Registration Not a License to Monopolize: Prior Use Trumps Trademark Rights

In a cancellation petition concerning the mark “ROSHAN”, the Delhi High Court, ruled in favour of the Petitioner. The Court held that the Respondent’s trademark registration could potentially mislead the public due to its similarity to the Petitioner's well-established trade name, which stems from a family business operating since the 1950s. The Court criticized the Intellectual Property Appellate Board (IPAB) for disregarding findings from Additional District Judge (ADJ) and the longstanding goodwill enjoyed by the Petitioner’s family.

Procedural History 

The Petitioner traces his family’s use of “ROSHAN STUDIOS” for photography services since 1960, establishing a significant goodwill and reputation.  He asserted that the business was established by his grandfather in Shimla and had expanded with branches managed by family members in Panchkula and Chandigarh, alongside an online presence at www.roshanstudios.com. In 2005, Sood initiated a suit against Roshan Studios for using an identical name, leading to a favourable judgment by the ADJ, Panchkula. The ADJ acknowledging Petitioner’s prior use of the mark ruled in his favour. However, not forgetting about the Respondent’s registration, the ADJ limited the effect of the decree pending removal of the mark from the register.

Additionally, during the pendency of the above matter, it emerged that the Respondents- Roshan Studios had registered the mark “ROSHAN” in 2005. Subsequently, Amit Sood filed a rectification petition before the IPAB seeking cancellation of the registered trademark contesting on grounds of Petitioner’s prior use and its associated goodwill with the said “ROSHAN” marks. The IPAB denied the petition, ruling that Sood’s goodwill was limited to Shimla and Chandigarh, and that ‘Roshan’ is a generic word that means ‘light’ and can be used by anyone in photography, therefore validating the Respondent’s registration. Aggrieved by this order, the Petitioner filed the present writ petition.

Decision of the Court

The Court ordered the revocation of the Respondent’s registration for the mark, “ROSHAN” under class 42 and directed the Office of the Controller General of Patents, Designs, and Trademarks to carry out the order within 30 days.

Analysis

The Court meticulously examined the Petitioner’s substantial evidence of prior use and goodwill associated with “ROSHAN STUDIOS,” dating back to 1960. It held that the Petitioner's family business commenced in 1950 and that the use of “ROSHAN STUDIOS” had operated continuously since 1960, establishing a significant reputation well beyond its initial geographical base in Shimla and Himachal Pradesh. This was evidenced by letters of appreciation from state dignitaries, international agencies, and administrative institutions, underscoring the mark’s extensive recognition that transcended geographical boundaries, notably in Chandigarh and Mohali. The Court also highlighted the geographic proximity of such regions to Shimla and Himachal, emphasizing that it would be unimaginable if the reputation and goodwill of “ROSHAN STUDIOS” had not spread beyond these geographical boundaries. The Petitioner's membership in the Punjab Photographers' Association and Sales Tax Registration further corroborated their established reputation. Additionally, the Petitioner and his predecessor had adopted the mark “ROSHAN,” which was derived from the name of Mr. Roshan Lal Sood, the founder of “ROSHAN STUDIOS.” Protection of such a mark was supported by the precedent of Dr. Reddy's Laboratories. v. Reddy Pharmaceuticals Limited, where the Court dealt with a common surname like ‘Reddy’ but still held that it was exclusively associated with the plaintiff and hence protectable. 

The Court recognized that the petitioner’s family had been engaged in the business for nearly 75 years, and this extensive use of the mark or name could not be easily dismissed by merely asserting that the Respondent's adoption of the mark was honest and concurrent. The Court established the principle that prior use should not be adjudged city-wise or colony-wise in a restricted manner. “Use may originate from a particular physical location but would not be restricted to such a physical location. Use is a dynamic concept, and its effect spreads like air beyond geographical confines.”

Moreover, the Court acknowledged that while the word ‘Roshan’ might reference ‘light,’ the mark was derived from a family name, and its long use and spread had clearly acquired distinctiveness. The international fame of the mark was also established by the Court, including recognition from international organizations such as the UN, various US agencies, and the Cross Society. The national and international goodwill of the name “ROSHAN STUDIOS” is discernible from the various documents placed on record, including those from high-ranking public figures.

Emphasizing legal precedent regarding protection against confusion and misleading registrations, the Court affirmed the Petitioner's exclusive rights over “ROSHAN” in photographic studio services. Applying the Triple Identity Test, the Court found significant similarities in services, geographical area, trade channels, and target audience between the parties, thereby establishing a case for infringement and passing off in favor of the Petitioner. Reliance was placed on precedents such as Ahmed Oomerbhoy v. Gautam Tank and Heifer Project International. v. Heifer Project India Trust. 

Consequently, the Delhi High Court set aside the IPAB’s order and directed the cancellation of the Respondent’s registration for the mark, “ROSHAN” pursuant to Section 57 of the Trademarks Act, 1999.

Conclusion 

The Delhi High Court highlighted the importance of thorough examination of factors such as prior use, established goodwill over mere registration. The Court further underscored the scope of transborder reputation. It held that the reputation is not limited to the place of business and can transcend if sufficient proof of use and goodwill is shown. This ruling reinforces the principle that mere registration of a trademark does not automatically confer exclusive rights, especially when prior use and goodwill can override registration rights in cases of potential confusion or deception.