By Lucy Rana and B. Michael Shriney
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.
Frequently Asked Questions
Protecting Distinctive TMs
Yes, in appropriate cases. A rectification petition under Sections 47 and 57 of the Trade Marks Act, 1999 can seek removal of a registration on grounds including deceptive similarity, bad-faith adoption and non-use, as the Delhi High Court ordered here.
It is a proceeding to correct the Register by removing or varying an entry, for example cancelling a registration that should not have been granted or that has not been used for a continuous period of five years and three months preceding the filing of the rectification application.
It can. A registration applied for on a proposed-to-be-used basis in India, with no genuine use shown, is more vulnerable to removal, particularly where the mark is deceptively similar to a distinctive earlier mark.
A coined mark is an invented word with no ordinary meaning. Its distinctiveness makes a near-identical later mark hard to justify as an independent creation, which strengthens the earlier owner’s case.
It is the adoption of a mark with a dishonest intention, for example to trade on the goodwill of a distinctive earlier mark. The closeness of the rival mark and the reputation of the earlier mark can support such a finding.
Watch the Register, oppose problematic applications, rectify look-alikes that reach registration, register your core marks and variants across relevant classes, and keep evidence of use and reputation.
Yes. Registration in a different class is not always a defence. Where the earlier mark is distinctive or well known, or where the later mark has been adopted in bad faith, the registration may still be liable to rectification or cancellation.
- Opposition is a pre-registration remedy. It may be filed by a third party within four months from the date of advertisement of an accepted trade mark application if the mark is identical or deceptively similar to the opponent’s earlier trade mark or is otherwise objectionable.
- Rectification is a post-registration remedy. It is invoked after a mark has proceeded to registration, including where the statutory opposition period has expired, to seek removal or correction of an entry on the Register on grounds such as deceptive similarity, prior rights, bad faith, or non-use for a continuous period of five years from the date of registration and up to three months before the application for removal is filed.
Yes. Under Section 34 of the Trade Marks Act, 1999 recognises the superior rights of a prior user. Accordingly, a proprietor who can prove prior adoption and use of a mark may challenge a later registration notwithstanding its presence on the Register.
Trademark squatting generally refers to the practice of seeking registration of a mark belonging to another person or business, often with the intention of benefiting from the goodwill associated with that mark or blocking the genuine owner.
The ACKO decision confirms that the Register is not a safe hiding place for a look-alike mark. A distinctive brand, backed by reputation and prior use, can have an unauthorised or bad-faith registration removed. For brand owners, the practical message is to watch the Register as closely as the market, and to act against a shadow mark before it hardens into an obstacle.
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