Non-use for Five Years + Failure to Prove Use = Removal of Registered Mark under Section 47(1)(b) (Class 11)
1. Introduction
In Crompton Greaves Consumer Electricals Limited v. Wipro Enterprises Private Limited
(Madras High Court, decided on 16-12-2025), the petitioner (Crompton Greaves Consumer Electricals Limited)
sought rectification/removal of the respondent’s registered trademark “PREMIO” (Trade Mark No. 2222788,
claimed use from 20.10.2011; registration in Class 11) from the Register under Sections 47/57 of the Trade Marks Act, 1999.
The practical trigger was the petitioner’s plan to launch fans under “PREMION” (application filed on 25.12.2020),
which faced objection/citation due to the respondent’s prior registration for “PREMIO” in the same class.
The petitioner alleged the respondent’s mark was a “blocking” registration with no genuine commercial use for years.
The respondent (Wipro Enterprises Private Limited) resisted on the ground that the petitioner adopted “PREMION” in bad faith,
that “PREMIO” predated it by many years, and that mere non-use is not enough; it also raised a criminal-law-flavoured objection
citing alleged illegality of using a similar mark while a registration subsists.
Key Issues Framed by the Court (02.07.2024)
- Whether “PREMIO” was wrongly registered and liable to be removed under Section 47(1)(a) and 47(1)(b)?
- Whether the respondent commenced sale of goods under “PREMIO”?
- Whether the petitioner knowingly violated the respondent’s rights?
- Whether the respondent was entitled to “adopt” a trademark registered in favour of the petitioner during subsistence of registration?
2. Summary of the Judgment
The Madras High Court allowed the rectification petition and directed the Registrar of Trade Marks
to remove “PREMIO” (No. 2222788) from the Register, primarily on the ground of non-use
for a continuous period exceeding five years as contemplated under Section 47(1)(b).
The Court relied on the petitioner’s evidence (dealer affidavits stating they had not encountered “PREMIO” products in the market)
and the respondent’s complete failure to produce any documentary or oral evidence of use.
All issues were answered in favour of the petitioner; no costs were awarded.
3. Analysis
A. Precedents Cited
(i) Hardie Trading Ltd. Vs Addisons Paint & Chemicals
The petitioner cited Hardie Trading Ltd. Vs Addisons Paint & Chemicals ((2003) 11 Supreme Court Cases 92)
to anchor the governing structure of a non-use removal action. The Supreme Court there explained that, before removal for non-use,
the adjudicating authority must be satisfied of:
- the applicant’s status as a “person aggrieved”;
- non-use by the proprietor for a continuous period of at least five years and one month before the application;
- absence of special circumstances justifying non-use (onus on the proprietor).
This framework influenced the Madras High Court’s approach in two ways:
(a) it treated the petitioner’s inability to progress with “PREMION” because of the cited “PREMIO” registration as sufficient to
show the petitioner was aggrieved; and (b) it placed decisive weight on whether the respondent had proved
genuine use or any “special circumstances”—which it did not.
(ii) Powell's Trade Mark [Powell's Trade Mark, Re, (1894) 11 RPC 4 : 1894 AC 8 : 70 LT 1 (HL)]
Though appearing within the extract from Hardie Trading Ltd. Vs Addisons Paint & Chemicals, the House of Lords’
articulation of “person aggrieved” in Powell's Trade Mark [Powell's Trade Mark, Re, (1894) 11 RPC 4 : 1894 AC 8 : 70 LT 1 (HL)]
underpins the policy rationale: the register should not carry marks that ought not be there, especially where they constrain
others’ lawful commercial choices. This supports a liberal reading of standing when a mark’s presence
may limit legal rights of a trader in the same field.
The petitioner relied on DORCO Co. Ltd Vs Durga Enterprises and Another 2023 (SCC OnLine Del 1484), particularly
its discussion (drawing from IPAB practice) on pleadings and proof in non-use disputes. The Delhi High Court there noted that while
an applicant pleads non-use, the registered proprietor must specifically deny and meet that case; in the absence of
specific denial, non-use may be treated as effectively admitted in the circumstances discussed.
The Madras High Court’s reasoning aligns with the core direction of travel of DORCO:
once non-use is credibly asserted and supported, the proprietor must come forward with a concrete use-story (sales, invoices,
catalogues, advertisements, distribution evidence, etc.). Here, the respondent produced nothing, and the Court treated
that evidentiary vacuum as fatal.
(iv) Shell Transource Limited Shell International Petroleum Company Ltd
Shell Transource Limited Shell International Petroleum Company Ltd (2012 SCC OnLine IPAB 29) was referred to within the
extract quoted in DORCO, for the proposition that the onus of proving “non-user” begins with the pleader but the proprietor must
specifically meet and rebut that allegation. Even though the Madras High Court did not separately analyse Shell Transource,
the judgment’s outcome reflects the same practical litigation rule: non-use disputes are evidence-driven, and silence
or bare denials do not substitute for proof of market presence.
The respondent invoked State of UP Vs. Ram Nath, Partner, Panna Lal Durga Prasad, Kanpur ((1972) 1 SCC 130) to contend
that use of a mark can attract criminal liability, and to argue that the petitioner lacked locus or came with unclean hands.
The Madras High Court did not accept this as a bar to rectification. The petition before it was a register-correction
proceeding under Sections 47/57. The Court kept its focus on the statutory test for removal for non-use—whether the registered proprietor
had actually used the mark within the relevant period—and found against the respondent on evidence. In effect, the criminal-law
citation did not displace the civil/statutory inquiry into whether the mark deserved to remain on the Register.
B. Legal Reasoning
1) Section 47(1)(b): the decisive route—continuous non-use
The Court treated Section 47(1)(b) as the operative ground: whether the proprietor had used the mark up to three months before the
removal application and whether there had been a continuous five-year period of non-use from registration.
On facts, the Court accepted the petitioner’s evidence of market absence (dealer affidavits across India stating they had never
encountered “PREMIO” goods) and emphasised the respondent’s total failure to rebut this with any proof.
2) Evidence and burden in practice
Although the judgment does not undertake a long doctrinal burden-shifting discussion, it effectively applies a practical rule:
once the applicant produces material suggesting market non-existence, the registered proprietor must place affirmative evidence of use.
The respondent filed no supporting documents and led no oral evidence, which the Court treated as confirming non-use.
3) “Bad faith adoption” and infringement rhetoric did not defeat rectification
The respondent’s principal resistance was that the petitioner adopted “PREMION” despite knowing “PREMIO” was registered and that the petitioner
should have first sought cancellation before use. The Court did not treat these submissions as determinative. Instead, it reasoned that:
(a) there was no evidence of bona fide use by the respondent; and (b) the respondent had not pursued any meaningful complaint about the petitioner’s
use while asserting priority. Consequently, issues 3 and 4 were also answered in favour of the petitioner.
The implicit principle is important: rectification for non-use turns on the proprietor’s use, not merely on allegations that the applicant
selected a similar mark. Non-use can render a registration vulnerable even if it has been on the Register for many years.
C. Impact
-
Strengthening attacks on “deadwood” registrations:
The decision reinforces that long-registered marks can be removed if they are not genuinely used, preventing the Register from being used as a
warehouse of blocking rights.
-
Evidence expectations in non-use rectifications:
Proprietors must maintain “use” records (invoices, advertisements, packaging, catalogues, distributor appointments, GST/sales records, website archives),
because a bare claim of ownership will not survive a Section 47(1)(b) challenge.
-
Facilitating market entry for later adopters (subject to merits):
Where a prior mark is shown to be unused, later entrants who are obstructed at the examination stage may be able to clear the register through rectification.
The case underscores that “person aggrieved” is not narrowly construed when the registration is a practical barrier.
-
Limiting the utility of criminal-law arguments in register correction:
The respondent’s reliance on criminal-offence jurisprudence did not alter the Court’s Section 47 inquiry, signalling that rectification remains a distinct,
evidence-based statutory mechanism.
4. Complex Concepts Simplified
- Rectification (Sections 47/57)
-
A court/Registrar process to correct the Trade Marks Register—e.g., removing a mark that should not continue due to non-use.
- Section 47(1)(b) non-use removal
-
If a registered mark has not been genuinely used for a continuous statutory period (commonly understood as five years and one month, subject to the Act’s
phrasing and computation), it can be removed—unless the proprietor shows “special circumstances” that explain the non-use.
- “Person aggrieved”
-
A party with a real commercial/legal interest in removing the mark—typically someone in the same trade whose ability to use/register a mark is hindered
by the impugned entry.
- Class 11
-
A classification category for certain goods (here, lighting apparatus/related items were specifically mentioned; the petitioner’s product was ceiling fans).
Classification overlap can create examination conflicts even where the parties argue their goods differ.
- “Deadwood” / “blocking” mark
-
A registration maintained without real market use, which blocks others from registering or using similar marks.
5. Conclusion
The Madras High Court’s decision crystallises a straightforward but commercially significant rule:
a registered trademark that is not proved to be genuinely used for the statutory continuous period is vulnerable to removal under Section 47(1)(b).
Where an applicant produces credible material indicating non-use and the proprietor offers no rebuttal evidence, the Court is likely to treat the mark as
“deadwood” and order rectification.
The judgment also signals that allegations of the applicant’s bad faith, or criminal-law rhetoric about use of similar marks, will not by themselves save an
unused registration. The Register is intended to reflect live trade rights grounded in genuine market use, not merely paper exclusivity.