RPG ENTERPRISES LIMITED vs RPG INDUSTRIAL PRODUCTS PVT LTD.

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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 203/2022
RPG ENTERPRISES LIMITED …..Petitioner
Through: Mr. Anirudh Bakhru, Mr. Naqeeb Nawab, Mr. Ashutosh Ranga, Ms. Sejal, Ms. Apurva Bhutani, Ms. Vijay Laxmi Rathi and Mr. Umar, Advocates
Mob: 8209086773

versus

RPG INDUSTRIAL PRODUCTS PVT LTD. …..Respondent
Through: Mr. Anubhav Anand, Advocate for R-1.
Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Advocates for respondent
Email: hvscgscdhc@gmail.com (Mob: 9810788606)

CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
JUDGMENT
% 08.01.2025
MINI PUSHKARNA, J:
1. The present rectification petition has been filed seeking removal of trade mark registration no. 2778255 for the mark (“impugned registration”) in Class 23, registered in the name of respondent no. l, i.e., RPG Industrial Products Pvt. Ltd.
2. The petitioner contends that it is an aggrieved party under Sections 47/57 of the Trade Marks Act, 1999, and thus, prays that the present petition be allowed and the impugned registration be rectified from the Register of Trade Marks.
3. The facts as canvassed in the petition, are as follows:
3.1 The petitioner is a multi-group conglomerate which consists of various companies operating under the parent organisation. These companies, identified as RPG Group Companies use “RPG logo” and trade mark “RPG” for which permission is granted by way of a license for use of the RPG logo and trademark as a part of its corporate identity/business/trademark in relation to promotional and publicity material.
3.2 The acronym “RPG” stands for the initials of Sh. R. P. Goenka, founder of the RPG Group and a renowned industrialist widely respected by people from all walks of life. The RPG Group Companies have been using the said logo and the letters “RPG”, which forms an integral part of almost all the businesses that have been undertaken by the RPG Group Companies.
3.3 The petitioner’s history can be traced back to 1979 and over the years, it has diversified into various business fields with primary areas of businesses being tyres, infrastructure, information technology, pharmaceuticals, energy, senior care, e-commerce and plantations.
3.4 The petitioner has honestly adopted the distinctive and unique trade mark RPG, which also serves as the trading name/house mark of the petitioner. Keeping in mind the heritage of the brand RPG, the petitioner has adopted the trade mark in conjunction with the core word mark “RPG”. Further, the marks “RPG” and have been used for a very long period of time and have, as of date, created an indelible association in the minds of the general public.
3.5 The petitioner holds various trademark registrations for its RPG Marks, which are tabulated as under:

3.6 The petitioner also has a presence on the internet and maintains active websites at http://www.rpggroup.com/, http://www.rpglifesciences.com/, http://raychemrpg.com/, http://www.rpgcables.com/, http://www.kecrpg.com, http://www.saetowers.com, http://www.harrisonsmalayalam.com, https://www.ceat.com/, https://www.ceatspecialty.com/ and http://www.zensar.com/. The said websites clearly display the RPG Marks and the goods and services which are marketed and offered by the petitioner and are accessible in the whole of India and worldwide, thus, increasing awareness of the petitioner’s RPG Marks.
3.7 The petitioner is also the registered copyright owner of , vide copyright registration Certificate No. A-49373/88CO issued by the Deputy Registrar of Copyright since 30th June, 1988 and has been using the same at least since 1987.
3.8 The petitioner was made aware of the use of the identical trade name of respondent no.1 as that of the petitioner. The petitioner sent a cease and desist notice dated 06th October, 2017 to respondent no.1. The respondent has failed to reply to the said ‘cease and desist’ notice, till date. Since no response was received from respondent no.1, the petitioner believed that the dispute had been resolved and no further action was taken. However, in the month of August, 2018, attention of the petitioner was drawn to the Registration No. 2778255 in the name of the respondent no.1, while conducting search of the records of the Trade Mark Registry.
3.9 The search revealed that, respondent no.1 has wrongfully obtained a registration for the impugned mark, which entirely incorporates the RPG Marks of the petitioner. Hence, the present petition has been filed.
4. On behalf of the petitioner, it is contended as follows:
4.1 The impugned registration granted in the name of respondent no.1 is contrary to the various provisions of the Trade Marks Act, 1999, including, Sections 11, 12 and 18.
4.2 The respondent no. 1’s claim of use since 01st April, 2011 is false, as the respondent has adduced no evidence which corroborates this date. The earliest document reflecting use of the impugned mark dates to 02nd March, 2013, which is contested. Claiming a false user date constitutes fraud on the Registrar and renders the registration liable for cancellation.
4.3 The impugned registration fully incorporates the petitioner’s well-known mark, which was adopted without due cause. Such use unfairly advantages the respondent no. 1 while diluting the distinctive character of the petitioner’s mark, leading to violation of Sections 11(1) and 11(2) of the Trade Marks Act, 1999. Further, by virtue of the petitioner’s common law rights, the impugned registration is liable to be cancelled under the law of passing off and as per Section 11(3) of the said Act.
4.4 The impugned registration is ex-facie illegal, invalid and defective since it has been issued in violation of Rule 33 of the Trade Marks Rules, 2017, as the Registrar did not raise any objection under Section 11 of the Trade Marks Act, 1999, rendering the registration illegal and defective.
5. On behalf of the respondent no.1, the following submissions have been made:
5.1 The rectification petition under Section 57 of the Trade Marks Act, 1999, is not maintainable as the petitioner is not an aggrieved party.
5.2 The mark or device of respondent no. 1 is entirely distinct and different from that of the petitioner as the respondent’s mark features a unique combination of colours, lettering style, device elements, artwork, packaging, and overall get-up, which collectively make it inherently distinctive.
5.3 The mark “RPG” is derived from the initials of the respondent’s founder, Sh. Rajendra Prasad Gupta, and was conceived and adopted honestly and in good faith. It is a very common practice in the country to use initials of the name of the founder/directors or their surnames as trademarks or trade names.
5.4 The respondent no. 1 is engaged in the manufacturing of polyester staple fiber, while the petitioner primarily deals with goods classified in Class 22. Given the dissimilarity in goods, there is no conflict or rivalry between the two marks. It is a well-established principle of law that exclusive rights to a mark for specific goods do not entitle the owner to prohibit its use by others for entirely different goods.
5.5 The petitioner registered its trademark in Class 25 on 30th August, 2018, after the respondent’s registration under Application no. 2778255 on 22nd July, 2017 in Class 23. Moreover, the petitioner issued a notice under the Trade Marks Act, 1999, on 06th October, 2017, demonstrating prior knowledge of respondent no. 1’s mark before registering its own trademark in Class 25.
5.6 Respondent no. 1 has been using the mark “RPG” openly, extensively, and uninterruptedly since 2011, without any complaints of confusion or deception from the market. Consequently, the registration and use of respondent no. 1’s mark are not prejudicial to the petitioner in any manner.
6. Having heard learned counsels for the parties and having perused the record, it is apposite to compare the two competing marks, which are as follows:
Petitioner’s Mark
Respondent no.1’s Mark

7. Perusal of the aforesaid shows that the dominant and essential feature of the mark of the respondent no.1 is the word “RPG”, which completely subsumes the petitioner’s mark. The use of the mark “RPG” is highly prominent in the mark of the respondent, masking any other discernible element in the mind of a consumer of average intelligence having an imperfect recollection, who would in all likelihood retain only the word “RPG” upon chancing on the impugned registration. While comparing two marks, the prominent, essential and distinctive features are to be compared. Thus, the Division Bench of this Court in the case of M/s South India Beverages Pvt. Ltd. Versus General Mills Marketing Inc. & Anr., 2014 SCC OnLine Del 1953, has held as follows:
“xxx xxx xxx

19. Though it bears no reiteration that while a mark is to be considered in entirety, yet it is permissible to accord more or less importance or ‘dominance’ to a particular portion or element of a mark in cases of composite marks. Thus, a particular element of a composite mark which enjoys greater prominence vis-à-vis other constituent elements, may be termed as a ‘dominant mark’.

xxx xxx xxx

23. It is also settled that while a trademark is supposed to be looked at in entirety, yet the consideration of a trademark as a whole does not condone infringement where less than the entire trademark is appropriated. It is therefore not improper to identify elements or features of the marks that are more or less important for purpose of analysis in cases of composite marks.

xxx xxx xxx

26. Dominant features are significant because they attract attention and consumers are more likely to remember and rely on them for purposes of identification of the product. Usually, the dominant portion of a mark is that which has the greater strength or carries more weight. Descriptive or generic components, having little or no source identifying significance, are generally less significant in the analysis. However, words that are arbitrary and distinct possess greater strength and are thus accorded greater protection. [174 F. Supp. 2d 718, 725 (M.D. Tenn. 2001) Autozone, Inc. v. Tandy Corporation]

xxx xxx xxx”
(Emphasis Supplied)

8. Documents on record show that the petitioner adopted the mark “RPG” in the year 1979, derived from the initials of its founder. The petitioner holds various trademark registrations for its “RPG” marks, with the earliest Indian Registration for the mark under Registration No. 850255 in Class 12 dating back to 08th April, 1999.
9. The petitioner has also placed on record documents to show its long, continuous, extensive and uninterrupted use and promotion. The documents on record establish the prior use of the trademark “RPG” by the petitioner.
10. The petitioner’s “RPG” marks have acquired the status of “well-known” trademarks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999, as held by the Bombay High Court in the case of RPG Enterprises Limited Versus Riju Ghoshal & Another, 2022 SCC OnLine Bom 626. The relevant paragraph from the said judgment is extracted below:
“xxx xxx xxx

51. …….. It is thus prima facie established that the Plaintiff’s RPG marks have acquired the status of a well-known trade mark and the Plaintiff has immense reputation and goodwill in the said trade marks/names and the products offered thereunder. Considering the factors such as (i) the extent of knowledge of the RPG mark, and its recognition by the relevant public; (ii) the duration of the use of the RPG marks; (iii) the extent of the products in relation to which the RPG mark is being used; (iv) the extent and duration of advertising and promotion of the RPG mark; (v) the geographical extent of the trading area in which the RPG mark is used; (vi) the state of registrations of the RPG mark; (vii) the volume of business under the RPG marks; and (viii) successful enforcement against infringers/offenders before the Courts of law/registry, I am of the opinion that prima facie, the Plaintiff’s RPG mark deserves protection as a well-known trade mark as the same has come to acquire a secondary meaning to connote to the public the goods and/or services emanating from the Plaintiff. It can be very well said that the goodwill and reputation of the Plaintiff is not limited to a particular category or business segment and the use of the trade mark RPG in respect of any category of goods and services is liable to be associated with the Plaintiff.

xxx xxx xxx”
(Emphasis Supplied)

11. This Court notes that during the pendency of the present petition, the mark “RPG” has been published in Journal No. 2106, dated 29th May, 2023, for inclusion in the list of well-known trademarks maintained by the Registrar of Trade Marks, India. Document on record pertaining to the same, is reproduced as under:

12. It is further to be noted that the goods associated with the impugned registration are similar, allied, and cognate to those covered under the petitioner’s registered mark. While the respondent no. 1 deals in polyester wool, a material used in clothing manufacture, the petitioner’s registration for the mark bearing no. 3930988 in Class 25 covers clothing, footwear, and headgear, creating an inherent connection.
13. Moreover, since the petitioner’s mark “RPG” has already been declared as a well-known mark, it is entitled to protection not only against identical or similar goods, but also against dissimilar goods. Once it has been established that the goods of the petitioner bearing the trademark have acquired goodwill and reputation, and the public associates those goods only with the petitioner, then, even though the goods may be different, the possibility of confusion cannot be negated, if the marks are identical.
14. Thus, a Full Bench of Calcutta High Court in the case of Sony Kabushiki Kaisha Versus Mahaluxmi Textile Mills, 2009 SCC OnLine Cal 531, has held as follows:
“xxx xxx xxx

28. …… Even if the goods or services of the rival traders are different, in our opinion this factor alone would not altogether eliminate the possibility of confusion or deception. If a highly distinctive trade mark is applied to a class of goods which its proprietor does not deal with, consumers may always wonder as to whether the proprietor of the trade mark has launched a new product. The purchasing decision of the consumers may be determined by this factor.

xxx xxx xxx”
(Emphasis Supplied)

15. Likewise, this Court in the case of Daimler Benz Aktiegesselschaft and another Versus Hydo Hindustan, 1993 SCC OnLine Del 605, has held as follows:
“xxx xxx xxx

16. However, if despite legal notice, any one big or small, continues to carry the illegitimate use of a significant world wide renowned name/mark as is being done in this case despite notice dated 9.12.1989, these cannot be any reason for not stopping the use of a world reputed name. None should be continued to be allowed to use a world famed name to goods which have no connection with the type of goods which have generated the world wide reputation.

xxx xxx xxx”
(Emphasis Supplied)

16. Undoubtedly, the petitioner is the prior adopter and user of the mark “RPG”. The impugned registration is liable to be expunged from the register of trademarks, as it entirely incorporates the petitioner’s prior and well-known mark “RPG”. The use of the impugned registration takes unfair advantage of and is detrimental to the distinctive character of the petitioner’s earlier and well-known mark.
17. The bad faith and dishonesty of respondent no.1 is evident, as it adopted an identical mark “RPG” despite the petitioner’s extensive prior use and reputation built over nearly five decades. At the time of the impugned registration, the petitioner’s mark “RPG” was already widely recognized, making it implausible for the respondent no. 1 to claim ignorance of the petitioner’s rights. The adoption of the impugned mark by the respondent cannot be considered to be honest because the petitioner’s trademark was well-known at the time when the respondent got its mark registered. In the present case, the marks are identical and the goods are allied and cognate goods. This would lead to confusion and deception as a common consumer would think that the goods of the respondent emanate from the petitioner and will lead the common man to associate the goods of the respondent with the petitioner’s “RPG” Group.
18. It is settled law that when the adoption of a mark is tainted with bad faith, no amount of subsequent use can cleanse the vice of dishonest adoption. Thus, this Court in the case of M/s. Hindustan Pencils Private Limited Versus M/s. India Stationery Products Co. & Another, 1989 SCC OnLine Del 34, has held as follows:
“xxx xxx xxx

30. Even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff’s rights then in that case, even if there is an inordinate delay on the part of plaintiff in taking action against the defendant, the relief of injunction is not denied. The defence of laches or inordinate delay is a defence in equity. In equity both the parties must come to the Court with clear hands. An equitable defence can be put up by a party two has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else’s right can’t claim the continued misuse of the usurped right. It was observed by Romer, J. in the matter of an application brought by J.R. Parkington and Coy. Ltd., 63 R.P.C. 171 at page 181 that “in my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently”. It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history. In other words, the equitable relief will be afforded only to that party who is not guilty of a fraud and whose conduct shows that there had been, on his part, an honest concurrent user of the mark in question. If a party, for no apparent or a valid reason, adopts, whith or without modifications, a mark belonging to another, whether registered or not, it will be difficult for that party to avoid an order of injunction because the Court may rightly assume that such adoption of the mark by the party was not an honest one. The Court would be justified in concluding that the defendant, in such an action, wanted to cash in on the plaintiff’s name and reputation and that was the sole, primary or the real motive of the defendant adopting such a mark. Even if, in such a case, there may be an inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the defendant has been using the mark for a number of years. Dealing with this aspect Harry D. Nims in his “The Law of Unfair Competition and Trade-Marks”, Fourth Edition, Volume Two at page 1282 noted as follows:

“Whether infringement is deliberate and wilful and the defendant acts fraudulently with knowledge that he is violating plaintiff’s rights, essential elements of estoppel are lacking and in such a case the protection of plaintiff’s rights by injunctive relief never is properly denied. “The doctrine of estoppel can only be invoked to promote fair dealings.”

xxx xxx xxx”
(Emphasis Supplied)

19. Honesty of adoption at the initial stage itself has to be established to take benefit of concurrent registration under Section 12 of the Trade Marks Act, 1999. Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each other and unaware of the mark used by the other. Adoption must be honest, bonafide and without any knowledge on the part of the adopter. (See: Ansul Industries Versus Shiva Tobacco Company, 2007 SCC OnLine Del 74, Para 52). The petitioner has been using the “RPG” marks since almost fifty years. The petitioner’s “RPG” marks were already in extensive use at the time of the impugned registration. Given the same, the respondent no.1 would no doubt have been aware of the petitioner’s prior rights in the mark “RPG”.
20. As regards the contention of the respondent no.1 that “RPG” mark connotes the initials of the founder of respondent no.1 and is, thus, entitled to use the said mark, the same is totally misplaced. Holding that while adopting his name as the trade name for his business, a party is required to act honestly and bondfidely and not with a view to cash upon the goodwill and reputation of another, the Division Bench of this Court in the case of Montari Overseas Ltd. Versus Montari Industries Ltd., 1995 SCC OnLine Del 865, has held as follows:
“xxx xxx xxx

11.  It is well settled that an individual can trade under his own name as he is doing no more than making a truthful statement of the fact which he has a legitimate interest in making. But while adopting his name as the trade name for his business he is required to act honestly & bonafidely and not with a view to cash upon the goodwill & reputation of another. An individual has the latitude of trading under his own name is in recognition of the fact that he does not have choice of name which is given to him. However, in the case of a Corporation the position is different. Unlike an individual who has no say in the matter of his name, a company can give itself a name. Normally a company can not adopt a name which is being used by another previously established company, as such a name would be undesirable in view of the confusion which it may cause or is likely to cause in the minds of the public. Use of a name by a company can be prohibited if it has adopted the name of another company.

It is well settled that no company is entitled to carry on business in a manner so as to generate a belief that it is connected with the business of another company, firm or an individual. The same principle of law which applies to an action for passing off of a trade mark will apply more strongly to the passing off of a trade or corporate name of one for the other. Likelihood of deception of an unwary and ordinary person in the street is the real test and the matter must be considered from the point of view of that person. Copying of a trade name amounts to making a false representation to the public from which they have to be protected. Besides the name of the company acquires reputation and; goodwill, and the company has a right too to protect the same. A competitor cannot usurp the goodwill and reputation of another. One of the pernicious effects of adopting the corporate name of another is that it can injure the reputation & business of that person.

12. In the present case, there are certain striking features which have to be taken note of in arriving at a decision whether the appellant in adopting the word ‘MONTARI’ as a part of its corporate name is likely to deceive or cause confusion in the minds of the public. It is not disputed that the appellant was incorporated on April 21, 1993 after about a decade of the incorporation of the respondent. From the record of the trial Court it appears that the respondent & its other group of Montari companies has an established business. On the other hand, the appellant has entered the capital market very recently. It was noticed by the learned single Judge that the factory of the appellant was in the process of completion and its products have not entered market. It was not claimed, either before us or in the memo of appeal, that the products of the appellant are now being marketed. The respondent has explained as to why the word ‘MONTARI’ was selected by it. It is explained that the word was coined by the respondent by deriving a part of it from the name of the Chairman of the company and part of it from the name of his wife. The appellant has also tried to furnish some explanation by urging that the word ‘MONTARI’ is also of significance to it and the same was derived from the names of the father of the Managing Director of the company and his father-in-law. It claimed in the written statement that the father of the Managing Director is Mohan Singh while the name of his father-in-law is Avtar Singh. However, during arguments it was not disputed that the name of the father of the Managing Director was Kirpal Singh. This shows that the word ‘MONTARI’ has nothing to do with the name of the father of the Managing Director. The explanation appears to be not correct. If this is so then, what was the purpose of selecting the word ‘MONTARI’ by the appellant for use in its corporate name. No satisfactory explanation has been given by the apellant in this regard.

It is also not a case where the appellant had no knowledge of the corporate name of the respondent. Rather the stand of the appellant is that in the prospectus and press reports of the company, it was pointed out that the appellant had nothing to do with the respondent. In the circumstances it appears to us that the adoption of the corporate name by the appellant with the word “MONTARI” figuring in it, was not innocent. When a defendant does business under a name which is sufficiently close to the name under which the plaintiff is trading and that name has acquired reputation and the public at large is likely to be misled that the defendant’s business is the business of the plaintiff, or is a branch or department of the plaintiff, the defendant is liable for an action in passing off. Even if the word “MONTARI” as part of the corporate name of the appellant was derived from the names of the father and father-in-law of the M.D. of the appellant company it would still be liable for an action in passing off as the use of the word “MONTARI” in its corporate name is likely to cause confusion and injure the goodwill and reputation of the respondent, in the sense that this is a reasonable and foreseeable consequence of the appellant’s action. We find from the record of the trial court, which contains the Memorandum of Association of six Montari group of companies and annual reports of Montari Industries Ltd., that Montari group of industries have large operations and some of them have been in business for a long time. The members of the public are likely to mistakenly infer from the appellant’s use of the name which is sufficiently dose to the respondent’s name that the business of the appellant’s company is from the same source, or the two companies are connected together.

xxx xxx xxx”
(Emphasis Supplied)

21. Likewise, in the case of Mahendra & Mahendra Paper Mills Ltd. Versus Mahindra & Mahindra Ltd., (2002) 2 SCC 147, the Supreme Court has recognised that where the name has acquired distinctiveness and a secondary meaning in the business or trade circles, any attempt by another person to use the name in business and trade circles is likely to create and in probability will create an impression of a connection with the plaintiff’s group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. In the present case also, the plaintiff has been using the mark “RPG” for a long span of time and the name has acquired distinctiveness and a secondary meaning.
22. In view of the aforesaid detailed discussion, this Court is of the view that the respondent no.1’s mark is wrongly entered in the Register and wrongly remains in the Register of Trade Marks.
23. Accordingly, the trademark bearing Registration No. 2778255 is hereby cancelled. The Trade Marks Registry shall issue an appropriate notification to the said effect.
24. Registry of this Court is directed to supply a copy of this order to the Trade Marks Registry at llc-ipo@gov.in, for compliance.
25. The present petition is disposed of, with the aforesaid directions.

(MINI PUSHKARNA)
JUDGE
JANUARY 08, 2025
Kr

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