Prior user rights prevail over subsequent registration, reiterates court

Summary

In the case of Pushpdeep Cotex Private Limited vs. Anoop Agarwal & Anr., the Delhi High Court cancelled the registered trademark label of the Respondent for being deceptively similar to the Petitioner’s earlier artistic label. The Court held that the Respondent’s label slavishly copied the Petitioner’s artistic features and that prior user rights prevailed over subsequent registration under the Trade Marks Act.

Background

Pushpdeep Cotex Private Limited filed a petition under Section 57 of the Trade Marks Act, 1999 seeking rectification of the trademark register by cancelling the label registered by Anoop Agarwal (Respondent No. 1) under Registration No. 5925080 dated 06.05.2023 in Class 26. The Petitioner had been using the trademarks ‘Rani’, ‘Rachna’ and artistic labels since 1985, and specifically since 2007 in respect of saree falls and blouse textile pieces. The dispute arose when the Respondent began using a label under the mark ‘Ragini’ that was alleged to be deceptively similar to the Petitioner’s label.

Questions Before the Court

• • • Whether the Respondent’s registered label mark ‘Ragini’ was deceptively similar to the Petitioner’s prior labels ‘Rani’ and ‘Rachna’.
    • Whether the Respondent’s label copied the artistic work of the Petitioner.
    • Whether the Petitioner, as a prior user, was entitled to cancellation of the Respondent’s registered mark under Section 57 of the Trade Marks Act.

Petitioner’s Arguments

• • • The Petitioner had adopted and used the labels for ‘Rani’ and ‘Rachna’ since 2007.
    • The artistic features, writing style, colour scheme, taglines, and overall trade dress of the Respondent’s label were copied from the Petitioner’s label.
    • The Respondent’s label was likely to cause confusion and amounted to copyright infringement and violation of the Trade Marks Act.

Respondent’s Arguments

• • • The Respondent adopted the label ‘Ragini’ in 2022 honestly and in good faith.
    • The Trade Marks Registry granted registration without objections.
    • The mark ‘Ragini’ was visually, phonetically, and conceptually different from ‘Rani’ and ‘Rachna’.
    • There was no likelihood of confusion or deception.

Court’s Analysis

The court observed that the Respondent had slavishly copied the Petitioner’s artistic label. It noted five specific similarities between the two labels:

1. 1. 1. Identical font and writing style for the mark.
      2. Use of identical tagline “SMILE POLYSTER SAREE FALL”.
      3. Same colour combination of red and yellow.
      4. Similar placement and type of images (woman’s image on the right side).
      5. Use of identical taglines such as “New Pack” and “A QUALITY PRODUCT FROM THE HOUSE OF…”.

The court said these similarities made the two labels nearly identical in visual impression. It held that the Respondent’s minor difference in name (‘Ragini’ vs. ‘Rani’) did not remove the likelihood of confusion.

The court relied on Colgate Palmolive Co. v. Anchor Health and Beauty Care, observing that substantial imitation of trade dress and colour combination could mislead consumers even if trade names differ.

The court also cited S. Syed Mohideen v. P. Sulochana Bai and Neon Laboratories Ltd. v. Medical Technologies Ltd., reaffirming that prior user rights override subsequent registrations. According to the court, under Sections 34 and 28 of the Trade Marks Act, registration is subject to the rights of the prior user.

It held that the Respondent adopted the impugned label with dishonest and mala fide intent and could not retain the benefits of registration.

Conclusion

The court found that the Petitioner had proved prior and continuous use of the trademark labels since 2007. The Respondent’s label was a copy of the Petitioner’s label in all material aspects, and the Respondent’s trademark registration No. 5925080 dated 06.05.2023 was therefore liable to be cancelled. Accordingly, the Court directed the registry to remove the registration from the Trade Marks Register within four weeks.

Case Citation: Pushpdeep Cotex Private Limited vs. Anoop Agarwal & Anr., C.O. (COMM.IPD-TM) 108/2025, decided by the Delhi High Court on 24 September 2025. Available on: https://indiankanoon.org/doc/59637154/