Delhi High Court Protects 60-Year-Old Trademark Rights, Orders Removal of 'ARUN' From 'AiC ARUN' Mark
The Delhi High Court on Monday ordered the removal of the word “ARUN” from Alka Industrial Corporation's registered trademark “AiC ARUN,” holding that the mark infringed the six-decade-old “ARUN” brand of Satya Paul & Company used for sewing machines.
Allowing a rectification petition filed by Satya Paul & Company, Justice Tushar Rao Gedela held that the firm had continuously and uninterruptedly used the trade name “ARUN” since 1962 and had established substantial goodwill and reputation in the mark over the decades.
The Court noted that the use of the prefix “AiC” does not create any distinctiveness or distinction between the two trademarks, as “ARUN” remains the essential and dominant component of the mark.
While AiC was permitted to continue manufacturing under the mark "AiC", it has been cautioned to comply with the "safe distance rule" from Satya Paul's trademark.
Satya Paul argued that the marks were so similar they fulfilled the triple test: deceptive similarity, identical class of goods (sewing machines), and a common consumer base. They highlighted their vigilance in protecting the brand, citing numerous legal suits against infringers that were successfully decreed in their favour over several decades.
In contrast, AiC argued that "ARUN" is a common generic name and publici-juris, meaning no single entity should claim exclusive rights to it. They further contended that Satya Paul had lost the right to challenge the mark because they failed to file a formal opposition when "AiC ARUN" was first advertised in the Trade Marks Journal in 2010.
The Court took note of Satya Paul's "overwhelming documentary evidence" of its long-standing presence, including trademark registrations dating to 1976 and copyright registrations for its artistic labels from 1999.
Justice Gedela dismissed the AiC's arguments and clarified that failing to file an initial opposition does not bar an aggrieved party from later seeking rectification under Section 57 of the Trade Marks Act, 1999.
The Court concluded that "ARUN" was the dominant and essential feature of both trademarks. It held that an ordinary consumer with average intelligence and imperfect recollection would likely be deceived into believing AiC's goods were associated with the "ARUN" brand.
Accordingly, the petition was allowed, and the Registrar of Trade Marks was directed to rectify the register by removing "ARUN" from AiC's registration.
For Satya Paul: Advocates Manvendra Mukul, J.K. Pandey, Vivek, Tripti Saxena and Mukesh Kumar
For Alka Industrial Corporation: Advocate Subhash C. Jindal