“Double Kabooter” Takes Flight; Prior Use Wins Over Faulty Registration




The world of trademarks is a battleground for brand identity, and distinctiveness plays a key role in securing legal protection. A recent case decided by the Delhi High Court throws light on the intricacies of trademark law, highlighting the importance of prior use and the consequences of misleading statements during trademark registration. This article delves into the “Double Kabooter” case, analyzing the arguments presented, the court’s reasoning, and the broader implications for businesses.

Case Background: A Soaring Dispute

The case revolved around a dispute between Anuj Bindal (Petitioner) and Tarsem Chand (Respondent) over the trademark “Double Kabooter Brand” (Hindi for “Double Pigeon Brand”). Bindal, operating since 2005, claimed prior use of the mark “Dabal Kabooter Brand” (also meaning “Double Pigeon Brand”) for animal feed products like cottonseed cakes and mustard oil. However, his application for registration faced opposition, leading to its abandonment. Despite the lack of a formal registration certificate, Bindal continued using his mark commercially.

The conflict erupted in 2019 when Bindal received a lawsuit and an injunction order from Chand. Chand, who had successfully registered the trademark “Double Kabooter Brand” in 2019, accused Bindal of trademark infringement. Faced with this challenge, Bindal filed a counter-petition before the Delhi High Court. He argued that his continuous commercial use of “Double Kabooter Brand” since 2005 established his common law rights over the mark, superseding Chand’s later registration. Bindal sought cancellation of Chand’s registration based on two key arguments: the deceptive similarity between the marks and Chand’s potential misrepresentation during the registration process.

Unpacking the Arguments: A Two-Pronged Challenge

Bindal’s case rested on a two-pronged approach. Firstly, he invoked the concept of prior use. He argued that even though his mark remained unregistered, his continuous commercial use since 2005 entitled him to protection under Section 9(2)(a) of the Trade Marks Act, 1999. This section safeguards well-established unregistered trademarks from being infringed upon by later registered marks that are likely to cause confusion among consumers in the marketplace. Bindal presented evidence demonstrating his consistent use of “Dabal Kabooter Brand” on packaging, marketing materials, and potentially even invoices or bills.

Secondly, Bindal challenged the validity of Chand’s registration. He pointed out that Chand’s sole evidence of use for the “Double Kabooter Brand” was an advertisement published in 2009, a date significantly later than Bindal’s established use of “Dabal Kabooter Brand” since 2005. This discrepancy raised doubts about the accuracy of Chand’s claim of prior use in his registration application. Bindal argued that Chand’s application might have contained false statements regarding the mark’s usage, potentially constituting fraud under the Trade Marks Act.

Court’s Verdict: A Nuanced Approach

The Delhi High Court, after meticulously examining the arguments and evidence presented by both parties, issued a judgment in favor of Bindal. The Court acknowledged the similarity between the two marks, with “Double Kabooter” being the dominant element in both. Despite the slight variation in wording (“Dabal” vs. “Double”), the Court recognized the likelihood of confusion for consumers, especially considering the identical product category (animal feed and mustard oil).

Furthermore, the Court emphasized the significance of prior use. Bindal’s continuous commercial use since 2005 established his prior rights over the mark, even in the absence of registration. The Court acknowledged the legal principle that a well-established unregistered trademark can acquire distinctiveness and secondary meaning, entitling it to protection under the Trade Marks Act. Bindal’s evidence of consistent use throughout the years successfully demonstrated this acquired distinctiveness.

The Court also found merit in Bindal’s argument regarding the potential misrepresentation in Chand’s registration application. The lack of evidence to substantiate Chand’s claimed use of the mark prior to 2009 raised doubts about the accuracy of his application. In light of these factors, the Court directed the cancellation of Chand’s trademark registration for “Double Kabooter Brand” in Class 31 (relating to animal feed and mustard oil). This decision protected Bindal’s prior rights established through continuous use, despite the lack of a formal registration.

Conclusion: A Balancing Act With Broader Implications

The “Double Kabooter” case serves as a valuable lesson for businesses of all sizes. While trademark registration offers strong legal protection, prior use can also establish rights, acting as a shield against infringement claims. The case also highlights the importance of honesty during the registration process. Misleading statements regarding a mark’s usage can have serious consequences, potentially leading to cancellation of registration. This case underscores the delicate balance between protecting registered trademarks and acknowledging the rights of prior users in the Indian trademark landscape.

Authors: Nitika Nagar, Parinika Krishnan & Bhoomi Maheshwari


Interns and Paralegals.


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