Delhi High Court Cancels “ACTIVEPUSHPA” Trademark, Finds It Deceptively Similar To “HEMPUSHPA”
Isabella Mariam
The High Court of Delhi Single Bench of Justice Tejas Karia has allowed a rectification petition and directed cancellation of a registered trademark after finding it deceptively similar to an earlier mark in respect of identical goods. The Court ordered removal of the impugned trademark from the Register of Trade Marks, holding that its adoption and use were likely to cause confusion among consumers and result in passing off. The dispute arose from a challenge by the proprietor of a long-standing trademark used for ayurvedic medicinal products against a subsequently registered mark used for the same class of goods. The Court concluded that the common and prominently used element in both marks constituted a dominant feature, and that the later mark had been adopted dishonestly, warranting rectification to preserve the integrity of the trade mark register.
The petition arose from a rectification proceeding seeking cancellation and removal of a registered trademark from the Register of Trade Marks. The petitioner was engaged in the manufacture and marketing of ayurvedic medicinal preparations and was the registered proprietor of a word mark used continuously since 1933 in Class 05. The petitioner asserted longstanding registration, uninterrupted use, goodwill, and reputation associated with the mark in respect of ayurvedic tonics and syrups.
The respondent was engaged in the manufacture and sale of ayurvedic medicines and had secured registration of a later trademark in the same class for identical goods. The petitioner challenged the registration on grounds of deceptive similarity, dishonest adoption, likelihood of confusion, passing off, lack of bona fide use, and failure of the Trade Marks Registry to cite the earlier registered mark during examination. Reliance was placed on statutory provisions governing refusal and rectification of trademarks, including those addressing prior rights, deceptive similarity, non-distinctiveness, and purity of the register.
The respondent contested the petition, asserting honest adoption, dissimilarity between the marks when viewed as a whole, commonality of a shared suffix within the trade, and absence of exclusive rights in any part of a composite mark. Both sides relied on judicial precedents relating to deceptive similarity, dominant features, anti-dissection principles, and pharmaceutical trademarks.
The Court recorded that “there is no cavil that the Petitioner’s Mark has prior registration and user as compared to the Impugned Mark.” It noted that the goods, trade channels, and consumer base of both parties were identical, and that the petitioner’s mark enjoyed extensive use and reputation for over nine decades.
On deceptive similarity, the Court observed that “the comparison must be made from a person of average intelligence and imperfect recollection,” and that “it is the similarity between the marks that has to be considered as compared to the dissimilarity.” The Court stated that side-by-side comparison was not required and that overall impression was determinative.
Addressing the argument of commonality of the shared element, the Court recorded that “the prominent use of the word ‘PUSHPA’ by Respondent No. 1 clearly shows that Respondent No. 1 has treated ‘PUSHPA’ as the dominant part of the Impugned Mark.” It further noted that “even the revised label proposed by Respondent No. 1 contains ‘PUSHPA’ in bigger fonts,” indicating dominance in actual use.
On the applicability of the anti-dissection rule, the Court stated that “the ‘anti-dissection rule’ will not apply in the present case as if compared as a whole and without dissecting the rival Marks, the word ‘PUSHPA’ emerges as a dominant feature of both the Marks.” The Court held that dominance could be assessed from the manner of use, not merely registration form.
Regarding dishonest adoption, the Court observed that “Respondent No. 1 has adopted the Impugned Mark with dishonest intention to ride on the goodwill of the Petitioner,” and that subsequent explanations could not cure such adoption. It further recorded that “the likelihood of confusion is high” given identical goods and consumers.
The Court also commented on the role of the Registry, observing that “the purity of the Register of Trade Marks is required to be maintained,” and that failure to cite earlier similar marks warranted rectification.
The Court directed that “the present Petition is allowed. The registered Trade Mark ‘ACTIVEPUSHPA’ under Registration No. 2471490 in Class-05 in the name of Respondent No. 1” shall be “cancelled / removed / rectified from the Register of Trade Marks” on the ground that the registration was contrary to the provisions of the Trade Marks Act, 1999.
Advocates Representing the Parties
For the Petitioner: Mr. Ajay Amitabh Suman, Advocate; Mr. Shravan Kumar Bansal, Advocate; Mr. Rishi Bansal, Advocate; Mr. Pankaj Kumar, Advocate; Mr. Deepak Srivastava, Advocate; Mr. Rishabh Gupta, Advocate; Ms. Shruti Manchanda, Advocate; Ms. Deasha Mehta, Advocate
For the Respondents: Mr. Rahul Vidhani, Advocate; Ms. Purva Chugh, Advocate
Case Title: Rajvaidya Shital Prasad and Sons v. Karna Goomar and Another
Neutral Citation: 2025: DHC:11881
Case Number: C.O. (COMM.IPD-TM) 385/2021
Bench: Justice Tejas Karia
