A registration on the Trade Marks Register is a valuable thing, and not only for the person who applied for it. A near-identical mark, registered by a stranger to the business, can obstruct the real brand owner, cloud its rights, and in some cases be used to extract a settlement. In Acko Technology and Services Pvt. Ltd. v. Chandra Mohan Mishra, the Delhi High Court removed exactly such a registration, and its reasoning is a useful guide for any owner of a distinctive mark that finds a look-alike on the Register.
Case Details: ACKO, ACCKO and a rectification petition
The petitioner is the holding company behind a well-known digital insurance business, which adopted the coined mark ACKO in 2016 and has used it continuously since, building a substantial reputation and securing numerous registrations for ACKO and its formative variants. The respondent had obtained registration of the mark ACCKO in Class 9, for mobile phones and accessories, on a proposed-to-be-used basis in 2017. The petitioner sought rectification of the Register under Sections 47 and 57 of the Trade Marks Act, 1999, to have the ACCKO registration removed.
Court Ruling
The Court allowed the petition. It found ACCKO to be deceptively similar to ACKO, the addition of a single letter doing nothing to distinguish the two to an ordinary consumer with imperfect recollection. Given the closeness of the marks, and the reputation and prior adoption of ACKO, the Court found that the respondent’s adoption was dishonest and in bad faith, made to trade on the goodwill of the petitioner’s mark. The mark had been applied for on a proposed-to-be-used basis, and there was nothing to show genuine use.
The Court accordingly ordered cancellation of the ACCKO registration and directed the Registrar to rectify the Register within two months. In substance, a registration obtained to shadow a distinctive mark was taken off the Register.
What brand owners need to note
The decision is a practical reassurance for owners of distinctive and coined marks. A coined mark, invented for the business and carrying no ordinary meaning, is among the strongest a brand can own, and its very distinctiveness makes a near-identical later mark hard to explain as coincidence. Where such a mark is registered by a stranger, particularly on a proposed-to-be-used basis and without genuine use, rectification under Sections 47 and 57 is an effective remedy. The reputation and prior use of the genuine mark, and the closeness of the rival mark, do much of the work.
What can brand owners do
- Watch the Register. set up a watch on the Register so that identical and deceptively similar applications are caught early, ideally at the advertisement stage when they can be opposed.
- Oppose, then rectify. where a look-alike has slipped through to registration, rectification under Sections 47 and 57 is available on grounds including deceptive similarity, bad faith and non-use.
- Register defensively. consider registering your core marks, and their close variants, across the classes that matter to your business, so that a squatter has less room to file.
- Invest in distinctiveness and reputation. a coined or well-known mark is easier to defend against a look-alike. Where appropriate, build the record for well-known status.
- Keep your evidence in order. keep dated records of first use, sales, advertising and recognition. Reputation and prior use are what defeat a bad-faith registration.
The case is a clear example of a recurring problem: a distinctive brand shadowed by a near-identical registration in another’s name. It confirms that such registrations are vulnerable, that a proposed-to-be-used filing without use is fragile, and that the closeness of the marks, combined with the reputation of the genuine mark, can support a finding of bad faith.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
