Madras High Court · 2025

O.P.(T.M.)57 of 2024(c) cost of the proceeding be awarded in favour of the petitioner;(d) such other order or orders the Hon'ble court may deem fit and proper in the interest of justice and equity. For petitioner : Ms.Swati Mittal For Respondents : Mr.R.Karthikeyan – for R1 ORDERThis Original Petition has been filed praying for the following reliefs:(a) Allow the present petition;(b) Direct the respondent No.2 to rectify the register in relation to the Trademarkunder Registration No.5956431 in Class 30 by removing the trade mark from the Register. (c) Cost of the proceeding be awarded in favour of the petitioner;2. The petitioner is a part of the esteemed MRV Group, which represents a group of family run businesses comprising individuals who have been working in the Rice Mill Industry for almost their entire lives which includes the partners of the firm M.R.Suresh, M.R.Srikanth, M.R.Rohini, M.R.Shyamsunder, M.R.Deepti and M.R.Sangeetha. 2/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 20243. The case of the petitioner is that the petitioner viz., Shri Prasanna Anjaneya Agrotech is one of the units of the MRV Group, deals in Sona Masoori rice, HMT Kolam rice and Lachkari rice. Among the multiple brands that the petitioner owns, the brand M R GOLD is the most popular in Karnataka and well known for the Sona Masoori Raw Rice. The brand name has been directly derived from the name of the MRV Group. This MRV group was established in the year 1964, with a vision to consolidate the rice industry. The MRV Group became one of the leading millers and exporters in the industry. The MRV group has a unique business model and the goodwill of the customers which enabled the firm to consolidate on its leadership position. The MRV group through its various units has been selling many varieties of rice in bulk quantities throughout India and have been the suppliers to all top markets in Southern and Central India. 4. According to the petitioner, M R GOLD brand was originally used by the petitioner’s predecessor viz., M/s.Shri Panchamukhi Industries which was established in the year 2007. In the year 2016, the said M/s.Shri Panchamuki Industries leased out their rice mill and godown to the petitioner. Thereafter, the petitioners' family carried out the said business and thereafter from 2016 onwards, 3/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024the petitioner has been using and commercially exploiting the brand M R GOLD. M R GOLD and its variants in relation to its rice is popular in Indian Market for a considerable period. The petitioner's mark is prominently showcased on their business website as http://mrvgroup.in/ and http://mrvgroup.in/spaa/ which is accessible to general public around the country. The petitioner claims that their brand name viz., M R GOLD is in long usage and their consolidated sales figures of their operation from the year 2014 to 2017 is as under:-FISCAL YEARSALES FIGURES (INR)2014-201528,61,22,707.752015-201631,10,34,289.752016-201715,06,03,531.25The petitioner made an application before the Trade Mark Registry by way of Trademark application bearing No.5517812 on 05.07.2022 concerning the mark M R GOLD for their rice varieties in order to secure the statutory protection. After application, a third party opposition has been made for the said trademark registration. The said application is still pending on the file of the Trademark Registry.4/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 20245. According to the petitioner, the 1st respondent had prior business relations with the petitioner as the Distributor of the products bearing the mark M R GOLD during 2016-17 and 2017-18 and thus had access to the packaging labels of the petitioner’s products. It has come to the knowledge of the petitioner that the 1st respondent has copied the trademark and trade dress of the petitioner and has been using the same for selling their products. 6. It is stated by the petitioner that they filed the present Petition seeking rectification as soon as the Respondent No.1 disclosed the description of the impugned registration during the court proceedings related to a commercial suit in COM.O.S. 125 of 2024 titled as M/s.Shri Prasanna Anjaneya Agrotech Vs. Mohammed Rafiq trading as M.R.Enterprises, which is pending before the District Court of Mysuru. The 1st respondent who was the distributor of the petitioner, having knowledge about the petitioner's brand name and product name M R GOLD is aware of the reputation and use of the said Trademark by the petitioner. The 1st respondent's adoption and registration of an identical Trademark for identical goods is actuated by a malafide intention to misappropriate the goodwill and reputation of the petitioner's Trademark. The Trademark M R GOLD 5/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024of the petitioner is identified and associated in the minds of the public with the petitioner, therefore, the 1st respondent's adoption of an identical/deceptively similar trademark creates a false sense of affiliation or collaboration or nexus between the petitioner and the 1st respondent in the minds of the public. 7. The use and registration of Trademark by the 1st respondent is likely to mislead the public to believe that the source of the 1st respondent's goods is the petitioner. Therefore, registration of the impugned Trademark by the 1st Respondent is in violation of the Trademarks Act. Since the petitioner is in the trade from 2016 and the 1st respondent had registered the impugned Trademark on 31.05.2024 vide Registration No.5956431, the registration is obtained by suppression of prior use by the petitioner and the same is liable to be removed from the trademark register. 8. According to the petitioner, the 1st respondent did not comply with the demands of the cease and desist notice but sent a reply dated 27.01.2024 denying passing off and infringement and also failed to disclose about the impugned trademark registration. The impugned trademark was published in the Journal on 6/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024December 11, 2023 and was open to public opposition when the 1st respondent sent its reply to the cease and desist notice. 9. Further, the petitioner submits that the 1st respondent has obtained registration fraudulently by filing the trademark application for their trademark which is identical/deceptively similar to petitioner's trademark under Class 30 for goods “Coffee, tea, cocoa and artificial coffee; rice, pasta and noodless; tapioca and sago; flour and preparations made from cereals; bread, pastries and confectionery ; chocolate; ice cream sorbets and other edible ices; sugar, honey, treacle, yeast, baking-powder; salt, seasonings, spices, preserved herbs; vinegar, sauces and other condiments; ice (frozen water)”. The Trademark Registry cited the petitioner's Trademark application in the examination report in respect of Class 30. However, the 1st respondent had claimed sole rights over the impugned trademark “MR” asserting its usage since 2016. However, their registration date is subsequent to the petitioner's established use and goodwill of the trademark MR GOLD.10.The petitioner stated that they filed a suit in COM.OS.125 of 2024 7/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024before the Commercial Court & II Additional District and Sessions Court, Mysuru, by making Mohammed Rafiq as defendant who is Trading as M.R enterprises. The Commercial Court granted an order of interim injunction as against the defendant on 09.10.2025. The Mysuru II Additional District & Sessions Judge [Comm.Court] has considered that the petitioner is carrying on the business in rice with Trademark “MR Gold”; earlier one M/s.Panchamukhi Industries which was established in 2007 was using the said Trademark “MR Gold”; in 2016, the said Panchamukhi Industries leased out their Mill and Godown to Plaintiff/petitioner herein and partners in both the Firm are mostly the same. The learned Judge, Commercial Court, further pointed out that the plaintiff has produced documents like invoices of Panchamukhi Industries and Prasanna Anjaneyaswamy Agro Tech and also documents like Lease Agreement and Partnership Reconstitution Deed which shows that most of the partners of Panchamukhi Industries are the partners of Prasanna Anjaneyaswamy Agro Tech and the plaintiff has taken over the business of Panchamukhi Industries. 11. The petitioner had filed the invoices to show that they were in Trade ever since 27.04.2008 which is enclosed from page No. 23 to page No.70 of the 8/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024Typed set of documents Vol.I., which will reveal that the petitioner is carrying on the business using the trademark MR Gold. On the above grounds, the petitioner prayed for rectification by removing the 1st respondent’s trademark under Registration No.5956431 in Class 30 from the Register.12. Learned counsel appearing for the petitioner, has relied on the following judgments in support of her contentions:-(i) Kia Wang Vs. Registrar of Trademarks and Another, reported in 2023 SCC OnLine Del 5844. The proposition in this decision which buttressed the petitioner's case is that removal of the trademarks registered with malafide intentions from the Register of Trade Marks is essential to maintain the purity of the Register. It is relevant to extract paragraph 20 and 21 of the above said decision:-“20. Clearly, 'bad faith' is an unfair practice involving lack of honest intention, a conscious doing of wrong and not just a mistake. It includes dealings which fall short of standards of acceptable commercial behaviour. When one examines the adoption of the impugned trademark by Respondent No. 2 in the present case, there is little doubt that there was a dishonest intention in adopting Petitioner's similar mark for identical goods including the word in the same colour, font and style, as a part of the device mark. The dishonest intention is with a view 9/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024to encash on the goodwill of the trademark of the Petitioner and this gets pronounced by the fact that Respondent No. 2 has allowed the petition to go uncontested without even appearing in the matter, leave alone filing any counter statement or evidence to rebut even the 'prior user'. Therefore, the impugned trademark is liable to be cancelled and removed from the Register of Trade Marks rectifying the Register.21. Removal of the impugned trademark from the Register of Trade Marks is also essential to maintain the purity of the Register. In Paine and Co.'s Trade Marks (L. R. (1893) 2 Ch. 567 at page 584 : 10 RPC 217 at page 232), it was observed that "The purity of the Register of Trade Marks is of much importance to trade in general, quite apart from the merits or demerits of particular litigants, 'and it is the duty of the tribunal to see that no word not 'adapted to distinguish' shall be put on the Register in the interest of other traders, wholesale and retail, and of the public. If this were not so, the large and wealthy firms with whom the smaller folk are unwilling to litigate, could by a system of log-rolling--...--divide amongst themselves all the ordinary words of description and laudation in the English language."(ii) Jitendra Kumar Vs. Registrar of Trademarks, New Delhi and another, reported in 2024 SCC Online Del 4043, wherein, the Hon'ble Supreme Court has observed as follows:-“11. Section 9(2)(a) entails an absolute proscription on the registration of a mark, if it is potentially deceptive or capable of causing confusion. In the case at hand, the contesting marks are indistinguishable and are used on identical products namely, garments categorized under class 25. These resemblances accentuate the likelihood of consumers being confused about the 10/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024origin of the goods.”It is further held in the above judgment that if the applicant succeeds in establishing prior usage of the trademark in question, then the subsequent registration of an identical mark will inevitably need to be removed from the Register of Trademarks. The above observation is squarely applicable to the facts and circumstances of the present case. (iii) Diamond Modular Private Limited Vs. Yash Arora as Trading as Siddhi Vinayak Traders and another, reported in 2025 SCC Online Del 23.The proposition laid down by the High Court of Delhi, in this decision is that even generic words, when associated with a specific brand over a long period, can acquire distinctiveness and deserve legal protection. The ruling also underscores the importance of preventing dishonest adoption of marks by former business associates who seek to capitalise on an established brand’s goodwill. Paragraph 15 and 16 are extracted hereunder:-“ 15. Courts have time and again underscored that dishonest adoption of somebody else's trade mark and trying to ride on the goodwill created by the competitor who entered the market prior in time, ought to be discouraged. In the present case, it is evident that the petitioner's mark has been completely subsumed in the impugned mark and in relation to similar, allied and cognate goods. Respondent, 1, being an ex-distributor of the petitioner, was well aware of the mark of the petitioner. Thus, in ACL education 11/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024Centre (P) Ltd., Vs. Americans Cebtre for Languages, it has been held as follows:-“10. I had the occasion to discuss the issue of dishonest adoption in my recent judgment in Ishi Khosla Vs. Anil Aggarwal. While confirming the injunction, I observed : (SCC OnLine Del para 23)23. .....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 is the dishonest adoption of somebody else's trade mark 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 trade mark of the plaintiff i.e., 'Whole Foods'. This intention of the defendants becomes manifest as they have also adopted same style of the trade mark and same labels/packing, etc. 11. In Munday vs. Carey the court held:“....I believe that it is a rank case of dishonestly and where you see dishonesty, then even though the similarity were less than it is here, you ought, I think, to pay great attention to the items of similarity and less to the items of dissimilarity.”12. Further, in Midland Counties Diary Ltd., vs. Midland Dairies Ltd., it was held that:“...For if the court comes to the conclusion that the defendant was actuated in adopting the style complained of by the dishonest motive of filching some part of the plaintiffs' reputation, then the court will not be astute to “find that this nefarious design has failed.”16. Considering the detailed discussion hereinabove, continuance of the impugned mark on the Register of Trade Marks, cannot be uphed. The impugned mark is liable to be removed from the Register of Trade Marks.”12/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 202413. Per contra, learned counsel for the 1st respondent submits that the petitioner cannot be regarded as an aggrieved person, because the petitioner has changed his Trade mark from MR to SMR and the petitioner is no longer the user of the mark MR. Further, the petitioner is doing business solely in rice varieties and not other products. The impugned mark MR clearly contains the word marks “Original Special Salt” and “Iodised Crystal Salt” . This clearly shows that the impugned mark is solely used in respect of Salt produced/marketed by the 1st respondent. 14. It is the contention of the learned counsel for the 1st respondent that the petitioner's brand M R GOLD is not a registered one and the holographic packaging for petitioner's products M R GOLD rice which contains the picture of petitioner's mill, name of the mill and picture of a Partner of Petitioner company would reveal that the products are not registered products.15. It is the specific case of the 1st respondent that even in the packaging of the petitioner, a disclaimer is given, whereby, the petitioner voluntarily waives all 13/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024enforceable rights over the mark. Therefore, the petitioner cannot claim any relief concerning the trademark M R GOLD.16. In response to the above contention, the learned counsel for the petitioner submitted that as per the Notification issued for GST Actionable Claim on branded food products by the Ministry of Finance, Government of India, for the brand registered as on 15.02.2017 under the Trademarks Act, 1999, it shall be deemed to be a registered brand for the purpose of levy of 5% GST, irrespective of whether or not such brand is subsequently deregistered. Therefore, disclaimer is given by the Petitioner only to avoid unnecessary litigation and this by itself, will not restrain the petitioner from claiming that they are the prior user. 17. Learned counsel appearing for the 1st respondent has relied upon the following judgment, in support of his submissions:-(i) PARAKH VANIJYA PRIVATE LIMITED VS. BAROMA AGRO PRODUCT AND OTHERS, reported in [(2018) 16 SCC 632]. Paragraph 6 of the said judgment read as follows:-14/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024“6. The appellant though claims exclusive right over the word ‘MALABAR’ since there is a disclaimer to the exclusive use of the word ‘MALABAR’, the appellant has no right over the exclusive use of the word ‘MALABAR’. The respondents have also inter alia brought on record the materials to show the registration of other goods under Class-30 with the word ‘MALABAR MONSOON’ granted in favour of Amalgamated Bean Coffee Trading Company Limited for Coffee, Cream, Coffee included in Class-30. The registration of the mark ‘MALABAR MONSOON’ under Class-30 also contains similar disclaimer of the word ‘MALABAR’. Likewise, the label ‘MALABAR COAST’ has been registered in Class-30 for Coffee, Tea, Cocoa, Sugar etc. in favour of Tropical Retreats Private Limited which again contains a similar disclaimer for the exclusive use of the word ‘MALABAR COAST’. Having regard to the materials placed on record, we are of the view that the High Court rightly held that the appellant cannot claim exclusive right over the use of the word ‘MALABAR’.” By referring to the above judgment, the learned counsel for the 1st Respondent argued that since there is a disclaimer, the petitioner cannot claim exclusive right over the trademark MR GOLD.18. Heard both sides and perused the records. From the records, it is clear that no issues are framed for consideration by this Court and the parties have not let in oral evidence.19. Though rival claims have been made by the petitioner and the 1st 15/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024respondent with regard to the mark “MR” as a word mark and as a device mark, the petitioner claims that they are the prior user and they produced invoices from 2008. Based on the invoices, a Commercial Court in Com.O.S.125 of 2024 has granted interim injunction in favour of the petitioner on 09.10.2025. However, according to the 1st respondent, the interim injunction was vacated and the suit is pending adjudication.20. Section 11 of The Trade Marks Act, reads as under:-“11. Relative grounds for refusal of registration.(1) Save as provided in section l2, a trade mark shall not be registered if, because of -(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.(2) A trade mark which -(a) is identical with or similar to an earlier trade mark; and(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later 16/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented -(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or(b) by virtue of law of copyright.(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12." 21. No doubt, as per the above provision, registration of trademark can be refused if the trademark sought to be registered is identical and similar to an earlier trademark. In the present case, the only question to be determined is whether the registered Trade Mark of the 1st respondent will prevail over the prior use of the unregistered mark by the petitioner. 22. The 1st respondent’s claim with regard to their registered Trade Mark will have a serious consequence if the petitioner is unable to produce any material evidence to show that they are the prior user. However, the petitioner is able to produce invoices showing usage of the trademark MR GOLD by the predecessor of the petitioner from 2008 and by the petitioner from 2017. That apart, the 1st 17/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024respondent had not denied the fact that they were in business relationship with the petitioner as a distributor of the petitioner’s product M R GOLD rice., which by itself is sufficient to establish the prior usage of the trademark M R GOLD by the petitioner.23. The Petitioner has further bolstered their assertion of continuous commercial use by submitting the abovesaid invoices which lend strong support to the Petitioner's claim of active trademark usage. Given the lack of corroborative evidence on the side of the 1st respondent, this Court finds that the Petitioner's documented and sustained use of the trademark “M R GOLD” since 2017 clearly establishes them as the prior user. 24. It is to be noted that, though the impugned Trade Mark in the name of the 1st respondent is a registered trademark, it is deceptively similar to the unregistered mark of the petitioner and there is likelihood of association with the earlier mark of the petitioner. Consequently, the registration of an identical mark in the name of 1st Respondent is untenable, as it is likely to deceive the public or cause confusion, thus contravening the principles intended to protect consumers, 18/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024set forth in the Trademarks Act. As observed by the Hon'ble Supreme Court in the judgments cited supra, the dishonest adoption of somebody else's trade mark and trying to ride on the goodwill created by the competitor who entered the market prior in time must be discouraged.25. In view of the above, the Original petition stands allowed. The 2nd Respondent is directed to remove the impugned trademark under registration No.5956431 in class 30 from the Register. No costs. 16.12.2025nvsriTo1.MR Enterprises 93/1, APMC Yard Block A 3rd Cross Mysore Karnataka 570025 India2.The Registrar of Trademarks Anna Salai, Guindy Industrial Estate SIDCO Industrial estate Guindy, Chennai, Tamil Nadu-600032.19/20 https://www.mhc.tn.gov.in/judis O.P.(T.M.)57 of 2024 N.SENTHILKUMAR, J.N.SENTHILKUMAR, J.nvsriO.P.(T.M.) 57 of 202416.12.202520/20