Adding a Prefix Can’t Erase Deceptive Similarity – Delhi High Court Orders Removal of ‘ARUN’ from Trademark ‘AiC ARUN’

“Prior Use Since 1962, Trademark ARUN Has Acquired Distinctiveness – Mere Registration Without Opposition Doesn’t Cure Infringement”, Delhi High Court directed the Registrar of Trade Marks to delete the word “ARUN” from the registered trademark “AiC ARUN” after holding it deceptively similar to the petitioner’s long-standing and registered mark “ARUN”. Justice Tushar Rao Gedela, while exercising jurisdiction under Sections 47, 57, and 125 of the Trade Marks Act, 1999, held that prior adoption and continuous use of the mark “ARUN” since 1962 gave the petitioner exclusive rights which were being infringed by the impugned mark.

“Dominant Feature Doctrine Reaffirmed: ‘ARUN’ Forms the Core of Both Marks”

The Court held that the impugned mark “AiC ARUN” was deceptively similar to the petitioner’s trademark “ARUN”, and that adding a prefix like ‘AiC’ did not create sufficient distinction.

“The essential and dominant component of the mark being ‘ARUN’. An ordinary person with average intelligence and imperfect recollection is bound to get confused or deceived,” observed the Court, while relying on the comparative tests of visual, phonetic and structural similarity.

Justice Gedela noted that both parties operated in Class-7, dealing with identical goods—sewing machines and their parts—and shared the same consumer base and geographical proximity, i.e., Jalandhar and Ludhiana. The Court held that the triple test of deceptive similarity, identical goods, and common trade channel was satisfied.

“Prior Use Trumps Later Registration: Petitioner’s Trademark Rights Established Since 1962”

The Court meticulously traced the chronology of the petitioner’s statutory rights over the trademark “ARUN”:

• Trademark Registration in Class-7 since 1976 (No. 314271) and 1984 (No. 431317B)
• Trademark in Class-20 since 2001
• Copyright Registration of artistic label since 1999
• SSI Registration as early as 1960
• Substantial advertisement records, caution notices, court decrees, and consistent sales figures

“The overwhelming documentary evidence placed on record by the petitioner clearly indicates long, uninterrupted and continuous user of the trademark ARUN… the mark has acquired tremendous goodwill, reputation and distinctiveness,” held the Court.

In contrast, the respondent applied for registration of “AiC ARUN” only in 2007, claiming user since 2004—decades after the petitioner’s adoption.

“Failure to File Opposition Does Not Bar Rectification – Statutory Right Under Sections 47 & 57 Is Independent”

The respondent had argued that since the petitioner failed to oppose the trademark application when it was advertised under Sections 21 and 23, the challenge under Sections 47 and 57 was barred.

This contention was squarely rejected.

“To contend that once a party has not filed its opposition to the registration of trademark… such party would be disentitled from challenging the same for all times to come, would be contrary to the very letter and spirit of the Act,” Justice Gedela held.

The Court underscored that failure to oppose at advertisement stage does not extinguish the right to seek rectification, else it would create an anomalous situation allowing deceptively similar marks to survive registration unchecked.

“Respondent Failed to Prove ‘ARUN’ is Generic – No Evidence of Common Use”

The Court also rejected the respondent’s defence that “ARUN” is a generic or publici juris term incapable of exclusive appropriation.

Despite claiming that many traders used “ARUN” in the industry, the respondent failed to place any concrete evidence on record to prove genericity.

“Apart from a bald contention… nothing substantive in the form of any documents has been brought on record,” the Court noted.

On the contrary, the petitioner’s evidence demonstrated that the mark “ARUN” had acquired distinctiveness and was not common to the trade.

“Equitable Relief – Partial Rectification Directed Instead of Cancellation”

Acknowledging that the respondent was a small enterprise with limited sales, the Court exercised equitable discretion under Section 57 and opted for variation instead of cancellation of the mark.

“This Court deems it fit… to direct deletion of the word ‘ARUN’ from the trademark ‘AiC ARUN’… and permit the respondent to continue to use ‘AiC’ with liberty to add other distinctive matter,” held the Court.

The direction balances the equities involved, preserving the petitioner’s proprietary rights while allowing the respondent to continue business without unfair advantage.

The judgment underscores core principles of trademark law: the dominance of prior user rights, the inadequacy of minor prefixes/suffixes to escape deceptive similarity, and the continuing jurisdiction of courts to rectify the Register even post-registration.

By reinforcing the dominant feature doctrine and clarifying the scope of Sections 47 and 57, the Delhi High Court has sent a clear message: legal rights built over decades through honest use and reputation cannot be undermined by deceptive branding tactics.

Date of Decision: 9th February 2026