Summary
The Delhi High Court ordered the cancellation of Formula One Licensing BV’s F1 trademark in Class 36 due to non-use in India, following a rectification petition by Epifi Technologies Pvt. Ltd. Epifi’s adoption and goodwill of the FI MONEY mark in financial services conflicted with Formula One’s unused registration, leading to legal proceedings. The Court found that Formula One failed to establish use or bona fide intent and did not respond to the petition, effectively admitting Epifi’s claims. The verdict emphasized that actual use is fundamental to maintaining trademark rights in India. This ruling highlights that unused trademark registrations are vulnerable to cancellation.
The Delhi High Court recently ordered the cancellation of the F1 trademark bearing Registration No. 1988403 in Class 36, registered by Formula One Licensing BV, due to non-use in India following a rectification petition filed by Epifi Technologies Pvt. Ltd.
Background of the Rectification Petition
Epifi Technologies Pvt. Ltd., a leading Indian fintech company known for its financial mobile banking app, adopted the mark FI MONEY as its brand name in February 2021. Although Epifi filed Trademark Application No. 5037769 for the mark FI MONEY in class 36, it was opposed by Formula One, relying on its prior registration for the mark ‘F1’ in class 36.
Aggrieved by the hindrance to Epifi’s registration, the rectification petition was filed before the Delhi High Court in February 2024, seeking cancellation of the registration of the trademark F1. Between March and December 2024, both parties explored the possibility of settlement, during which Formula One withdrew its opposition. However, since the parties were unable to reach any settlement, Formula One was granted four weeks’ time to file a reply.
Key Allegations by Epifi
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- The FI MONEY mark has gained significant goodwill in India since its use and adoption in February 2021. Whereas, Formula One’s F1 mark filed on 2nd July 2010 on a proposed to be used basis and had never been used in India for financial services.
- Formula One did not secure approvals or licenses from Indian regulators to provide financial services, indicating a lack of bona fide intent to use the mark.
- The continued presence of the F1 mark was obstructing Epifi’s trademark application and branding strategy.
Proceedings and Findings
Despite receiving notice, Formula One did not appear in Court, nor did it file any reply to the petition as instructed by the Court. Thus, while disposing of the petition, the Court made the following findings:
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- Non-appearance and lack of denial meant Epifi’s claims were effectively admitted, relying on the case DORCO Co. Ltd. v. Durga Enterprises and Another.
- While relying on the provision of Section 47(1)(b) of the Act, it was observed that Formula One did not file any evidence of use since its registration in 2010.
- Formula One’s failure to obtain necessary approvals to offer financial services also indicated a lack of bona fide intention, supporting grounds under Section 47(1)(a).
- The Court acknowledged that ‘FI MONEY’ had built a strong identity in India since its adoption in February 2021 in relation to financial services.
Verdict and conclusion
The Court ruled in favor of Epifi, ordering that the F1 trademark (Reg. No. 1988403) in Class 36 be removed from the Register of Trade Marks. It also directed the Registry to notify the Trade Marks Registry for necessary compliance.
This ruling underscores the principle that actual and bona fide use remains the cornerstone of maintaining trademark rights in India, and trademark registrations without genuine use can be challenged and struck down.
Citation: Epifi Technologies Private Limited vs Formula One Licensing Bv & Anr., High Court of Delhi (15 April, 2025) [C.O. (COMM.IPD-TM) 20/2024 with I.A. 2914/2024 and I.A. 2915/2024] https://indiankanoon.org/doc/50444514/
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