In a significant ruling on trademark non-use, the Madras High Court has ordered the removal of Wipro Enterprises’ registered trademark “PREMIO” from the Trade Marks Register. The court held that the mark, registered in 2011, was never put to genuine commercial use and had remained idle for well over five years.
The decision came in a rectification petition filed by Crompton Greaves Consumer Electricals Limited against Wipro Enterprises Private Limited, invoking provisions of the Trade Marks Act, 1999.
Background of the Case
Crompton, a well-known manufacturer of fans, lighting, and home appliances, approached the court after its proposed trademark “PREMION” faced objections during examination. The objection cited Wipro’s earlier registered mark “PREMIO” in Class 11, which covers electrical and lighting products.
Crompton argued that while Wipro had secured registration for “PREMIO” in October 2011 and claimed use from that year, the mark was never actually used in the market. According to the petitioner, an all-India market survey and affidavits from dealers confirmed that no products bearing the “PREMIO” name were available for sale.
The company claimed it was a “person aggrieved” because the dormant registration was blocking its own trademark application, despite there being no real commercial activity under the earlier mark.
Wipro’s Stand
Wipro opposed the rectification plea, alleging bad faith on Crompton’s part. It argued that Crompton knowingly adopted a confusingly similar mark despite being aware of the existing registration. Wipro maintained that mere non-use should not automatically lead to cancellation and insisted that its rights as a registered proprietor deserved protection.
The company also submitted that Crompton should have sought cancellation before attempting to use or register a similar mark.
Court’s Observations
After hearing both sides, Justice N. Senthilkumar focused on a core legal question: whether the registered trademark had been genuinely used within the meaning of the law.
The court noted that under Section 47 of the Trade Marks Act, a mark can be removed if it is not used continuously for five years without valid reasons. The judge observed that Crompton had produced affidavits from dealers across the country stating they had never encountered any “PREMIO”-branded products.
Importantly, the court found that Wipro had failed to rebut this evidence. No sales records, advertisements, invoices, or other proof of commercial use were placed on record.
“The burden to show genuine use lies on the registered proprietor,” the court observed, adding that mere registration without follow-up market activity cannot justify keeping a mark alive on the register.
The judge also rejected the argument that Crompton lacked standing. Since the unused registration directly blocked Crompton’s application, the court held that it clearly qualified as a “person aggrieved.”
Decision
Allowing the petition, the Madras High Court directed the Registrar of Trade Marks to remove the trademark “PREMIO” from the register.
“In the absence of any material to prove bona fide use for more than five years, the impugned trademark is liable to be removed,” the court ruled, answering all issues in favour of Crompton.
No costs were imposed on either party, and the matter was concluded with directions for rectification of the register.
Case Title: Crompton Greaves Consumer Electricals Limited vs Wipro Enterprises Private Limited & Anr.
Case Number: (T)OP(TM) No. 411 of 2023
