The petitioner, a well-established business conglomerate, sought rectification of the trademark register by removing the respondent’s registered mark (Registration No. 2778255) in Class 23, arguing that it was deceptively similar to the well-known “RPG” brand owned by the petitioner. The petitioner invoked Sections 47 and 57 of the Trade Marks Act, 1999, contending that the respondent’s trademark was wrongly registered and ought to be cancelled to prevent consumer confusion and dilution of the petitioner’s established goodwill.
RPG Enterprises Limited, founded in 1979 by the renowned industrialist R. P. Goenka, has evolved into a major conglomerate with diverse business interests spanning multiple industries, including infrastructure, information technology, pharmaceuticals, energy, e-commerce, and plantations. The petitioner has been consistently using the “RPG” trademark for decades, both as a corporate identity and as part of various business ventures under the RPG Group umbrella. The petitioner claimed that “RPG” had acquired significant goodwill and reputation, not only in India but also internationally. To establish its proprietary rights, the petitioner cited multiple trademark registrations for the “RPG” mark across various classes and demonstrated its extensive use in branding, advertising, and promotional materials.
The dispute arose when the petitioner discovered that the respondent had registered and was using the “RPG” mark in Class 23 for polyester staple fiber. Initially, the petitioner issued a cease-and-desist notice to the respondent on October 6, 2017, demanding that it stop using the “RPG” mark. The respondent did not reply, leading the petitioner to believe that the matter had been resolved. However, in August 2018, the petitioner discovered that the respondent had secured a registered trademark for “RPG”, prompting it to initiate rectification proceedings.
The petitioner argued that the respondent had no legitimate claim to the mark, as the petitioner’s use of the brand predated the respondent’s registration by several decades. Furthermore, the petitioner contended that the respondent’s registration violated Sections 11, 12, and 18 of the Trade Marks Act, 1999, as it was likely to cause confusion among consumers and unfairly benefited from the goodwill associated with the petitioner’s brand. The petitioner also highlighted that its mark had been declared a “well-known trademark” by the Bombay High Court in RPG Enterprises Limited vs Riju Ghoshal & Anr.
The respondent, in its defence, argued that the rectification petition was not maintainable, as the petitioner was not an “aggrieved party” under the Trade Marks Act. It further claimed that its trademark was sufficiently distinct from the petitioner’s, incorporating unique colour schemes, lettering styles, and design elements that made it visually distinguishable. The respondent justified its use of “RPG” by asserting that the letters represented the initials of its founder, Rajendra Prasad Gupta and that it had adopted the mark in good faith. It also contended that its products, polyester staple fiber, were entirely different from those offered by the petitioner under the “RPG” brand, negating any potential confusion.
The Delhi High Court analysed the competing marks and found that the dominant and essential feature of both was the term “RPG.” The court observed that when a consumer encounters the respondent’s mark, they are likely to remember only the “RPG” element, which forms the core of the petitioner’s brand identity. Citing South India Beverages Pvt. Ltd. vs General Mills Marketing Inc. & Anr., the court reiterated that while trademarks must be considered in their entirety, the dominant feature of a mark plays a critical role in determining deceptive similarity. Since “RPG” was the dominant element in both marks, the court concluded that consumer confusion was inevitable.
The court further emphasised that the petitioner had been using the “RPG” mark since 1979 and had obtained multiple trademark registrations, including the earliest registration dating back to April 8, 1999, under Class 12. Additionally, the petitioner had invested significantly in brand promotion, making the “RPG” mark widely recognised. Given this extensive and longstanding use, the court found that the petitioner’s rights in the mark were firmly established.
The court also dismissed the respondent’s argument that “RPG” merely represented the initials of its founder. It relied on Montari Overseas Ltd. vs Montari Industries Ltd., where it was held that while individuals may trade under their own names, they must do so in good faith and not in a manner that exploits the goodwill of an existing brand. Since the petitioner had already built a strong reputation around the mark “RPG”, the respondent’s adoption of the same mark could not be deemed honest or bona fide.
Another crucial issue examined by the court was whether the petitioner’s well-known trademark status entitled it to protection beyond its registered classes. The court referred to Daimler Benz Aktiengesellschaft & Anr. vs Hybo Hindustan, and Sony Kabushiki Kaisha vs Mahaluxmi Textile Mills, both of which reinforced that well-known trademarks enjoy broader protection, even against use in unrelated industries. Given that the petitioner’s mark had been declared well-known and had gained secondary meaning, the court held that it was entitled to protection across different classes, including Class 23, under which the respondent had registered its mark.
The court also noted that the respondent’s registration was obtained through misrepresentation. It found that the respondent had falsely claimed use of the mark since April 1, 2011, but had provided no substantial evidence to support this assertion. The earliest document showing the respondent’s use of the mark dates back only to March 2, 2013. The court ruled that misrepresenting the date of first use amounted to fraud on the Trade Marks Registry, warranting cancellation of the registration.
In its final ruling, the Delhi High Court held that the respondent’s registration of “RPG” was liable to be expunged. The court directed the Trade Marks Registry to cancel Registration No. 2778255 of the mark 
and issue an appropriate notification to that effect. The court also reaffirmed that once a trademark is declared well-known, it must be protected comprehensively to prevent dilution and unfair advantage.
