Well-Known Marks Demand Special Protection: Delhi HC Cancels Conflicting Trademark for RPG Industrial Products

Delhi High Court canceled the trademark registration of RPG Industrial Products Pvt. Ltd. The Court ruled that the mark “RPG,” registered by the respondent, infringed upon the well-known mark of RPG Enterprises Ltd. The Court emphasized that well-known trademarks deserve protection across all classes of goods, even if the goods differ.

The petitioner, RPG Enterprises Ltd., a multi-industry conglomerate, has been using the “RPG” mark since 1979. The mark derives from the initials of its founder, R.P. Goenka, and is registered under multiple classes. The respondent, RPG Industrial Products Pvt. Ltd., registered the “RPG” trademark in 2017 under Class 23 for polyester staple fiber, claiming use since 2011.

In 2017, RPG Enterprises sent a cease-and-desist notice to the respondent but received no reply. Subsequent investigations revealed that the respondent had obtained trademark registration for the impugned mark. The petitioner filed a rectification petition, alleging that the respondent’s use of “RPG” was dishonest and likely to confuse consumers.

The Court noted that RPG Enterprises Ltd. has been using the “RPG” mark since 1979, predating the respondent’s registration by decades. The Bombay High Court had already declared the petitioner’s mark a well-known trademark in a 2022 judgment. The Court reiterated:

“Once a mark is declared well-known, its protection extends beyond identical or similar goods, encompassing unrelated categories to prevent misuse.”

The Court emphasized that the dominant element of both marks was the word “RPG.” Given its prominence, consumers of average intelligence with imperfect recollection were likely to associate the respondent’s products with the petitioner.

The Court found the respondent’s adoption of the mark to be dishonest, given the petitioner’s extensive use and reputation. The respondent claimed the mark derived from its founder’s initials but failed to justify why it adopted an identical mark despite the petitioner’s widespread recognition. The Court held:

“When the adoption of a mark is tainted with bad faith, no amount of subsequent use can cleanse the vice of dishonest adoption.”

The Court observed that while the respondent’s goods (polyester staple fiber) and the petitioner’s goods (clothing, footwear, headgear) were not identical, they were allied and cognate, creating a likelihood of confusion.

The Court canceled the respondent’s trademark registration under Registration No. 2778255, finding it in violation of Sections 11 and 57 of the Trade Marks Act, 1999. The Court directed the Trade Marks Registry to notify the cancellation and emphasized that dishonest adoption cannot be protected under the law.

This judgment reaffirms the expansive protection afforded to well-known trademarks and underscores the need to act in good faith when adopting trademarks. The decision ensures that trademarks with a significant reputation are safeguarded against misuse, even in unrelated categories of goods.

Date of Decision: January 8, 2025