Delhi HC Cancels Deceptively Similar ‘ROCKPAPA’ Trademark; Holds Prior User Has Superior Rights Over Registered Proprietor

Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration

Date: 15.09.2026

Delhi HC Cancels Deceptively Similar ‘ROCKPAPA’ Trademark; Holds Prior User Has Superior Rights Over Registered Proprietor

The Delhi High Court has ordered removal of a deceptively similar ‘ROCKPAPA’ device mark from the Trade Marks Register, holding that the rights of a prior user can prevail over those of a subsequent user even where the latter has obtained trademark registration.

In Kia Wang v. Registrar of Trade Marks & Anr., C.O. (COMM.IPD-TM) 2/2021, Justice Jyoti Singh allowed a rectification petition filed by Kia Wang and directed the Registrar of Trade Marks to remove the impugned device mark registered under Trademark No. 4400360 in Class 09. The judgment was delivered on 15 September 2023.

The Court found the rival marks strikingly similar and concluded that the respondent’s adoption was tainted by bad faith and dishonest intention, aimed at encashing upon the goodwill associated with the petitioner’s mark.

Dispute Over ‘ROCKPAPA’ Device Mark

• Kia Wang claimed that he and his wife founded the ROCKPAPA brand in 2014, primarily for products aimed at children, including headphones, pencil boxes and school bags, as well as audio-related products such as headphones, earphones, loudspeakers and portable media players.
• According to the petition, the brand operated internationally, including in Australia, Canada, Europe, the United States and India. The domain name for ROCKPAPA was registered on 9 April 2014, and the products were also marketed through e-commerce platforms.
• The petitioner also relied upon trademark registrations obtained abroad, including in the United Kingdom, Australia, United States, Japan and Canada.

Respondent Obtained Registration in India in 2020

• Respondent No. 2, Sachin Garg, proprietor of Pooja Creations, applied for registration of the impugned device mark on 7 January 2020. It was subsequently registered in Class 09 for mobile phones and accessories, including chargers, adaptors, batteries, screen protectors, power banks, mobile covers, memory cards, card readers and handsfree devices.
• Kia Wang claimed that he discovered the registration only in June 2021 and thereafter approached the Delhi High Court seeking rectification of the Register under Sections 47, 57 and 125 of the Trade Marks Act, 1999.
• Respondent No. 2 did not appear despite service and was eventually proceeded against ex parte. The Registrar did not file a counter-affidavit, though written submissions were placed before the Court.

Prior User Rights Can Override Subsequent Registration

• One of the central issues before the Court was the petitioner’s claim of being the prior adopter and prior user of the ROCKPAPA mark.
• The Court relied upon the Supreme Court decisions in Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624; S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683; and Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672.
• Referring to these authorities, the High Court reiterated that the “first in the market” test assumes significance where competing trademarks are similar.

It observed that the “first user” rule is a seminal feature of trademark law and held that:

A prior user’s rights will override those of a subsequent user even though the subsequent user’s trademark may have obtained registration.

On the evidence before it, the Court accepted Kia Wang’s claim of use since 2014. His prior use, overseas registrations and continuous use of the mark established that the trademark had become distinctive of his goods and associated with him.

Court Finds Rival Marks Strikingly Similar

• The judgment contains a side-by-side visual comparison of the two device marks on page 15. Both use a substantially similar stylised face/hair/moustache device together with the word “Rockpapa”.
• The Court observed that the similarity between the two marks was “writ large on a bare perusal.”
• It held that the similarity of the marks, coupled with identity of the competing goods, created a likelihood of consumer confusion and could adversely affect the petitioner’s reputation and goodwill.

Bad-Faith Trademark Registration Can Be Cancelled

• The Court then examined Section 11(10)(ii) of the Trade Marks Act, 1999, which requires the Registrar to take into consideration the bad faith involved either on the part of the applicant or opponent while dealing with trademark registration.
• Relying particularly upon BPI Sports LLC v. Saurabh Gulati, 2023 SCC OnLine Del 2424, the Court explained that “bad faith” essentially involves the absence of honest intention and may include dishonest commercial conduct, fraud, deception or an attempt to appropriate another party’s trademark.
• Applying this principle, the Court found “little doubt” that Respondent No. 2 had acted with dishonest intention in adopting a similar mark for identical goods, including copying important visual characteristics of the petitioner’s device mark.
• The Court concluded that the intention was to encash upon the goodwill of the petitioner’s trademark. It also noted that Respondent No. 2 had chosen not to contest the proceedings or rebut the petitioner’s claim of prior use.

Maintaining ‘Purity of the Register’ Is a Matter of Public Interest

• The High Court went beyond the private dispute between the parties and emphasised the broader public-interest function of trademark rectification.
• It referred to Khoday Distilleries Ltd. v. Scotch Whisky Association, (2008) 10 SCC 723, where the Supreme Court stressed the importance of maintaining the purity of the Trade Marks Register and considering the likelihood of deception or confusion.
• The Court also relied on Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, while considering who qualifies as a “person aggrieved” entitled to seek rectification.
• The Court held that Kia Wang qualified as a “person aggrieved” because the respondent’s registration operated as a restraint upon legal rights flowing from the petitioner’s prior, long, continuous and uninterrupted use of the mark.

Important Finding on Section 11(1) and Well-Known Trademark Claim

• An important nuance in the judgment is that the Court did not accept every ground advanced by the petitioner.
• Kia Wang had argued that the impugned registration violated Sections 11(1) and 11(2) because ROCKPAPA was an earlier and well-known trademark.
• The Court rejected this particular argument. It observed that, for purposes of Section 11, the petitioner’s mark did not qualify as an “earlier trade mark” because it was neither registered in India nor covered by the specified categories of Indian/international/convention applications. The Court also found that the material and pleadings were insufficient to classify ROCKPAPA as a well-known trademark under Section 2(1)(zg) read with Section 11(6).
• This makes the judgment particularly significant: the petition succeeded principally on prior-user rights, deceptive similarity, bad-faith adoption and the need to maintain purity of the Register—not because ROCKPAPA was judicially declared a well-known trademark.

Delhi High Court Orders Trademark Removed Within Four Weeks

• Ultimately, the Court allowed the rectification petition and directed the Registrar of Trade Marks to remove Trademark No. 4400360, registered on 7 January 2020 in Class 09, from the Register.
• The Registrar was directed to complete the rectification within four weeks from receipt of the judgment.

Key Legal Principle

The judgment reinforces three significant principles of Indian trademark law: prior user rights may prevail over subsequent registration; bad-faith adoption of a deceptively similar mark can justify cancellation; and rectification jurisdiction serves the wider public interest of maintaining the purity of the Trade Marks Register.

At the same time, the decision demonstrates that foreign registrations or international popularity alone do not automatically make a mark an “earlier trade mark” or a “well-known trademark” in India for the purposes of Section 11.

Connected Matter

Delhi High Court: Prior Formal Declaration Not Required to Claim Protection as a Well-Known Trademark Under Section 11(2)

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Source: Delhi High Court

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Ravi Shekhar Jha – Advocate, Bar Council of Delhi