Delhi High Court
Shubham Goldiee Masale Pvt Ltd vs Jai Shiv Oil Industries And Anr on 8 April, 2026
Author: Tushar Rao Gedela
Bench: Tushar Rao Gedela
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment reserved on: 24.02.2026
Judgment delivered on: 08.04.2026
+ C.O. (COMM.IPD-TM) 392/2021
+ C.O. (COMM.IPD-TM) 393/2021
SHUBHAM GOLDIEE MASALE PVT. LTD .....Petitioner
versus
JAI SHIV OIL INDUSTRIES AND ANR. .....Respondents
Advocates who appeared in this case:
For the Petitioner : Mr. Ajay Amitabh Suman and
Ms. Deasha Mehta, Advocates
For the Respondents : Mr. Nishant Gautam, CGSC with
Mr. Vineet Negi, Ms. Kavya Shukla,
Mr. Naman Sharma and Ms. Theresa, Advocates.
CORAM:
HON'BLE MR. JUSTICE TUSHAR RAO GEDELA
JUDGMENT
TUSHAR RAO GEDELA, J.
1. The present petitions have been filed under Sections 47, 57 and 125 of
the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) by the
petitioner seeking, inter alia, the following prayers:-
In so far as CO(COMM.IPD-TM) 392/2021 is concerned, the prayers
are as under:
“In view of the abovementioned facts/ statement of case and the
abovementioned grounds for revocation/ cancellation/ rectification, it is
most respectfully prayed that this Hon‟ble Board may kindly be pleased
to:
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(i) remove/ cancel/ expunge/ rectify the entry pertaining to impugned
Trade Mark “GOLDI (LABEL)” registered under no.945240 in class 29.
(ii) Stay the effect and operation of the entry pertaining to impugned
Trade Mark “GOLDI(LABEL)” registered under no.945240 in class 29
during the pendency of the present proceedings.
Any other relief(s) which is fit and proper in the facts and circumstances
including an order for costs of the proceeding to petitioners.”
In so far as CO(COMM.IPD-TM) 393/2021 is concerned, the prayers
are as under:
“In view of the abovementioned facts/ statement of case and the
abovementioned grounds for revocation/ cancellation/ rectification, it is
most respectfully prayed that this Hon‟ble Board may kindly be pleased
to:
(i) remove/ cancel/ expunge/ rectify the entry pertaining to impugned
Trade Mark “GOLDI (LABEL)” registered under no.2023762 in class
31.
(ii) Stay the effect and operation of the entry pertaining to impugned
Trade Mark “GOLDI(LABEL)” registered under no.2023762 in class 31
during the pendency of the present proceedings.
Any other relief(s) which is fit and proper in the facts and circumstances
including an order for costs of the proceeding to petitioners.”
2. Since the factual matrix arising in both the petitions are substantially
common, the grounds of challenge too are common, therefore, the two
petitions are being disposed of vide this common judgment.
BACKGROUND FACTS:-
3. Petitioner claims to be a company duly incorporated under the Indian
Companies Act, 1956, and has its office in Kanpur, Uttar Pradesh. Petitioner
claims to be engaged in the business of manufacturing and marketing food
products for human consumption including spices and other allied and related
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goods under the name and style of M/s Shubham Goldiee Masale Private
Limited.
4. Petitioner is the proprietor of the trademark “GOLDIEE” and Goldiee
formative marks in relation to the aforesaid goods. The word “GOLDIEE”
also forms part of the petitioner’s trade name. It is stated that through the
predecessors, the petitioner adopted the said trademark in the year 1980, and
have been continuously and uninterruptedly using the said trademark till date.
5. By virtue of being the prior and senior adopter and user of the said
trademark, petitioner’s claim that the said mark has acquired distinctiveness in
the market and trade, and identifies the said goods and business as exclusively
originating from the petitioner’s alone. Petitioner states that on account of
their high quality products under the said trademark, the trademark has
become source identifier for the petitioner and its goods.
6. Petitioner states that the trademark “GOLDIEE” has acquired a
tremendous goodwill reputation in the market and rely upon the sales figures
from the year 2000 when its turnover was Rs.43 Crores which reached Rs.297
Crores in the FY 2012-13 under said mark.
7. Petitioner states that the promotion of the said goods and their business
under the mark “GOLDIEE” has been extensively achieved through print,
audio/visual media, advertisements and publicity in leading newspapers,
distribution of trade literature, trade hoardings etc. Petitioner states that they
have incurred enormous amounts of money and efforts on such promotional
events. Predicated thereon, the petitioner’s assert that the mark “GOLDIEE”
has acquired a secondary meaning which denotes and relates to the
petitioner’s exclusively. The petitioner’s and its activities are disseminated
through their website www.goldiee.com. The petitioner has appended with the
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petition, documentary evidence in support of use and dissemination of the
mark “GOLDIEE”. The oldest registration of the “GOLDIEE” label is of
01.10.1980, and the subsequent trademarks registered by the petitioner are
enumerated in the list as under :-
8. It is stated that the products of the petitioner under the mark
“GOLDIEE” are available to the consumers all over the country through a
network of around 1200 distributors and C & F agents. Petitioner states to
have achieved ISO 9001:2000 certification in the year 2005, and in the year
2007 also obtained HACCP certification. Petitioner also has established an in-
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house laboratory under the supervision of quality control chemist and food
technologist for ensuring and maintaining standards in the quality of the food
products it manufactures. It is claimed that the GOLDIEE Group has done
sampling of its products to all the participants in the Delhi Marathon Event,
2010, and in the Mumbai Marathon Event, 2011. The petitioner was also
conferred various awards by the Government of India for the excellence in the
food products manufactured by it.
9. Petitioner also asserts that it has been extremely vigilant in protecting
its right in the mark “GOLDIEE” and has been instituting various civil as well
as criminal actions against infringers and counterfeiters and has been able to
obtain favourable orders on that score.
10. Petitioner claims that it came to know about the impugned adoption and
illegal user by the respondent no.1 of the trademark “GOLDI” (label) under
the trademark applications bearing nos.945240 and 2023762 in Class 29 and
Class 31 respectively only in late August, 2014, wherein the respondent no.1
has falsely urged the user of the impugned trademark from 01.01.2000.
Petitioner states that the respondent no.1 has dishonestly, malafidely and by
claim fraud upon the Trade Marks Registry obtained the said mark registered
in its favour. Petitioner states that the respondent no.1 was fully aware of the
petitioner’s registered trademark “GOLDIEE” and the associated goodwill,
reputation, use and exclusivity even at the time when it applied for registration
of its mark. Petitioner claims that the adoption is illegal and malafide. The
petitioner also states that there is clear deceptive similarity in both the marks
in terms of phonetic, visual, structural and conceptual basis. Petitioner asserts
that the adoption is tainted and with a view to ride on the coattails of the
petitioner’s substantial goodwill and reputation. That apart, petitioner asserts
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that the continuation of the impugned registration in the name of the
respondent no.1 would clearly dilute its own registered mark “GOLDIEE”.
11. Impugning the registration of the trademark “GOLDI” (label) both
under Classes 29 and 31, the present rectification petitions were originally
filed before the Intellectual Property Appellate Board (“IPAB”), and upon its
abolition were transferred to this Court.
CONTENTIONS OF THE PETITIONER
12. Mr. Suman, learned counsel appearing for the petitioner would submit
that the present facts would clearly entitled the petitioner in seeking
cancellation/rectification of the impugned mark “GOLDI” from the Register
of Trade Marks simply on the facts that the petitioner undoubtedly is a prior
user since the year 1980 as also being the registered trademark owner of the
mark “GOLDIEE” (label) on 01.10.1980, while the respondent no.1 filed its
application in the year 2000 in Class 29 in relation to mustard oil (edible oil)
and was granted registration only on 16.09.2005. Insofar as the registration of
the impugned mark “GOLDI” in Class 31 in relation to foodstuffs (oil cake)
for animals is concerned, the registration was granted on 16.03.2012. Thus,
according to him, even if one were to consider the challenge on the basis of
the admitted dates of user and the actual registration granted, clearly the
petitioner would not only be the prior adopter and prior user, but also the prior
registrant for the mark “GOLDIEE”.
13. Learned counsel next urged that the registered trademark of the
petitioner “GOLDIEE” and the impugned mark “GOLDI” of the respondent
no.1 on a comparison clearly indicate that the deception and confusion the
public could face is apparent. According to learned counsel, both the marks
are visually, phonetically, structurally identical or deceptively similar.
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Learned counsel would further contend that there is practically no difference
in the pronunciation of both the marks. Equally, he would submit that
conceptually too, there is no distinction. That apart, he would contend that the
trade circle, the distribution channel, the retail outlets as well as the consumers
would be common too, since, both the petitioner as also the respondent no.1
are in the business of manufacturing edible oils. In such circumstances,
according to him, the consumer base would also be common.
14. He stoutly contended that in the above circumstances it would be clear
that an unwary consumer with average intelligence and imperfect recollection
would get confused or deceived into believing the goods of the respondent
no.1 to be those of the petitioner or associated with the petitioner.
15. He would contend that when all the aforesaid parameters are considered
compositely, it would be apparent that both the marks are deceptively similar
and since the petitioner is a prior adopter, prior user and a prior registrant of
the mark “GOLDIEE”, the existence of the impugned mark “GOLDI”
registered in favour of the respondent no.1 cannot be permitted to continue to
remain in the Register of Trade Marks. To substantiate his contention and to
further submit that the petitioner’s statutory and common law rights are
longstanding and continuous, he relied on the judgment passed by the
Coordinate Bench of this Court in Fybros Electric (P) Ltd. v. Vasu Dev
Gupta Trading as Vasu Electronics, 2023 SCC OnLine Del 3179.
16. Learned counsel also forcefully stated that the respondent no.1 has
tendered no explanation as to how and on what basis did it coin or adopt the
word “GOLDI” as its trademark. He would contend that the registration
obtained by the respondent no.1 is clearly by playing fraud upon the Registrar
of Trade Marks while applying for registration. He further stated that the
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respondent no.1 was proceeded ex-parte, and has not offered any counter
response to the petitions or to the claims made by the petitioner.
17. Learned counsel also contended that the respondent no.1 obtained the
registration of the impugned mark fraudulently and by material misstatements
as to its user, goodwill and reputation. He would contend that the said fraud
and misstatement would disentitle the respondent no.1 from continuing with
its mark “GOLDI” in the Register of Trade Marks.
18. Learned counsel also contended that the impugned mark “GOLDI” is
not distinctive of the impugned goods either at the time when the application
was applied for or at the time when the registrations were obtained, hence,
barred by the provisions of Section 9 of the Act.
19. Learned counsel would also contend that the impugned registration is
barred under the provisions of Sections 11, 12 and 18 of the Act.
ANALYSIS AND CONCLUSION
20. This Court has heard the arguments of Mr. Amitabh Suman, learned
counsel for the petitioner, perused the pleadings on record and closely
examined the records of the case.
21. Before proceeding further, it is pertinent to note the history of the
proceedings, which is as under:-
a. The present petitions were transferred to this Court and listed
before the learned Joint Registrar (Judicial) of this Court on 18.01.2022,
consequent to the abolition of the IPAB. Consequently, court notice was
issued to both respondent nos.1 and 2 alongwith their counsel on
29.08.2022.
b. Respondent no.2 was duly served through its counsel, as recorded
in the order dated 16.12.2022. However, court notice of respondent no.1
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was awaited as on that date. Respondent no.2 is a formal party and was
recorded as such for the first time in the order dated 12.09.2023.
c. Thereafter, the petitioner filed an impleadment application
bearing I.A. Nos.9925/2024 in C.O.(COMM-IPD-TM) 392/2021 and
8904/2024 in C.O.(COMM.IPD-TM) 393/2021, seeking to implead
respondent no.3 as a party on the ground that the impugned trademark
had been assigned by the respondent no.1 vide Assignment Deed dated
17.09.2015 to the proposed respondent no.3.
d. Vide order dated 06.11.2024, the service upon both respondent
no.1 and proposed respondent no.3 was completed, and vide order dated
19.02.2025, respondent no.3 was arrayed as a party. Vide order dated
01.05.2025, right of the respondent nos.1 and 3 to file their replies were
closed, and vide the order dated 04.08.2025, both the respondents were
proceeded ex-parte.
22. It is observed from the records and office noting of the case that though
the respondent no.1 was served on 04.11.2024, however, has chosen to remain
absent throughout. Subsequently, respondent no.3 was impleaded on the
ground that it was assigned the impugned mark. It was also served with the
notice of the petitions, however chose not to appear or file its reply. Therefore,
there is no material or rebuttal either in the form of pleadings or the
documents in answer to the allegations contained in the petitions. Though it is
trite that in the absence of any opposition, the averments contained in the
petitions, and the documents annexed thereto are deemed to be admitted and
judgement can be pronounced, however, this Court would still proceed to
consider the petitions on its own merits.
23. In the present case, it would be relevant and necessary for this Court to
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appreciate the evidence in the form of documents which have not been
rebutted. The first line of documents would be the registrations obtained by
the petitioner for the mark “GOLDIEE”. It would be apposite to extract
hereunder the following documents:-
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24. In comparison to the aforesaid, it would be appropriate to examine the
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trademark application and registration of the respondent no.1 placed on record
by the petitioner. The same are reproduced hereunder:-
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25. On a close scrutiny and examination of both the set of documents, it is
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noted that the respondent no.1 applied for a device mark “GOLDI” (label) on
04.08.2000 with a user detail of 01.01.2000 in Class 29 in relation to
manufacture of mustard oil (edible oil), and on 15.09.2010 for the device mark
“GOLDI” (logo in Hindi) with the user detail of 01.01.2000 in Class 31 in
relation to manufacture of foodstuffs (oil cake) for animals. In contrast
thereto, the petitioner had applied for the registration of its trademark
“GOLDIEE” (label) on 01.10.1980 and for the label mark “GOLDIEE” (in
Hindi and English) on 27.03.1996 in Classes 29 and 30.
26. From the aforesaid examination itself, it appears that not only is the
petitioner a prior adopter and a prior user but also a prior registrant of the
mark “GOLDIEE” both in Classes 29 and 30. There does not seem to be any
plausible reason as to why and wherefrom the respondent no.1 has adopted the
impugned mark “GOLDI” for the same class of goods i.e. edible oil and
foodstuffs. On a simple and plain comparison of the two words “GOLDIEE”
and “GOLDI”, this Court has no doubt that both words are phonetically,
visually and structurally nearly identical and deceptively similar. Except for
the removal of the letters “EE” from the mark “GOLDIEE” of the petitioner,
there is no substantial or apparent distinction, inasmuch as the pronunciation
would still remain identical and visually both are nearly similar. Moreso, in
the Hindi version, there would be no visual or structural distinction and the
pronunciation would be identical. Though the comparison of the whole of the
labels may have certain distinctions when the other elements of the labels are
compared, however, the manner, the font and the structural formation in which
the word “GOLDI” is written in Hindi in the mark of the respondent no.1 and
that of the petitioner, this Court is of the considered opinion that there is clear
deceptive similarity between both. It is to be noted that the mark “GOLDIEE”
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in Hindi in both the labels of the parties, particularly the label of the
respondent no.1 is the prominent/dominant part of the label. Clearly the
confusion is writ large in the sense that even if the impugned mark “GOLDI”
in Hindi is stated to be slightly distinct, yet would at least show or indicate its
association with the petitioner and not the respondent no.1. This would be
impermissible.
27. It has to be kept in mind that both parties are in the similar business i.e.,
edible oils as also foodstuffs. From the documents on record, it appears that
the trade circle, distribution channels as also the retail outlets would be
common between both the parties. The consumers who would purchase the
product of both parties undoubtedly would be common. Though, so far as
manufacture of oil cake for animals by the respondent no.1 may be a distinct
category, however, it is asserted by the counsel for the petitioner that the said
goods are also available in the same common retail outlets. If that be so, then
the confusion and deception between the two rival marks would also get
attracted to the oil cake for animals manufactured by the respondent no.1.
28. The petitioner has placed on record documents to establish the
substantial growth in the sales figures from the year 2000-01 till 2012-13. The
figures clearly established that by the time the respondent no.1 applied for
registration of impugned mark “GOLDI” in the year 2000, with the user detail
of 01.01.2000, the petitioner was already a well established brand having a
turnover of Rs. 43 Crores for the same class of goods. The sales figures noted
above and reproduced by the petitioner is extracted hereunder:-
YEAR TURNOVER
2000-01 434,407,906
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2001-02 501,707,005
2002-03 633,808,964
2003-04 736,690,017
2004-05 765,424,470
2005-06 966,847,927
2006-07 1,108,807,668
2007-08 1,347,917,420
2008-09 1,825,379,861
2009-10 2,296,692,374
2010-11 2,806,684,012
2011-12 2,746,753,392
2012-13 2,970,544,597
29. The petitioner has filed voluminous records containing the
advertisement and other promotional material published in newspapers from
the years 2001 till 2010-11, which indicate that the petitioner had incurred
substantial expenditure for promotion and advertisement of its trademark
“GOLDIEE”, and the products manufactured by it in order to promote the said
mark. Some of the promotions and advertisements carried out in the
vernacular newspapers is extracted hereunder:-
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The petitioner has also placed on record some sample invoices to
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substantiate and support the assertion that the petitioner has been
manufacturing and offering for sale products under the registered trademark
“GOLDIEE”. One of such invoice is extracted hereunder:-
30. Learned counsel for the petitioner had relied upon the judgments of this
Court in Fybros Electric (P) Ltd. (supra) and FDC Limited vs. Docsuggest
Healthcare Services Pvt. Ltd., 2017 SCC OnLine Del 6381. in support of his
contentions. In the aforesaid circumstances, it would be apposite to extract the
relevant paragraphs of the judgment in Fybros Electric (P) Ltd., (supra),
which are reproduced hereunder:
“26. The petitioner’s mark is registered in Classes 9 and 11 and the
respondent’s mark is registered in Class 11. Mr. Mishra sought to
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contend that, even though the petitioner has registration in Class 11,
proof of user of the asserted FYBROS mark is only available with respect
to goods relatable to Class 9. In other words, he submits, there is no
material to indicate user of the asserted FYBROS mark in respect of any
other goods, even if the mark is registered for various goods both in
Classes 9 and 11.
27. The submission is, to my view, misconceived in view of the specific
words in which Section 11(1)(b) is couched. Section 11(1)(b) proscribes
registration of a trademark if, on account of (i) its similarity to an earlier
trademark and (ii) the identity or similarity of the goods or services
covered by the trademark, there exists a likelihood of confusion on the
part of the public. The expression “covered by the trademark” cannot be
equated, in my view, with the words “in respect of which the mark is
used”. Coverage of a trademark has to be decided on the basis of the
certificate of registration which sets out the goods in respect of which the
trademark is registered. All such goods would be “covered by the
trademark”.
[emphasis supplied]
Thus, the registration of the trademark “GOLDIEE” of the petitioner in
Classes 29 and 30 shall preclude the respondent nos.1 and 3 from using
identical or deceptively similar trademark “GOLDI”. With respect to the
registration of the respondent no.1 for the mark “GOLDI” (in Hindi) in Class
31 for foodstuff (oil cake) for animals is concerned, the counsel for the
petitioner relied upon the judgment of this Court in FDC (supra). The relevant
paragraph is reproduced hereunder:
“51. There can be no doubt, and it needs no discussion to say that the
mark “Zifi” of the plaintiff and “Ziffi” of the defendant are phonetically,
structurally and visually similar. In any event, this aspect is also
discussed a little later. The prime issue in this case, therefore, is whether
the goods of the plaintiff and the services of the defendants are
allied/cognate or not. Allied/cognate goods or services, as understood
from the material referred to below, are those goods/services which are
not identical, but can be said to be related or similar in nature (See
McCarthy on Trademarks and Unfair Competition, Fourth Edition, Vol
5). The Shorter Oxford English Dictionary on Historical Principles Fifth
Edition 2002, Vol. 1. defines the term “Allied” as “connected by nature
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or qualities; having affinity” and the term “Cognate” as “akin in origin,
nature or quality”. Reference may also be made to New Webster’s
Dictionary and Thesaurus of the English Language, 1992 which defines
“Allied” as “relating in subject or kind” and “Cognate” as “1. adj.
having a common ancestor or origin (of languages or words) having a
common source or root (of subjects etc.) related, naturally grouped
together.”. Cognate goods/services can be described, inter alia, as goods
or services which have a trade connection – as in glucose and biscuits
(See Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR
1960 SC 142) or which are intended for the same class of customers – as
in television picture tubes (parts thereof, video tapes and cassettes and
television tuners etc.) and televisions, tuners and T.V. Kits (See Prakash
Industries Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or are
complementary to each other – as in toothbrushes and toothpaste (See
HM Sariya v. Ajanta India Ltd. (2006) 33 PTC 4).
52. In the present case, the plaintiff is using the registered mark „Zifi‟ for
goods falling under Class 05 of the Schedule of the Act i.e. pertaining to
pharmaceutical preparations. On the other hand, the defendants are
using the mark „Ziffi‟ for booking of appointments for doctors,
diagnostics, spas and salons, and have applied for registration under
Class 35 and 42 of the Schedule of the Act. It is the submission of the
defendant that goods and services falling under different classes cannot
be allied and cognate. I do not find merit in this submission. The
classification of goods and services under Section 7 of the Act is not the
criterion for deciding the question of similarity in goods/services.
Reliance may be placed on K.C. Kailasam/Ramu Vedaraman’s Law on
Trade Marks & Geographical Indications 1st Edition, 2003 wherein, the
learned author on Page 180 has stated as under-
“Classification of goods given in the rules not the criterion
Whether or not two sets of goods or services are of the same
description is not be decided on the basis of the classification of
goods and services given in the 4th schedule to the Trade Marks
Rules, 2002. The description of goods may be narrower or wider
than any of the classes according to the circumstances of the case.
As was observed by LINDLEY J., in the Australian Wine Importers
Trade Mark case [(1889) 6 RPC 311]. “If you come to look at that
classification, you will find goods of the same description, in one
sense, in different classes; and you will find goods of different
description in the same class”.”
[emphasis supplied]
The ratio in FDC (supra) appears to postulate that while the similarity
in marks is being examined, the Court may have to consider myriad aspects
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like the test of perceiving the goods from a business and commercial point of
view; the nature, intended purpose, method of use, competition with each
other or the complimentary nature of the goods and services offered; the users
and the uses of the goods and services; the trade channels; the distinctive
character of a trademark and its reputation, in order to ascertain whether the
goods are cognate and/or allied in nature.
31. In the present case, it has been asserted by the petitioner that the goods
are similar and/or allied and cognate in nature to that of the class of goods
falling within Class 30 (foodstuffs) except that the goods manufactured by the
respondent no.1 i.e., oil cake is for animals falling in Class 31. However, he
would assert that the said items are available for sale in the same retail outlets
as the items manufactured by the petitioner under Class 30 in relation to
foodstuffs. It is the assertion of the petitioner that the purchasers who
approach the same retail store would have the impression, albeit false, that the
oil cake of the respondent no.1 is that of the petitioner or that it is associated
with the petitioner. Either way according to him, the confusion and deception
is most likely.
32. Having heard the counsel for the petitioner, with no rebuttal or contrary
assertion by the respondent no.1, coupled with the judgments in Fybros
Electric Ltd. and FDC (supra), this Court is of the considered opinion that the
parameters set out in the judgments would be applicable in the present case.
Clearly, the aforesaid analysis evidences that the marks are structurally,
visually, phonetically and conceptually deceptively similar. The distribution
channels, the retail outlets for products manufactured by both parties too are
common, and the consumer base is most likely to be common. In such
circumstances it is likely that an unwary consumer with average intelligence
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CO(COMM.IPD-TM) 392/2021 & connected matter
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and imperfect recollection may tend to get confused or deceived into
purchasing the goods of the respondent no.1 as those of the petitioner, and so
far as the oil cake for animals is concerned, is most likely to associate the
product as either manufactured by the petitioner or at least associated with it.
33. Even otherwise the provisions of Section 47(1)(a) of the Act, in the
absence of any opposition, as also in the absence of any evidence as to how
and in what manner respondent no.1 adopted the mark “GOLDI” which was
registered, support the contention that such adoption is without bonafide
intention, and in the absence of any evidence on record to establish the use of
the said mark three months before the date of application, require removal of
such mark from the Register of Trade Marks. Similarly, the provisions of
Section 9(2)(a) and Section 11(1)(a) and (b) of the Act, if applied to the
aforesaid facts, would bar registration of the mark “GOLDI”.
34. On the overall conspectus of the matter, it leaves little doubt in the mind
of the Court that not only are the two marks phonetically, visually and
structurally nearly identical and deceptively similar, but conceptually too there
does not seem to be any distinction. In such circumstances, it is trite that two
identical/deceptively similar marks that too in the same Class and in relation
to similar/identical goods cannot continue to remain on the Register of Trade
Marks. Equally, it is relevant to note that both parties are in the same business
of manufacture of mustard oil (edible oil) and foodstuff, which would also
include oil cake for animals though stated to be manufactured only by the
respondent no.1. The trade circles, the distribution network and the retail
outlets too are common and the consumers of the products manufactured by
both parties also are common. Under these circumstances, two rival marks of
the nature described above cannot continue to remain on the Register of Trade
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Marks.
35. In view of the above, in the considered opinion of this Court, the
impugned trademark “GOLDI” of the respondent nos.1 and 3 cannot continue
to remain on the Register of Trade Marks, and consequently is directed to be
cancelled and removed from the Register of Trade Marks.
36. The Registrar of Trade Marks/respondent no.2 shall comply with the
aforesaid direction within a period of six weeks from date.
37. The petitions are disposed of alongwith any pending application in
above terms, however, no orders as to costs.
TUSHAR RAO GEDELA
(JUDGE)
APRIL 08, 2026/rl/Sumit/anj
Signature Not Verified
Digitally Signed
By:YASHRAJ
CO(COMM.IPD-TM) 392/2021 & connected matter
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