In a recent ruling, the Division Bench of the Delhi High Court, dismissed a petition filed by Loreal India Pvt. Ltd. (“Appellant”), seeking cancellation of the trademark CLARIWASH, registered by Rajesh Kumar Taneja, trading as Innovative Derma Care (“Respondent”), citing that, notwithstanding the errors made by the Trade Marks Registry (“Registry”) during the examination of the Respondent’s mark, the Appellant has failed to make out a case in its favour.
The petition was based on the Appellant’s prior use of the CLARI-formative marks, which were adopted by the Appellant’s predecessors in the year 2009. The Appellant argued that the Registry had committed a clerical error by searching for CHARIWASH instead of CLARIWASH during the examination of the Respondent’s mark. Consequently, the Appellant’s CLARI-formative marks were not cited in the Examination Report, and the Respondent obtained registration for the CLARIWASH mark. The Appellant claimed that since its CLARI-FI and CLARIMOIST marks were similar to the CLARIWASH mark, the Registry ought to not have granted registration to the Respondent.
While the court acknowledged the Registry’s error, it declined to cancel the registration on this ground alone. As per the court, the Appellant had failed to establish prior use of its CLARI-formative marks at the time the Respondent’s CLARIWASH mark was registered, i.e., as of the year 2009. The court further opined that the Appellant’s CLARI-FI and CLARIMOST marks were not similar to the CLARIWASH mark, and thus could not be a ground for cancellation. The court also based its decision on the fact that the Respondent had enjoyed the registration of the mark for over 14 years, and the Appellant had failed to file an opposition against the application when it was published. Therefore, the court concluded that the cancellation of the mark would unfairly prejudice the Respondent’s rights in the CLARIWASH mark.
Loreal India Pvt. Ltd. v. Rajesh Kumar Taneja, trading as Innovative Derma Care and Anr, [RFA(OS)(IPD) 2/2023], judgment dt. July 15, 2024