Summary
A trade mark rectification petition was filed by GM Modular Pvt. Ltd. under Section 57 of the Trade Marks Act, 1999 seeking removal of the ‘GMW’ registration in Class 11. Prior adoption and continuous use of the ‘GM’ marks since 1999, along with existing registrations across multiple classes, were relied upon. It was held that prior user rights override a subsequent user’s registration and that the impugned mark was wrongly remaining on the Register of Trade Marks. The Registrar of Trade Marks was directed to remove the impugned mark and compliance was directed to be communicated to the Trade Marks Registry.
Background of the dispute
The Petitioner, GM Modular Pvt. Ltd., owner of the ‘GM’ trademarks has been using the mark for a wide range of electrical goods, electrical switches, accessories, appliances, and electronic components since 1999.
In August 2024, during a routine survey of the online records of the Trade Marks Registry, GM Modular came across a registration for ‘
/GMW’ (“Impugned Mark”), in Class 11 bearing Application No. 1978669 covering electric fans, blowers, heaters and parts and accessories. Respondent No.1, an entity trading as Grand Metal Works (Mumtaz Ahmed) had filed the application on 11.06.2010, claiming use since 01.04.2007.
Aggrieved by the similarity of the Impugned Mark, GM Modular filed a rectification petition before the Delhi High Court under Section 57 of the Trade Marks Act, 1999, seeking removal of the registration.
Proceedings before the Court:
Despite service on Respondent No.1, none appeared on its behalf. Accordingly, Respondent No.1 was proceeded ex-parte, and Respondent No.2, the Registrar of Trade Marks, acted as a formal party to comply with any directions of the Court.
GM Modular contended that:
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- It is the prior adopter and user of the ‘GM’ trademarks since 1999.
- It owns several trademark registrations across Classes 6, 7, 9, 11, 17, 21, 37 and 38.
- Its artistic logo is also protected under copyright.
- The Impugned Mark “GMW” is visually, structurally, phonetically, and conceptually similar to GM.
- Both parties operate in identical and allied goods, increasing the likelihood of confusion.
- The Respondent No.1’s adoption was dishonest and intended to ride on GM Modular’s significant goodwill.
- The Delhi High Court, in GM Modular Pvt. Ltd. v. Mayur Electromeck Pvt. Ltd., had earlier directed rectification by deleting the Mark ‘GMW label’ registered under Trade Mark No. 1332839 in Class 9 from the Register of Trade Marks.
Analysis and Findings:
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- GM Modular’s prior use rights, registrations and continuous use of the GM marks were taken into consideration.
- The Court applied the settled principle that a prior user’s rights override the rights of a subsequent user even if the latter’s Mark is registered.
- Respondent No.1’s subsequent adoption for identical goods was held to be wrongly remaining on the Register of Trade Marks, warranting rectification under Section 57 of the Act.
Conclusion:
The Court directed Respondent No.2 to remove the Impugned Mark from the Register of Trade Marks, disposing of the matter. Further, a copy of the order was directed to be sent to the Trade Marks Registry for compliance.
Citation: Gm Modular Pvt. Ltd vs Mumtaz Ahmed & Anr on 17 January, 2026, Delhi High Court, C.O. (COMM.IPD-TM) 176/2024 & I.A. 39130/2024. Available at: https://indiankanoon.org/doc/84273958/.
Authored by Ms. Benita Alphonsa Basil.