The Delhi High Court recently ordered removal of the mark BPI SPORTS registered in the name of Saurabh Gulati (“Respondent”) from the Register of the Trade Marks (“Register”), following a cancellation petition filed by BPI Sports LLC (“Petitioner”).
The cancellation petition was based on the Petitioner’s earlier rights in BPI SPORTS mark in the United States of America (US). The Petitioner argued that the Respondent fraudulently obtained registration for the BPI SPORTS mark, which the Petitioner has been using in the US since 2009.
The Court noted that the Respondent, while importing the Petitioner’s goods in India noticed the market for the Petitioner's supplements under the BPI SPORTS mark in India, and subsequently obtained registration for the BPI SPORTS mark in India. This blocked the Petitioner's attempt to obtain registration of its BPI SPORTS mark in India.
The Court found a clear intention on the Respondent's part to steal the Petitioner's BPI SPORTS mark and ordered its removal from the Register. The Court, while doing so, recognized such acts of trade mark squatting as an internationally known intellectual property misdemeanour amounting to bad faith adoption under Section 11 (10) (ii) of the Trade Marks Act, 1999.
BPI Sports LLC vs. Saurabh Gulati & Anr. C.O. (COMM.IPD-TM) 16/2021 & I.A. 13589/2021