Madras High Court Rejects Challenge To 'GANESHA' Trademark, Allows Coexistence Of Similar Marks

The Madras High Court has recently dismissed an appeal by Ganesh Consumer Products Ltd. against the registration of the “GANESHA” trademark in favour of Shankar Industries, holding that similar marks can coexist in limited situations, including where territorial restrictions reduce the likelihood of conflict.

Justice Senthilkumar Ramamoorthy upheld the September 11, 2024, order of the Registrar of Trade Marks, which granted registration of device mark No. 1831646 in Class 30 to Shankar Industries, a partnership firm represented by K.R. Nagendra and K.N. Shobha. The class covers staple food products, including flour, and the mark is used for gram flour.

At the heart of the dispute was rival use. Ganesh Consumer Products Ltd. pointed to invoices dating back to 1992 and advertising material to assert prior use of marks containing “GANESH.”

It questioned the evidentiary value of the respondents' material, arguing that the partnership deed only showed the firm's existence and that the Chartered Accountant's certificate did not disclose underlying records or carry an affidavit.

The appellant argued that the respondents had not proved use of the mark. It said the partnership deed only showed the existence of the firm. It also questioned the Chartered Accountant's certificate, saying it did not include supporting documents or an affidavit. It further argued that the Registrar wrongly allowed registration without properly comparing the marks.

The Court noted that Section 12 of the Trade Marks Act allows registration of similar marks by more than one party if they have been used honestly over time or if there are special reasons to allow both to continue.

Shankar Industries pointed to its earlier registered mark (No. 460314) with a user claim from 1978. It also said the appellant had withdrawn earlier rectification proceedings against that mark without liberty to refile.

The Court found that the Chartered Accountant's certificate could be accepted as evidence of use. It noted that the Registrar is not strictly bound by the Evidence Act and that the appellant had not objected to the certificate earlier.

On use, the Court noted that the appellant showed use from 1992, while the respondents showed use from 1995 to 1996. It also noted the respondents' earlier registered mark with a user claim from 1978.

The Court placed weight on territorial limits attached to the marks. The respondents' mark was limited to Karnataka, while the appellant's marks were limited to West Bengal. It held that this was a valid reason to allow both marks to exist under Section 12.

“It is evident from the text of Section 12 that a person applying for registration may claim the benefit of Section 12 not only if such person qualifies as an honest and concurrent user but also if there are other special circumstances, which, in the opinion of the Registrar, make it proper to permit registration by a later applicant of a mark which is identical or similar to marks already registered or not in respect of the same or similar goods or services," the court said.

The court also refused to accept additional documents filed by the appellant, including advertisements from 1936. It said there was no pleading linking the appellant to those documents and that they were outside its case of use since 1950.

The Court held that there was no reason to interfere with the Registrar's order and dismissed the appeal, upholding the registration of the “GANESHA” trademark in favour of Shankar Industries.

For Appellant: Advocate Adarsh Ramanujan

For Assistant Registrar of Trademarks & G.I. Registry:  S.Jerome, CGSC

For Respondents 2 and 3: R.Sathish Kumar