Delhi High Court Cancels 'STONEX WORLD' Mark Finding Likelihood Of Confusion With 'STONEX India Pvt Ltd'

The Delhi High Court on 10 August cancelled the registration of the trademark “STONEX WORLD” held by individual proprietor Mohit Kumawat, after finding it deceptively similar to the registered “STONEX” marks of Stonex India Private Limited, a dealer in marble and natural stone.

Justice Jyoti Singh allowed a rectification petition filed by Stonex India under Section 57 of the Trade Marks Act, holding that “the averments of the petition including the aforesaid allegations are deemed to be admitted.”

Stonex India had sought removal of the mark on the ground that it was deceptively similar to its registered “STONEX” marks. It alleged that the registration had been obtained through procedural manipulation.

When Kumawat applied for the mark, he uploaded a fragmented device containing only the “SW” abbreviation, without the words “STONEX WORLD”.

The first Examination Report dated 10 October 2023 flagged the discrepancy and directed the applicant to file Form TM-M “to confine the TRADEMARK as device uploaded by the Applicant does not contain the word STONEX WORLD.” Kumawat subsequently filed a TM-M stating that the omission was a clerical error and sought to add the words “STONEX WORLD”.

The Registry accepted the request, after which a second Examination Report raised only an unrelated correction. At no stage did the Registry cite Stonex India's marks as conflicting. Kumawat did not appear or contest the petition and was proceeded against ex parte.

The Court therefore treated the allegations in the petition as admitted. It questioned why the Registry, after directing the applicant to confine the mark to the incomplete device, later accepted “STONEX WORLD” without examining whether the omission was a clerical error or deliberate.

It further held that once the words were added, the Registry ought to have conducted a fresh search for conflicting marks under Section 11(1) of the Trade Marks Act read with Rule 33 of the Trade Marks Rules, 2017.

The Bench noted that the exercise was never carried out and described this as “a serious procedural violation” that allowed the respondent to “succeed in its design to obtain registration in the absence of Petitioner's marks being cited as conflicting marks.”

On merits, it found “STONEX” to be the dominant part of both marks and held that the addition of “WORLD” was insufficient to distinguish them.

Given that the marks covered identical goods and had common trade channels and a common consumer base, the Bench held that “there is every likelihood of confusion amongst members of the public”, making the registration contrary to Section 11(1).

Accordingly, the High Court allowed the petition and cancelled the registration of “STONEX WORLD”. It directed the Registrar of Trade Marks to remove the mark from the register within eight weeks to maintain its purity.