Delhi High Court Cancels 'SHAKTI' Trademark On 'SAKTHI' Mark Owner's Plea

The Delhi High Court has directed the Registrar of Trade Marks to remove the trademark "SHAKTI" from the Register of Trade Marks after holding that it was registered without any bona fide intention to use the mark.

The court found that neither the registered proprietor nor the assignee had produced any documentary or other evidence showing independent use of the standalone "SHAKTI" mark.

Justice Tushar Rao Gedela passed the judgment on June 24 while allowing a rectification petition filed by P.C. Duraisamy, proprietor of the Tamil Nadu-based "SAKTHI" brand, against the registration obtained by Kewal Krishan Kumar.

The court observed, "It is astounding to note that there is not even a single scrap of proof, documentary or otherwise, placed on record by either respondent no.1 or respondent no.3 to establish, demonstrate or corroborate the contention that the said mark has been used in the past."

Duraisamy claimed to have adopted the "SAKTHI" mark in 1977 for food products including spices, masala powders, edible oils, pickles, flour and papad. He challenged Kumar's registration of the word mark "SHAKTI", which was applied for in March 1996 and registered in May 2018.

The assignee of the "SHAKTI BHOG" trademark portfolio defended the registration by contending that use of "SHAKTI BHOG" should be treated as use of "SHAKTI", since "BHOG" was common to trade and non-distinctive. While describing the submission as "attractive" and "captivating", the court declined to accept it.

It noted that an earlier order recognising the petitioner's rights had remained unchallenged and that neither the registered proprietor nor the assignee had produced any tangible evidence of independent use of the "SHAKTI" mark before the application, after its registration, or at any time in between.

The court held, "Although, the aforesaid argument is not only attractive but also captivating and plausible. However, in the opinion of this Court, the said interpretation, even if accepted, cannot be applied to the facts of this case."

The court noted that although the petitioner's invoices from 1994 and 1996 referred only to "Sakthi Trading Company", invoices from January 2010 onwards displayed the "SAKTHI" trademark. On that basis, it concluded that the petitioner was both the prior registrant and the prior user of the mark.

It also upheld the assignee's right to contest the proceedings, ruling that the assignment deed covered pending applications relating to "SHAKTI BHOG" and its variants, which included "SHAKTI".

Rejecting the plea of honest concurrent use, the court held that protection could not be claimed without evidence of actual use.

The court held, "Mere assertion, without any tangible evidence, shall not fulfill the requirements of Section 12 of the Act."

The court also found that the rival marks were phonetically similar and conveyed the same meaning.

The court observed, "The placement of the letter 'H' in the mark of the petitioner or the mark of respondent no.1 at different places really does not make any difference since both marks are phonetically similar and convey identical meaning i.e. 'power', 'energy' or 'ability'."

The court directed the Trade Marks Registry to cancel and remove the registration of "SHAKTI" within four weeks. No order as to costs was passed.