OLIVE Trademark Case: Delhi High Court on Section 11 & Prior User Rights

Summary

In the case of Seema Goel v. The Registrar of Trade Marks, the Delhi High Court upheld the refusal of registration of the mark OLIVE in Class 35 under Section 11(1) of the Trade Marks Act, 1999. The Court held that the applied mark was deceptively similar to earlier registered marks containing the word OLIVE in Class 25 and that there was likelihood of confusion. The Court also held that the appellant failed to establish sufficient evidence of prior use and could not claim the benefit of being an earlier trademark under Section 11.

Background

Seema Goel (The appellant) filed a Trademark Application No. 4550705 on 30.06.2020 in Class 35 for retail services relating to fashion jewellery, ladies bags, purses, and garments, claiming use from 19.06.2019.

The Registrar issued an examination report objecting under Section 11(1) of the Trade Marks Act, 1999 on the ground that the applied mark was identical or similar to two earlier registered marks in Class 25 for clothing, footwear, and headgear.

After hearings and written submissions, the Registrar refused registration on 12.08.2025 holding that the marks were deceptively similar and that there was likelihood of confusion. The appellant challenged the refusal before the High Court under Section 91 of the Act.

Questions Before the Court

1. 1. 1. Whether the applied mark was deceptively similar to the cited marks under Section 11(1) of the Trade Marks Act, 1999?
      2. Whether similarity of goods and services between Class 25 goods and Class 35 retail services would result in likelihood of confusion?
      3. Whether the appellant established prior user rights sufficient to override the cited registered marks?
      4. Whether the appellant could claim to be the proprietor of an earlier trademark under Section 11(1)?
      5. Whether prior registration of the mark in other classes entitled the appellant to automatic registration in Class 35?

Arguments by the Appellant

The appellant argued that:

• • • The applied mark and the cited marks were visually, structurally, and phonetically different. It was submitted that an average consumer with imperfect recollection would be able to distinguish the marks.
    • Her application was in Class 35 for retail services, whereas the cited marks were registered in Class 25 for clothing and footwear.
    • She adopted and used the mark from 19.06.2019. She submitted that the first cited mark was filed on a proposed to be used basis and the second cited mark claimed use only from 01.11.2019. She relied on Supreme Court judgments to argue that prior user rights override subsequent registration.
    • Since she was the prior user, her mark should be treated as an earlier trademark for the purpose of Section 11(1).
    • She had already secured registration of the mark in Classes 18 and 25 and therefore registration in Class 35 ought not to have been refused.

Trademark Office’s Arguments

The Registrar  of Trademarks argued that:

• • • The dominant and essential feature of the applied mark was the word OLIVE, which was identical to the dominant feature of the cited marks. Minor additions such as taglines or design elements did not remove deceptive similarity.
    • Retail services relating to clothing and fashion accessories are closely connected to goods in Class 25 and consumers may assume a common trade origin, thereby increasing likelihood of confusion.
    • The appellant failed to produce sufficient evidence to establish extensive and continuous use or acquired distinctiveness prior to the cited registrations.
    • In absence of strong evidence, prior user rights could not defeat valid registrations.
    • The definition of earlier trademark under the Explanation to Section 11(4) refers to earlier filed applications or registrations, and not merely prior use.
    • Each application must be examined independently and registration in one class does not create an automatic right to registration in another class.

Court’s Analysis

• • • The court observed that the dominant part of the appellant’s mark was OLIVE. According to the court, when compared with the cited marks, there was clear visual and phonetic similarity.
    • The court relied on the principle that phonetic similarity constitutes an important index in determining misleading similarity. Addition of taglines or artistic elements does not sufficiently distinguish marks where the dominant word is identical.
    • The court also observed that retail services relating to garments and fashion accessories are closely connected with clothing and footwear, therefore trade connection between goods and services was a relevant factor in assessing likelihood of confusion.
    • According to the court, even if marks are applied in different classes, conflict may arise where services are complementary to goods covered by earlier marks.
    • The court stated that while prior user rights are superior to rights of a registrant, the appellant failed to establish sufficient evidence of continuous and extensive use prior to the cited registrations.
    • The court observed that most documents on record were post registration of the cited marks, except one document of April 2019. The court held that this was insufficient to establish acquired distinctiveness or superior rights.
    • The court stated that the expression earlier trademark is defined in the Explanation to Section 11(4) and refers to earlier filed applications or registrations and the appellant’s mark did not fall within this definition and therefore could not be treated as an earlier trademark under Section 11(1).
    • The court also noted that each trademark application must be tested independently and registration in one class does not grant a vested or automatic right to registration in another class.

Findings

The court held that:

1. 1. 1. The applied mark was deceptively similar to the cited marks.
      2. The goods and services were similar and overlapping, leading to likelihood of confusion.
      3. The appellant failed to establish superior prior user rights.
      4. The appellant could not claim the benefit of being an earlier trademark under Section 11.
      5. Registration in other classes did not entitle the appellant to registration in Class 35.

Accordingly, the court found no infirmity in the refusal order dated 12.08.2025 and dismissed the appeal.

Case Citation: Seema Goel v. The Registrar of Trade Marks, C.A. (COMM.IPD-TM) 81/2025, decided on 29 January 2026, Delhi High Court. Available on: https://indiankanoon.org/doc/153520778/

Authored by Gaurav Mishra, BananaIP Counsels