Beyond Registration: Rectification as a Remedy Against Unreliable Prior Use Claims
In allowing rectification and directing removal of the impugned mark from the Register, the Registry reaffirmed a foundational principle of Indian trademark law: claims of prior use must be supported by credible, contemporaneous and consistent evidence
The decision of the Delhi Trade Marks Registry in Cai Zhenghao v. Dinesh Kumar trading as Jai Laxmi Marketing serves as an important reminder that registration alone cannot cure an evidentiary record lacking credibility. In allowing rectification and directing removal of the impugned mark from the Register, the Registry reaffirmed a foundational principle of Indian trademark law: claims of prior use must be supported by credible, contemporaneous and consistent evidence.
The dispute concerned the mark “VGR” in Class 8. The Petitioner, Mr. Cai Zhenghao, is the global proprietor of the mark “VGR” and various VGR formative marks across multiple jurisdictions. The earliest applications for the mark were filed in China in 2012 in Classes 11 and 8 respectively, followed by numerous registrations worldwide. In India, the Petitioner had secured registrations for the mark and formative variants since July 19, 2018 and had been using the mark in the Indian market since at least 2019.
The impugned mark was applied for in December 2022 with a claim of user dating back to September 1, 2016. Although the Petitioner had initially opposed the application, the opposition was refused and the mark proceeded to registration. The rectification proceedings that followed therefore assumed significance, particularly because they arose after the opposition mechanism had already failed to prevent registration.
At the core of the rectification petition was the Registered Proprietor’s assertion of prior and continuous use since 2016. Upon scrutiny of the evidentiary record, the Registry identified several material inconsistencies that substantially undermined the credibility of this claim. One of the principal discrepancies related to the addresses reflected in the documentary evidence. While the trademark application disclosed one business address, the invoices relied upon as evidence of use reflected a materially different address. No satisfactory explanation or supporting material was produced to reconcile this inconsistency. The Registry viewed this contradiction as directly affecting the reliability and credibility of the evidence relied upon to establish use.
The order also closely examined the statutory irregularities appearing in the invoices and business documentation placed on record. The Registry noted inconsistencies relating to GST/VAT details and corresponding statutory registrations relied upon by the Registered Proprietor. The evidentiary record further suffered from the absence of contemporaneous supporting material corresponding to the claimed period of use. Certain invoices were also found lacking in basic commercial particulars, including buyer information and independent corroboration.
An additional factor that appears to have weighed with the Registry was the striking similarity between the sales figures relied upon by the Registered Proprietor and those disclosed in another trademark proceeding involving a different proprietor. The Registry observed that these similarities raised serious doubts regarding the credibility of the evidence placed on record. Collectively, these inconsistencies led the Registry to conclude that the Registered Proprietor had failed to discharge the burden of proving bona fide and continuous prior use.
Importantly, the decision goes beyond a factual determination on prior use. The order implicitly highlights a broader institutional concern: material inconsistencies in evidentiary records may sometimes escape meaningful scrutiny during examination and opposition proceedings, ultimately necessitating rectification proceedings to preserve the integrity of the Register. The Registry noted that the irregularities in the documentary record had not been adequately appreciated at earlier stages, thereby resulting in registration of a mark that could not ultimately withstand scrutiny.
This aspect of the decision is particularly noteworthy. Trademark opposition proceedings are often treated as the principal checkpoint for assessing rival rights and evidentiary claims. However, the present case demonstrates that rectification remains an equally vital corrective mechanism where registrations have been obtained despite evidentiary deficiencies. The decision reinforces that rectification proceedings are not confined to technical defects on the Register but may also extend to situations where the very foundation of the registration, including claims of prior use, is shown to be unreliable.
From a practical perspective, the ruling carries important lessons for trademark proprietors. Prior use claims cannot rest merely on isolated invoices or self-serving assertions. Documentary evidence must form part of a coherent and consistent commercial narrative. Further, statutory records such as GST and VAT registrations may assume considerable evidentiary significance in assessing the authenticity of commercial use claims. The decision ultimately reinforces a simple but significant proposition: the sanctity of the Register depends not merely upon procedural compliance, but upon the credibility of the evidence on which proprietary claims are founded.
Disclaimer – The views expressed in this article are the personal views of the authors and are purely informative in nature.