Mr. Ayush Dey, Adv v. POSSHUSA APPARELS INDIA PRIVATE LIMITED ANR

C.O. (COMM.IPD-TM) 127/2025 Page 1 of 8 $~17 * IN THE HIGH COURT OF DELHI AT NEW DELHI + C.O. (COMM.IPD-TM) 127/2025, I.A. 13521/2025 PUNJAB FC PRIVATE LIMITED .....Petitioner Through: Mr. Ayush Dey, Adv. versus POSSHUSA APPARELS INDIA PRIVATE LIMITED & ANR. .....Respondents Through: Mr. Gaurav Barathi, SPC for R-2. CORAM: HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA O R D E R % 11.12.2025 1. This petition has been filed for rectification/removal under Section 57 of the Trademarks Act, 1999 [„Act of 1999‟], of the Trademark /PFC under application no. 4611789 in class 25, registered and remaining on the Register of Trademarks in the name of Posshusa Apparels India Private Limited. 2. The case set up by the counsel in the petition is as under: - 2.1. The Petitioner/Punjab Football Club [„PFC‟], has been a cornerstone of Indian Football since its inception in 2017. The Petitioner runs the website https://thepunjablife.com/ for PFC. 2.2. The club‟s ethos revolves around the development of young talent, with a particular focus on identifying and nurturing players from Punjab and This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 2 of 8 surrounding areas. 2.3. Petitioner‟s earliest trademark is for the word PUNJAB FC bearing TM no. 4671181 in class 41, application dated 24.09.2020. It also has registration for the device mark bearing TM no. 4671183 in class 41, application dated 24.09.2020. Details of Petitioner‟s trademark registrations have been set out in paragraph „4‟ of the petition. 2.4. The Petitioner has filed applications for registration of the word mark PFC, being Application Nos. 6544656 and 6544657, in Classes 35 and 41 in 2024, and the same are pending consideration. Knowledge about Respondent No.1 2.5. In March 2025, the Petitioner found that Respondent No.1/Posshusa Apparels India Private Limited had attained registration for /PFC registered under TM no. 4611789 in class 25 on a proposed-to-be used basis, and had received a certificate on 27.12.2023 [„impugned mark‟]. 2.6. The impugned mark is deceptively and phonetically similar to the Petitioner‟s trademark PFC and bears an undeniable resemblance thereto. Aggrieved by the registration of the impugned mark, the Petitioner has instituted the present rectification petition. 2.7. By virtue of prior adoption and extensive, continuous and uninterrupted use, coupled with substantial investment in promotion and brand-building across newspapers, magazines, digital platforms and social media, the trademarks PUNJAB FC, PUNJAB FOOTBALL CLUB and PFC This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 3 of 8 have acquired significant goodwill and have come to be exclusively associated with the Petitioner nationwide in relation to a wide range of sporting, training, educational, recreational and club services. 2.8. It is stated1 that the Petitioner tried to find any use of the impugned mark of Respondent No.1 on the internet; however, it seems that Respondent No.1 is not using the impugned mark. 3. Learned counsel for the petitioner states that Respondent No.1 had also obtained registration for the identical trademark application /PFC under TM no. 4611787 in class 18. 3.1. He states that the Petitioner herein had filed a rectification petition against the said registration in class 18, and the same has been allowed by the coordinate bench in its decision dated 20.02.2025 in CO (COMM. IPD-TM) 160/2024. 3.2. He states that the said judgment had attained finality, and Respondent No.1 has not challenged the said petition. He states that the facts and circumstances in the present petition are identical since it is the same party and the same mark. Court’s Findings 4. This Court has considered the submissions of the Petitioner and perused the record. 4.1. It is a matter of record that Respondent No.1 was issued notice in these proceedings vide order dated 27.05.2025, and has been proceeded ex-parte vide order dated 29.10.2025, wherein it is clearly recorded that This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 4 of 8 Respondent No.1 had been served through three [3] email addresses, including the one enlisted on the Ministry of Corporate Affairs‟ [MCA] website. It has come on record that Respondent No. 1 was also proceeded ex-parte in CO (COMM. IPD-TM) 160/2024, which was decided against it on 20.02.2025. 5. In light of the fact that the petition has been duly verified and is supported by the affidavit of the Petitioner, and the fact that Respondent No.1 has elected not to enter appearance despite service, consequently all averments made in the petition against Respondent No.1 remain unrebutted and are deemed to be admitted. 6. In these facts, this Court proceeds to examine the averments made in the petition. 7. Respondent No. 1 applied for registration on 17.08.2020, which was granted on 27.12.2023 on a proposed-to-be-used basis. It is the averment of the Petitioner that the said registration should be removed on the ground of deceptive similarity, and also since there has been no use of the impugned mark by Respondent No.1 since its registration. It is further stated that the intention of Respondent No.1 was to ride upon the goodwill and reputation garnered by the Petitioner. 8. This Court deems it appropriate to refer to the dicta of Punjab Private Limited v. Posshusa Apparels India Private Limited & Anr.2, wherein the Co-ordinate Bench of this Court, while deciding the cancellation of an identical mark of the Respondent No.1 herein in class 18, held that the mark of respondent no.1 is deceptively similar to the petitioner‟s registered 1 Paragraph „19‟ of the petition 2 2025 SCC OnLine Del 1027 This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 5 of 8 trademarks. The relevant paragraphs read as under: “18. A comparative representation of the trademark of the petitioner with the mark of respondent no. 1, is given as below: 19. Upon careful examination of the aforenoted comparison, it is apparent that the petitioner's registered mark PFC forms the dominant portion of respondent no. 1's infringing mark, which bears evident resemblance to the registered trademarks of the petitioner. 20. This Court further finds that inclusion of a football icon and a crest-shape in its logo by respondent no. 1, clearly shows its intent to depict an association with football, and consequently, with the petitioner. Moreover, there exists phonetic and visual similarity between petitioner's prior used and adopted marks and the impugned mark. 21. From the above, it is manifest that the respondent no. 1, to ride upon the goodwill vesting in petitioner's marks, has dishonestly adopted the impugned PFC mark. Thus, this Court, in the case of Ishi Khosla v. Anil Aggarwal, 2007 SCC OnLine Del 126, has held as follows: “xxx xxx xxx 23. What is relevant is the admission on the part of the defendants in using the word “DIET WHOLE FOODS” in respect of the same products which are marketed by the defendants with same techniques and same This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 6 of 8 benefits. As on the date of filing of the application by the defendants for registration of this mark in 2004, they had not started marketing their products under this label. Even if it is taken that the defendants' products hit the market in the year 2004, the plaintiff had been marketing her products with trademark „Whole Foods‟ since the year 2001. Obviously, the defendants could see through the benefits of products as conceptualised by the plaintiff and they wanted their own share in the pie. It is not to suggest that the plaintiff has monopoly over these products. Any other person may enter the trade and be a competitor. Competition is healthy for not only consumers but for manufacturer as well and is, therefore, in public interest. However, what is to be discouraged in the dishonest adoption of somebody else's trademark and trying to ride on the goodwill created by the competitor who entered the market prior in time. This is what is sought to be done by the defendants by clever manipulation, namely, adding the word „DIET‟ in their mark after adopting identically the entire trademark of the plaintiff i.e. „Whole Foods‟. This intention of the defendants becomes manifest as they have also adopted same style of the trademark and same labels/packing etc. I may mention that during arguments learned counsel for the defendant conceded this and offered to change the writing style as he accepted that artistic feature could not be used. However, what is emphasized is the manner in which the defendants adopted the trademark „DIET WHOLE FOODS‟. Addition of one word with same style in which these letters are written explains the obvious, namely, dishonest adoption. With such adoption, confusion is inevitable. In Ruston Hornsby v. Zamindara Engineering, 1 Supp PTC 175 SC, the Supreme Court deprecated the defendant's adoption of plaintiff's trademark ‘RUSTON’ by adding word ‘INDIA’ to its mark and held that mere addition of the word ‘INDIA’ could not be held to be a distinguishing factor as the said word had no trademark value or signification.” ……… 22. This Court is of the view that this dishonest adoption of the impugned mark by the respondent no. 1 in relation to goods and merchandise under Class 18 is bound to create the impression of association of the said goods with petitioner's football club in the minds of consumers as well as members of the trade and consequently, result in dilution of the brand identity associated with petitioner's trademarks. ………” [Emphasis supplied] This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 7 of 8 9. Considering that the parties herein are the same as in the aforementioned case, and that the impugned mark cancelled by the Co-ordinate Bench is the very same mark [though registered under a different registration number and in a different class] as the mark impugned in the present proceedings, this Court is of the considered opinion that the impugned mark bearing TM no. 4611789 should also be removed from the Register of Trademarks. 10. Additionally, since Respondent No.1 has failed to take any requisite steps to contest the present petition despite having been afforded sufficient opportunities, its conduct demonstrates a clear lack of intent to defend the present proceedings and its trademark registration. In view thereof, the Petitioner‟s assertion in the petition regarding deceptive similarity and non-use remains unrebutted. In this regard, a reference may also be made to the case of DORCO Co. Ltd. v. Durga Enterprises and Another3, wherein the impugned mark was removed on the ground of non-use. The relevant part of the case reads as follows: "19. In the judgment in Shell Transource Limited v. Shell International Petroleum Company Ltd., 2012 SCC OnLine IPAB 29, it was observed by the IPAB that the onus of proving “non-user” is on the person who pleads the same. However, when the applicant pleads “non-user”, the respondent must specifically deny it. Therefore, in the absence of a specific denial, it was held that the allegations of “non-user” stood admitted.” (emphasis supplied) 11. The impugned registration was applied on a proposed-to-be-used basis. The registration, though granted on 27.12.2023, relates back to the date of application, i.e., 17.08.2020, and the Petitioner has asserted that the impugned mark has not been used by Respondent No. 1 to date. This would 3 2023 SCC OnLine Del 1484 This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 15/12/2025 at 13:39:37 C.O. (COMM.IPD-TM) 127/2025 Page 8 of 8 be an additional ground for cancellation of the impugned mark as per Section 47(1) of the Act. 12. Therefore, this Court is satisfied that the Petitioner has made out the case for cancellation of the registration both on the grounds of deceptive similarity and non use. The trademark registration in favour of respondent no.1 bearing TM no. 4611789 for the mark in class 25 is hereby cancelled. 13. Respondent No.2/Registrar of Trademarks is directed to carry out the necessary rectifications in its register and issue an appropriate notification with regard thereto. 14. The Registry is directed to supply a copy of the present order to the office of the Registrar of Trademarks, on email Id: [email protected], for compliance. 15. Accordingly, the petition is allowed and disposed of with the aforesaid directions. 16. Pending applications, if any, stand disposed of. 17. The digitally signed copy of this order, duly uploaded on the official website of the Delhi High Court, www.delhihighcourt.nic.in, shall be treated as a certified copy of the order for the purpose of ensuring compliance. No physical copy of order shall be insisted by any authority/entity or litigant. MANMEET PRITAM SINGH ARORA, J DECEMBER 11, 2025/gm/aa