Three judgments, within nineteen days, from the same judge, had the same outcome with cancellation of registered trademarks under Sections 57 and 47 of the Trademark Act, throwing them back to the public domain. These three cases exhibit a similar set of facts, wherein the party instituting a suit forecasted a suit filed against it for trademark infringement.
It first started with the initial suit launched on June 5, 2026 Justice Tushar Rao Gedela of the Delhi High Court cancelled “GLASS SKIN” in Renee Cosmetics Pvt. Ltd. v. Rupali Sharma., Fourteen days later, on June 19, he cancelled “D-TAN” in Honasa Consumer Ltd. v. Visage Beauty and Health Care Pvt. Ltd., Five days after that, on June 24, the same judge cancelled “SHAKTI”, held by the proprietor of Shakti Bhog Foods, in P.C. Duraisamy v. Kewal Krishan Kumar & Anr. The commonality among all three cases is the instrument employed to invalidate registrations and the act of forecasting an infringement suit from their respective respondents.
Though, taken individually, all the referred cases seems merely to be dealing with the regular rectification pleas, when read together, with specific appreciation of its facts and the method employed, they reveal a coordinated offensive strategy in which market giants deploy Section 57 not merely as a reactive countermeasure triggered by infringement suits, but as a calculated first-strike weapon even before any suit being instituted, aimed at erasing competitor’s mark. The novelty here lies in the proper usage of the Section, commercial discipline with which incumbents are now using it, and the downstream monopoly logic that the filing strategy is designed to serve.
- The Traditional Posture vs. The First Strike
The conventional usage of the section is mostly reactive. In practice, it is used as a shield rather than as a weapon in an infringement suit, where the section becomes instrumental in making the infringement claim become redundant by simply invalidating the registration of the trademark on the basis of which the suit derives its legitimacy. Section 124 read with Section 57 reveals the mechanism, a remedy drawn after a sword was already raised.
Though not the intended mechanism to be used always with Section 124, as confirmed in Data Infosys (2016), itsit’s usage however resembled majorly a shield alongside Section 124. The Patel Field Marshal framework built the procedural architecture around it, with the civil court staying the suit, defendant filing rectification, when failingfails to pursue it, permanently loses the invalidity plea. The entire machinery assumed rectification was a response to being attacked, not a move made before any attack came.
The seismic shift in its usage was noted in the case of Data Infosys Ltd. v. Infosys Technologies Ltd. The court held that access to the statutory rectification forum is not contingent on a civil court’s prior prima facie finding of invalidity. It held that Section 57 also envisages an independent remedy, maintainable without any pending infringement suit.
The present cases demonstrate that well-capitalised incumbents have finally decided to use it. None of the petitioners were defendants in pending infringement suits when they filed. All three went to High court, expecting a future suit. Honasa dealt with a cease-and-desist notice from Visage Beauty and went straight to the High Court rather than waiting to be sued. Similarly, Renee Cosmetics instituted a suit in response to takedown of its product from third-party commercial platforms, such as Amazon, triggered by a registered mark, and attacked the registration itself. Duraisamy case also dealt with similar circumstances, where an identical “SHAKTI” mark had been registered in Class 30 after twenty-two years of procedural attrition, with not a single invoice of actual use.leading to the petitioner filing its petition before any threat materialised into litigation.
However, since one cannot rely on an active lawsuit to automatically prove their legal interest, they must show the court or the Registrar that the registered mark prejudices their commercial interests in other ways such as blockage of one’s application by Trademark registry upon an examination report under Section 11, prior usage, cease-and-desist letter, generic monopolization for them to fall under the meaning of “aggrieved person” under the Section.
- The Three Grounds: Section 9(1)(b), Section 47(1)(a), and Section 47(1)(b)
The commercial logic running beneath these filings deserves explicit articulation. The court in all these cases ended its role with a cancellation order of the owner’s registered Trademark.
The incumbents instituted the suit under the ambit of aggrieved person within Section 57, using the defendant’s own cease-and-desist letter as their source. This tactic would help the petitioners to bypass the time-consuming, tedious process of convincing the court with their records, evidences in satisfying other limbs such as generic monopolization, prior usage. This forces the dispute into a higher-stakes forum and bypasses the delays of Registry-level opposition.
The grounds for initiation of such a suit is followed by evidentiary exposure under Section 9 and 47. This provision bars registration of marks that consist exclusively of indications designating the kind, quality, intended purpose, or other characteristics of goods.
In Honasa, Justice Gedela held that “D-TAN”, composed of the words De and Tan and would phonetically would a product that removes tan marks from skin due to its exposure to sunlight. Visage Beauty, which had held the mark since 2018, had a turnover growing from approximately ₹13 lakh to ₹51 crore. However the court was unmoved of the same, holding that high turnover could not be equated to either distinctiveness nor it could satisfy the condition of “imprinted in the minds of the general consumer”.
Similarly, in Renee, the court cancelled “GLASS SKIN,” for its wise recognition in Korean beauty trend, describing transparent, luminous skin, that had been in descriptive use by Nykaa, Garnier, Nivea, Lakme, L’Oréal, and Mamaearth, among others. The respondent’s attempt to rely on the “imagination test” by arguing consumers must work to connect the mark to the product was dismissed by holding that “itIt would be absurd to propound that the term ‘GLASS SKIN’ for a product which is a cosmetic for the purpose of skin care, would not be a ‘descriptive’ term.”
The most interesting of all, from a ip practitioners point of view is the Duraisamy judgement. This case involved a market giant deploying real, named statutory grounds against a genuine phonetic squatter.
Kewal Krishan Kumar’s “SHAKTI” was, by the Court’s analysis, a textbook hostile registration. It was applied on 12 March, 1996 for registration, however was registered only 22 years later, on 22 March, 2018 through a long history of procedural attrition and delayed oppositions. The court found the registration to be a zombie registration, andthat despite applying for the standalone mark “SHAKTI” in 1996 and securing its registration in 2018, the respondents failed to produce a single scrap of proof of use, such as invoices or advertisements, showing independent commercial use of the word “SHAKTI” per se.
This hence serves as a warning for marks registered through procedural lapses such as letting the opposition lapse and waiting out the administrative process, but never using it afterwards, or registeration with no intention to use. These will find no shelter once a well-resourced prior user files a rectification petition and places its own documentary history before the court.
Section 47(1)(b) serves as another sword in cancellation of those marks which have remained unused for 5 years, plus three months time prior to the date of filing the rectification application. The same is objectively provable from market evidence, and the burden shifts to the registered proprietor once non-use is prima facie established.
- The “Liberate to Dominate” Cycle:
None of the judgments directed any petitioner to file a fresh trademark application. None upheld the monopoly, however the market consequences suggest an insinuating monopoly, contrary to the intentions of statutory provisions.
The first step involves filing a rectification petition made simple either by the cease-and-desist letter by the owner himself or under the limbs of Section 47. This step is done proactively, attacking a competitor’s registered mark before any infringement suit is brought against them. By choosing the High Court rather than opposing at the Registry, the incumbent forces the dispute onto a faster, higher-stakes forum and avoids the interminable delays of Registry-level opposition proceedings.
The second step involves the satisfaction of the evidentiary threshold. The petitioner builds a case that inherently requires placing its own commercial history before the Court. The petitioner must then submit invoices, sales figures, ad spend, and investigator affidavits to prove the trademark is merely descriptive. At the same time, these records establish the petitioner’s own prior commercial use. This evidence serves a dual purpose: it secures victory in the rectification petition while strengthening a documented record of prior use for future disputes
The third step involves the cancellation of the defendant’s mark, putting the mark into public domain in theory. This allows anyone to use the said mark for its generic value in paper. However, this creates an artificial dominance, wherein any small player registering a mark of the said generic character could be easily erased using the mechanism in furtherance of remedy of passing off conferred on the dominant entity or in other words, by destroying the competitor’s only formal offensive weapon. Any competitor who tries to register the now-vacant term and then sue the incumbent for infringement will face the incumbent’s court-documented prior-use record as a complete defence.
The three major consequences are the
- practical anti-competitive paradox, which dilutes the entire intention of putting the mark back to public domain for its generic use by other players.
- The simple filing of a petition under Section 57 requires extensive market research, investigator affidavits, comprehensive industry surveys in Section 9 cases, and a disciplined prior-use documentary record. Hence, this put the small players out of the race, favouring the dominant players.
- The time line requirements of Section 47(a) and 47(b) are different, and facts may structurally support one timeline for another.
Conclusion:
These three judgements are not individual prouncements, but they crystallise how market incumbents are now deploying existing law with strategic precision. Section 57, read alongside Sections 9 and 47, has become an instrument of proactive market positioning in India’s consumer-goods sector, not merely a last-resort defence.
Hence the IP landscape has moved from “how do we protect our marks?” to equally, “which of our competitors’ registered marks are legally vulnerable, and what does our market position look like if we remove them?”
Authored by: Mr. Arul Murugan S
Mr. Arul Murugan S currently pursuing third year from Tamil Nadu National Law University and is interested in areas like intellectual property, corporate laws, constitution and human rights