaintiff’s
rights then in that case, even if there is an inordinate delay on the part
of plaintiff in taking action against the defendant, the relief of
injunction is not denied. The defence of laches or inordinate delay is a
defence in equity. In equity both the parties must come to the Court with
clear hands. An equitable defence can be put up by a party two has acted
fairly and honestly. A person who is guilty of violating the law or
infringing or usurping somebody else’s right can’t claim the continued
misuse of the usurped right. It was observed by Romer, J. in the matter
of an application brought by J.R. Parkington and Coy. Ltd., 63 R.P.C.
171 at page 181 that “in my judgment, the circumstances which attend
the adoption of a trade mark in the first instance are of considerable
importance when one comes to consider whether the use of that mark
has or has not been a honest user. If the user in its inception was
tainted it would be difficult in most cases to purify it subsequently”. It
was further noted by the learned Judge in that case that he could not
regard the discreditable origin of the user as cleansed by the subsequent
history. In other words, the equitable relief will be afforded only to that
party who is not guilty of a fraud and whose conduct shows that there
had been, on his part, an honest concurrent user of the mark in question.
If a party, for no apparent or a valid reason, adopts, whith or without
modifications, a mark belonging to another, whether registered or not,
it will be difficult for that party to avoid an order of injunction because
the Court may rightly assume that such adoption of the mark by the
party was not an honest one. The Court would be justified in
concluding that the defendant, in such an action, wanted to cash in onSignature Not Verified
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the plaintiff’s name and reputation and that was the sole, primary or
the real motive of the defendant adopting such a mark. Even if, in such
a case, there may be an inordinate delay on the part of the plaintiff in
bringing a suit for injunction, the application of the plaintiff for an
interim injunction cannot be dismissed on the ground that the defendant
has been using the mark for a number of years. Dealing with this aspect
Harry D. Nims in his “The Law of Unfair Competition and Trade-
Marks”, Fourth Edition, Volume Two at page 1282 noted as follows:
“Whether infringement is deliberate and wilful and the
defendant acts fraudulently with knowledge that he is
violating plaintiff’s rights, essential elements of estoppel are
lacking and in such a case the protection of plaintiff’s
rights by injunctive relief never is properly denied. “The
doctrine of estoppel can only be invoked to promote fair
dealings.”
xxx xxx xxx”
(Emphasis Supplied)
19. Honesty of adoption at the initial stage itself has to be established to
take benefit of concurrent registration under Section 12 of the Trade Marks
Act, 1999. Commercial honesty at the initial stage of adoption is required.
What is protected is innocent use of a mark by two or more persons
unknown to each other and unaware of the mark used by the other. Adoption
must be honest, bonafide and without any knowledge on the part of the
adopter. (See: Ansul Industries Versus Shiva Tobacco Company, 2007
SCC OnLine Del 74, Para 52). The petitioner has been using the “RPG”
marks since almost fifty years. The petitioner‟s “RPG” marks were already
in extensive use at the time of the impugned registration. Given the same,
the respondent no.1 would no doubt have been aware of the petitioner‟s
prior rights in the mark “RPG”.
20. As regards the contention of the respondent no.1 that “RPG” mark
connotes the initials of the founder of respondent no.1 and is, thus, entitled
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to use the said mark, the same is totally misplaced. Holding that while
adopting his name as the trade name for his business, a party is required to
act honestly and bondfidely and not with a view to cash upon the goodwill
and reputation of another, the Division Bench of this Court in the case of
Montari Overseas Ltd. Versus Montari Industries Ltd., 1995 SCC OnLine
Del 865, has held as follows:
“xxx xxx xxx
11. It is well settled that an individual can trade under his own name
as he is doing no more than making a truthful statement of the fact
which he has a legitimate interest in making. But while adopting his
name as the trade name for his business he is required to act honestly
& bonafidely and not with a view to cash upon the goodwill &
reputation of another. An individual has the latitude of trading under
his own name is in recognition of the fact that he does not have choice
of name which is given to him. However, in the case of a Corporation
the position is different. Unlike an individual who has no say in the
matter of his name, a company can give itself a name. Normally a
company can not adopt a name which is being used by another
previously established company, as such a name would be undesirable in
view of the confusion which it may cause or is likely to cause in the minds
of the public. Use of a name by a company can be prohibited if it has
adopted the name of another company.
It is well settled that no company is entitled to carry on business in a
manner so as to generate a belief that it is connected with the business
of another company, firm or an individual. The same principle of law
which applies to an action for passing off of a trade mark will apply
more strongly to the passing off of a trade or corporate name of one for
the other. Likelihood of deception of an unwary and ordinary person in
the street is the real test and the matter must be considered from the
point of view of that person. Copying of a trade name amounts to
making a false representation to the public from which they have to be
protected. Besides the name of the company acquires reputation and;
goodwill, and the company has a right too to protect the same. A
competitor cannot usurp the goodwill and reputation of another. One
of the pernicious effects of adopting the corporate name of another is
that it can injure the reputation & business of that person.
12. In the present case, there are certain striking features which have to
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be taken note of in arriving at a decision whether the appellant in
adopting the word „MONTARI‟ as a part of its corporate name is likely
to deceive or cause confusion in the minds of the public. It is not disputed
that the appellant was incorporated on April 21, 1993 after about a
decade of the incorporation of the respondent. From the record of the
trial Court it appears that the respondent & its other group of Montari
companies has an established business. On the other hand, the appellant
has entered the capital market very recently. It was noticed by the
learned single Judge that the factory of the appellant was in the process
of completion and its products have not entered market. It was not
claimed, either before us or in the memo of appeal, that the products of
the appellant are now being marketed. The respondent has explained as
to why the word „MONTARI‟ was selected by it. It is explained that the
word was coined by the respondent by deriving a part of it from the name
of the Chairman of the company and part of it from the name of his wife.
The appellant has also tried to furnish some explanation by urging that
the word „MONTARI‟ is also of significance to it and the same was
derived from the names of the father of the Managing Director of the
company and his father-in-law. It claimed in the written statement that
the father of the Managing Director is Mohan Singh while the name of
his father-in-law is Avtar Singh. However, during arguments it was not
disputed that the name of the father of the Managing Director was Kirpal
Singh. This shows that the word „MONTARI‟ has nothing to do with the
name of the father of the Managing Director. The explanation appears to
be not correct. If this is so then, what was the purpose of selecting the
word „MONTARI‟ by the appellant for use in its corporate name. No
satisfactory explanation has been given by the apellant in this regard.
It is also not a case where the appellant had no knowledge of the
corporate name of the respondent. Rather the stand of the appellant is
that in the prospectus and press reports of the company, it was pointed
out that the appellant had nothing to do with the respondent. In the
circumstances it appears to us that the adoption of the corporate name
by the appellant with the word “MONTARI” figuring in it, was not
innocent. When a defendant does business under a name which is
sufficiently close to the name under which the plaintiff is trading and
that name has acquired reputation and the public at large is likely to be
misled that the defendant’s business is the business of the plaintiff, or
is a branch or department of the plaintiff, the defendant is liable for an
action in passing off. Even if the word “MONTARI” as part of the
corporate name of the appellant was derived from the names of the father
and father-in-law of the M.D. of the appellant company it would still be
liable for an action in passing off as the use of the word “MONTARI” in
its corporate name is likely to cause confusion and injure the goodwill
and reputation of the respondent, in the sense that this is a reasonableSignature Not Verified
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and foreseeable consequence of the appellant’s action. We find from the
record of the trial court, which contains the Memorandum of Association
of six Montari group of companies and annual reports of Montari
Industries Ltd., that Montari group of industries have large operations
and some of them have been in business for a long time. The members of
the public are likely to mistakenly infer from the appellant’s use of the
name which is sufficiently dose to the respondent’s name that the
business of the appellant’s company is from the same source, or the two
companies are connected together.
xxx xxx xxx”
(Emphasis Supplied)
21. Likewise, in the case of Mahendra & Mahendra Paper Mills Ltd.
Versus Mahindra & Mahindra Ltd., (2002) 2 SCC 147, the Supreme Court
has recognised that where the name has acquired distinctiveness and a
secondary meaning in the business or trade circles, any attempt by another
person to use the name in business and trade circles is likely to create and in
probability will create an impression of a connection with the plaintiff‟s
group of companies. Such user may also affect the plaintiff prejudicially in
its business and trading activities. In the present case also, the plaintiff has
been using the mark “RPG” for a long span of time and the name has
acquired distinctiveness and a secondary meaning.
22. In view of the aforesaid detailed discussion, this Court is of the view
that the respondent no.1‟s mark is wrongly entered in the Register and
wrongly remains in the Register of Trade Marks.
23. Accordingly, the trademark bearing Registration No.
2778255 is hereby cancelled. The Trade Marks Registry shall issue an
appropriate notification to the said effect.
24. Registry of this Court is directed to supply a copy of this order to the
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 203/2022 Page 17 of 18
By:AMAN UNIYAL
Signing Date:08.01.2025
17:08:59
Trade Marks Registry at [email protected], for compliance.
25. The present petition is disposed of, with the aforesaid directions.
(MINI PUSHKARNA)
JUDGE
JANUARY 08, 2025
Kr
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 203/2022 Page 18 of 18
By:AMAN UNIYAL
Signing Date:08.01.2025
17:08:59
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