Can a 29-year-old trademark be cancelled for “non-use” despite active commercial invoices?

This question was squarely examined by the High Court of Delhi while deciding a rectification petition under the Trade Marks Act, 1999.

Facts relating to the Issue

• The Petitioner, a China-based technology company, sought rectification of the trademark “LARK” registered in Class 42.
• The Respondent, an Indian engineering company, held registrations of “LARK” across multiple classes since 1994, including Class 42 for design and development of computer hardware and software.
• The challenge was limited to removal of Class 42 services, alleging non-use and false claim of user date.

Arguments of the Appellant

• Registration in Class 42 was obtained without bona fide intention to use.
• Customisation of software within machinery does not amount to commercial software services.
• Invoices relied upon were post-2016, contradicting the claimed user date of 1994.
• Monopoly over a broad class without actual standalone use is impermissible.
• Reliance placed on Vishnudas Trading and Nandhini Deluxe to seek restriction of registration.

Arguments of the Respondent

Software and hardware form an integral part of poultry and cattle feed machinery.

Services are provided in conjunction with goods, through the same trade channel.

Continuous commercial use was evidenced through invoices, promotional material and technical documentation.

The proviso to Section 47(1) protects such associated use.

Expansion of services is a natural business progression.

Decision of the Court

• The rectification petition was dismissed.
• The registration of “LARK” in Class 42 was upheld.

Reasons for such Decision

The Court held that:

• Software and hardware services were inseparable from the machinery sold.
• Source, trade channel, and functional use were common.
• Such services qualify as “services of the same description” under the proviso to Section 47(1).

The Respondent successfully proved prior use, at least from 2016, which was sufficient against the Petitioner’s 2018 proposed-use application.

No evidence of false user claim or mala fide registration was established.

Applicability of Judgment

Crucial precedent for:

• Trademark owners offering bundled goods + services
• Defending registrations where services are ancillary yet essential

Clarifies that standalone commercialisation is not mandatory if services are functionally connected.

Strengthens protection against mechanical rectification attempts in IP disputes.

Professional takeaway:

Trademark law protects commercial reality, not artificial compartmentalisation. If goods and services move together in business, the law will treat them together as well.

If you’re advising clients on trademark structuring, portfolio expansion, or rectification risks — this judgment is worth bookmarking.

Download the judgement – https://counselvise.com/corporate-law/judgements

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