The dispute before the Madras High Court revolves around the trademark ‘STAR’. The Petitioner, Star Plastics filed the rectification petition to cancel the registration for the mark


in class 11 in the name of the Respondent, Sajeev Antony. This note discusses the contentions raised by the parties and the findings of the High Court while deciding the cancellation petition.

The Petitioner in the rectification petition contends:

  1. They started operations as a partnership firm under the name and style of ‘Star Plastics’ in June 1983 in Kerala.
  2. They are engaged in the manufacture of PVC pipe fittings, sanitary items etc.
  3. They have filed voluminous set of invoices, bills and advertisements issued in leading news dailies in the state of Kerala to substantiate their long and extensive use.
  4. They have also filed a civil suit before the Additional District and Sessions Judge, Thrissur, Kerala to restrain the Respondent from using the registered mark, ‘STAR’ and the five pointed ‘STAR’ device mark or any other deceptively similar mark.
  5. They are the registered proprietor of several STAR marks in classes, viz., 1, 9, 11, 17 & 19, such as; and 
  6.  manufacturing products for the past several decades using the registered marks.
  7. The Respondent has entered manufacturing only in 2016 and has dishonestly adopted ‘STAR’ and there is lot of confusion in Kerala where the parties are predominantly carrying on business.

Respondent countered the contentions:

  1. The petition is not maintainable as the person who signed the petition on behalf of the petitioner, Star Plastics, was not authorized to do so.
  2. The Petitioner’s and the Respondent’s marks are variations of the ‘STAR’ device and there are over 100 trademarks incorporating ‘STAR’ which are registered in class 11. Thus, the Petitioner cannot claim any monopoly over a commonly used word/symbol.
  3. STAR is a laudatory term and as the Respondent is trading under the name S Star Trading, there will be no confusion among the trade and public.
  4. The Petitioner has not provided any justification for adopting the term ‘STAR’ and lacking any rightful claim, is not entitled to any legal remedy.

The Court after considering the pleadings, arguments, documents and case laws made the following findings:

  1. In the instant case both Petitioner and Respondent have registrations comprising the word ‘STAR’. Admittedly, ‘STAR’ is a common word and symbol, thus, neither the Petitioner nor the Respondent can claim exclusive rights over it as a trade name or device. Both parties failed to explain why they chose ‘STAR’ but since neither can monopolize its use, the reason for its adoption is irrelevant. The main issue is to determine whether the Respondent’s device mark is similar to the Petitioner’s.
  2. Prior Use and Distinctiveness: The court found that Star Plastics had been using the ‘STAR’ mark since the 1980s and had established prior use and distinctiveness of its mark.
  3. Deceptive Similarity: The court held that the Respondent’s mark, which prominently features ‘STAR’ with ‘Trading Co.’ in small print, is deceptively similar to the Petitioner’s mark.
  4. Bona Fide Adoption: The court rejected the Respondent’s argument that their adoption of the ‘STAR’ mark was bona fide. The court noted that the Respondent’s use of the mark was not honest and was likely to cause confusion in the market. The Respondent’s contention that adoption is bonafide as ‘Star Trading’ is their trading name ought not to succeed as the nearly invisible ‘Trading Co’ suggests an intent to emphasize ‘STAR’ alone, exposing a lack of bona fides in the adoption of the mark.
  5. Dominant element: The court held that dominant element in the Petitioner’s mark is the word ‘STAR’. The Petitioner registered the mark in Class 17 in 1988 and in Class 11 in 1999, whereas the Respondent began manufacturing in 2016. It is a settled legal position that the marks should be compared as a whole. The marks viewed side by side are certainly confusing to a consumer and there is every likelihood of the similarity of the dominant features weighing in the minds of the consumers, leading to the Respondent’s goods being passed off as that of the Petitioner.


Considering the above findings the Court allowed the rectification petition filed by the Petitioner and cancelled the Respondent’s registration for the mark under registration no. 3933822 in Class 11.


Comment

The Court found that while neither party could claim exclusive rights to the common term ‘STAR’ the Petitioner demonstrated prior use and distinctiveness in its mark. The Respondent’s mark, with ‘Trading Co’ in barely visible print, was seen as lacking in good faith and likely to cause confusion among consumers, thus justifying the cancellation.