Delhi High Court: In a case wherein the petitioner, Russell Corp Australia (P) Ltd. seeks cancellation of Respondent 1’s mark 
and also the removal of the said mark from the Register of Trade Marks, Prathiba M. Singh, J.*, opined that the mark ‘SHERRIN’, which was registered by Respondent 1, was clearly a mark, which was identical in all respects to the petitioner’s mark. The Court further opined that the relevant section of the public dealing with sporting articles in India would be clearly aware of the petitioner’s mark ‘SHERRIN’ owing to the iconic character and nature and thus in view of all these facts and circumstances, the adoption and use of the ‘SHERRIN’ mark by Respondent 1 would be violative of the statutory provisions apart from being in bad faith and malafide. Thus, Respondent 1’s mark ‘SHERRIN’ in Class 28 was directed to be removed from the Register of Trade Marks.
Background
The petitioner was a leader in the sporting goods industry, apparel and uniforms being manufactured and sold for various sporting activities at national and international levels as also household sporting goods. The petitioner and other members of the Russel Brands Group sold athletic uniforms, apparel, athletic footwear, sporting goods, and athletic equipment in several countries of the world since 1902. The brands used by the petitioner and other members of the Russel Brands Group were SPALDING, RUSSELL ATHLETIC, JERZEES, AAI, HUFFY SPORTS, DUDLEY and SHERRIN. The SHERRIN mark was acquired by Russell Brands, LLC in 2003 and the petitioner had also obtained registration for the mark ‘SHERRIN’ internationally.
The petitioner submitted that it became aware of Respondent 1, trading as Deal International, Jalandhar, which had filed an application for the mark ‘SHERRIN’ in Class 35. The said mark was opposed by the petitioner by filing a notice of opposition dated 23-03-2016. In those proceedings, the petitioner realized that Respondent 1 also had a registered trade mark in Class 28. Subsequently, Respondent 1 had also opposed the trade marks of the petitioner. The present petition had thus been filed seeking variation of the register and cancellation\rectification of Respondent 1’s registered trade mark ‘SHERRIN’.
Analysis, Law, and Decision
The Court observed that the present case was premised on the ground of non-use of a trade mark and also being a habitual offender of misusing well-known marks, including the mark of the petitioner. The Court relied on Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92 and Kabushiki Kaisha Toshiba v. Tosiba Appliances Co., (2008) 10 SCC 766 and opined that in view of the fact that Respondent 1 had opposed the petitioner’s mark, and also due to the fact that the petitioner was the user of the mark in various countries and even the holder of trade mark registrations, the petitioner was, clearly, a ‘person aggrieved’ under Section 47 and Section 57 of the Trade Marks Act, 1999 (‘Act’).
The Court noted that the mark ‘SHERRIN’ including in the logo form was being used since 1996 in Australia and the mark ‘SHERRIN’ was registered in favour of the petitioner in several foreign countries. The name ‘SHERRIN’ was derived from surname of the founder of the petitioner company. Though the said company changed hands over the years, the use of the said mark continued. Thus, the Court opined that the way Respondent 1 had applied for the mark ‘SHERRIN’ clearly showed bad faith, inasmuch as even the writing style had been copied. The history of the petitioner’s mark had been traced since 1880 wherein ‘SHERRIN’ football has been described as 
.
The Court opined that the manner in which the petitioner’s business had expanded over the last 140 years, was clearly recognizable. The mark ‘SHERRIN’ was not merely used for Australian football related activities but the same was used for the iconic ball that was used in the sport, which had a unique design and appearance. The Court noted that under Section 47 of the Act, a registered trade mark was liable to be taken off the Register if the mark was not used for a period of five years and three months prior to the date of filing of the petition. The Court further noted that in the present case, the application for the impugned mark was filed on 27-02-2007 and the same was granted on 18-03-2010. The affidavit of the investigator showed that the mark ‘SHERRIN’ was discontinued since 2010 and the present petition was filed in 2020 before the Intellectual Property Appellate Board. Thus, the requirement of five years and three months stands satisfied.
The Court relied on Disney Enterprises Inc. v. Balraj Muttneja, 2014 SCC OnLine Del 781; S. Oliver Bernd Freier Gmbh & Co. KG v. Jaikara Apparels, 2014 SCC OnLine Del 2686; and United Coffee House v. Raghav Kalra, 2013 SCC OnLine Del 2133, and opined that in the absence of denial by Respondent 1, this Court had no reason to disbelieve the pleadings and the investigator’s affidavit.
The Court opined that in the present case the mark ‘SHERRIN’, which was registered by Respondent 1, was clearly a mark, which was identical in all respects to the petitioner’s mark. The petitioner not only had adopted the mark more than 140 years ago but had even used the said mark in India by sourcing its products from India. The uniqueness of the products sold under the mark ‘SHERRIN’ along with the use of the mark on the balls itself have also made ‘SHERRIN’ synonymous with Australian football. All these factors clearly pointed out that the adoption of this mark was not genuine, and it was an attempt to usurp the reputation of globally established mark. The adoption was also dishonest as was evident from the adoption of an identical mark in identical style for identical goods.
The Court opined that the logo and style of writing of the mark ‘SHERRIN’ having been designed in Australia by the petitioner, several years prior to the application filed by Respondent 1, the said logo would also be liable to be protected under the law of copyright. In addition, the relevant section of the public dealing with sporting articles in India would be clearly aware of the petitioner’s mark ‘SHERRIN’ owing to the iconic character and nature and thus in view of all these facts and circumstances, the adoption and use of the ‘SHERRIN’ mark would be violative of the statutory provisions apart from being in bad faith and malafide.
The Court further opined that the allegation that Respondent 1 was a habitual squatter of well-known marks also left no room of doubt for this Court, thus, Respondent 1’s mark ‘SHERRIN’ in Class 28 was directed to be removed from the Register of Trade Marks.
[Russell Corp Australia (P) Ltd. v. Ashok Mahajan, 2023 SCC OnLine Del 4796, decided on 08-08-2023]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case:
For the Petitioner: Prashant Gupta and Jithin M George, Advocates;
For the Respondents: Yachi Vashney, Advocate.
