Delhi High Court: In a rectification petitions filed under Sections 47 and 57 of the Trade Marks Act, 1999 (‘the Act’) seeking rectification/cancellation of registrations of the impugned mark ‘RAPIDO’, Amit Bansal, J., stated that as evident from the aforesaid, the impugned mark was identical with the petitioner’s RAPIDO marks in relation to identical / similar goods and services. Further, the target consumers of the competing parties were also identical. Thus, the Triple Identity Test, i.e., the existence of an identity / similarity between the respective marks, goods/ services and trade channels was satisfied in the present petitions.
The Court stated that the continuation of the registrations of the impugned mark in Respondent 1’s name in the Register of Trade Marks was in contravention of the provisions of Section 11 of the Act and was liable to be cancelled under the provisions of Section 57 of the Act. Thus, the Court directed the Trade Mark registry to remove the impugned mark ‘RAPIDO’ bearing trade in Respondent 1’s name from the Register of Trade Marks.
Background
The petitioner was incorporated in the 2015 and was engaged in the business of providing innovative bike-taxi solutions under the marks ‘RAPIDO’ and ‘
’ (‘RAPIDO marks’). As on date, the petitioner has a pan-India presence and was present in 24 states and 117 cities in India. The petitioner registered its domain www.rapido.bike on 23-09-2015 and primarily operates through its mobile application which was launched on 30-09-2015.
The petitioner’s application for customer was downloaded more than 50 million times from Google Play Store and had an average rating of 4.5 from over 2.1 million reviewers. Since its incorporation, the petitioner had earned tremendous goodwill and reputation under the RAPIDO marks among its customers.
The petitioner was aggrieved by the fact that Respondent 1 had obtained registration of the word mark ‘RAPIDO’ in classes 39, 12, 25 and 42, which were the subject matter of present petitions.
Analysis, Law, and Decision
The Court stated that the perusal of the records showed that the petitioner was the prior adopter and user of well-reputed RAPIDO marks and its earliest registration for the mark ‘
’ in Class 39 dated back to 2017. On the contrary, Respondent 1 obtained registration for the impugned mark with effect from 02-03-2020 on a ‘proposed to be used’ basis.
The Court stated that as evident from the aforesaid, the impugned mark was identical with the petitioner’s RAPIDO marks in relation to identical / similar goods and services. Further, the target consumers of the competing parties were also identical. Thus, the Triple Identity Test, i.e., the existence of an identity / similarity between the respective marks, goods/ services and trade channels was satisfied in the present petitions.
Thus, the Court stated that the impugned mark was likely to cause confusion and deception among the consumers who were ordinary persons of average intelligence and imperfect recollection, especially as the petitioner had been using the RAPIDO marks since 2015 and had acquired immense goodwill and reputation thereunder. It was clear that the impugned mark was been adopted by Respondent 1 dishonestly to trade upon the goodwill and reputation of the petitioner under the RAPIDO marks and to associate itself with the petitioner.
Therefore, the continuation of the registrations of the impugned mark in Respondent 1’s name in the Register of Trade Marks was in contravention of the provisions of Section 11 of the Act and was liable to be cancelled under the provisions of Section 57 of the Act. Thus, the Court directed the Trade Mark registry to remove the impugned mark ‘RAPIDO’ bearing trade in Respondent 1’s name from the Register of Trade Marks.
[Roppen Transportation Services (P) Ltd. v. Nipun Gupta, C.O.(COMM.IPD-TM) 80 of 2024, decided on 15-01-2025]
Advocates who appeared in this case :
For the Petitioner: Aishwarya Kane, Kruttika Vijay and Chhavi Tokas, Advocates
Buy Trade Marks Act, 1999 HERE
