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Date of Decision: 13th April, 2026 C.O. (COMM.IPD-TM) 197/2024
LEGRAND FRANCE & ORS. .....Petitioners
Through: Ms. Mamta Rani Jha, Mr. Akhil Saxena, Ms. Palak Batra and Ms. Aashna Arora, Advocates.
Through: Ms. Rukhmini Bobde, CGSC with Mr. Vinayak Aren and Ms. Aishwarya, Advocates for R-2.
JUDGMENT
1. This rectification petition is filed on behalf of the Petitioners under Section 47(1)(a) read with Sections 57, 11(1), 11(2), 11(3)(a), 11(10), 18 and 29 of the Trade Marks Act, 1999 (‘1999 Act’) for removal/rectification of the trademark ‘MLOGRAND’ bearing Registration No. 4182910 in Class 09 from the Register of Trade Marks.
2. To the extent necessary, the facts are that Petitioners belong to Legrand Group, France which is a global specialist in electrical and digital building infrastructure offering high value added products and solutions for commercial, residential and industrial buildings providing a comprehensive range of products sub-divided into 7 major product categories such as user interface, energy distribution, building systems, cable management, digital infrastructure, UPS and installation components. Presently, Petitioners operate five business divisions in India under the names ADLEC, NUMERIC, VALRACK, INDO ASIAN and LEGRAND. Petitioners function as manufacturers, importers and exporters, merchants and traders, dealings in all kinds of electrical and light engineering goods including products under the mark LEGRAND.
3. It is stated that origin of Petitioner No.1 dates back to 1865 with setting up of a porcelain workshop on the ‘route de Lyon’ in France. In 1904, the business was bought over by Frederic Legrand, Charles Alary and Jean Joquel to become the Legrand, Alary and Joquel Company and since then LEGRAND has been part of company’s name/trade name of the Petitioners. Presently, Legrand Group comprises of 200 subsidiaries and associate companies and partners and has its presence in nearly 90 countries with product distribution in close to 180 countries, with a global workforce of 36,700 employees.
4. It is stated that trademark LEGRAND is a unique and arbitrary trademark which does not denote all connote any description, characteristics or quality of the goods offered by the Petitioners under the said trademark and is inherently distinctive.
LEGRAND has been extensively, continuously and uninterruptedly used since its adoption. To distinguish its goods and business, Petitioner No.1 adopted the unique and distinctive logo in 1968. Further, in 1974, Petitioner No.1 redefined the logo/trademark and introduced.
5. It is stated that Petitioner No.1 brought its business under the mark LEGRAND for electrical products such as fuse gears, switch gears etc., to India in 1996 with acquisition of MDS Switchgear Pvt. Ltd., which was incorporated in 1961 as Morarji Dorman Smith Pvt. Ltd. and later renamed to Legrand (India) Pvt. Ltd., in 2004 which amalgamated with Petitioner No.3 w.e.f. 01.04.2011. Petitioners have been using the mark in India since at least 1996 and Petitioners No.1 and 2 have jointly applied and obtained various trademark registrations in the mark LEGRAND and associated trade dress and have also consented to the use of the mark and packaging by Petitioner No.3. The earliest registration of LEGRAND in India dates back to 1986 in Class 09. Relevant registrations in the name of Petitioner No.1 are as follows:-
6. It is stated that Petitioners No.1 and 2 have been granted registration in the trademark including distinctive trade dress/packaging in India, as follows and all registrations are valid and subsisting:-
7. It is stated that Petitioner No.1 has obtained registrations for LEGRAND across various jurisdictions as follows:-
8. It is stated that on account of long and continuous use, extensive marketing and sale campaigns through worldwide distribution networks, including in India as also owing to painstaking quality control, the electrical products sold under LEGRAND have acquired enviable goodwill and reputation amongst the members of trade and public at large and the brand is associated only and only with the Petitioners. The extent of goodwill acquired by the brand is evident from the sales turnover and promotional expenses incurred by Petitioner No.3 for the period 2012-2023 as follows:-
9. It is stated that the formidable goodwill and reputation of mark LEGRAND can also be gauged from the extensive following and popularity on various social media platforms as follows:-
10. It is stated that Respondent No.1 is an individual who has obtained registration of the impugned mark MLOGRAND under registration NO. 4182910 dated 21.05.2019 in Class 09. The registration is illegal and deserves to be cancelled both under Sections 47 and 57 of the 1999 Act. The impugned mark was registered on 21.05.2019 on ‘proposed to be used’ basis and investigations carried out by the Petitioners revealed that Respondent No.1 never commenced any bona fide commercial use of the mark since its inception. The registration was sought only to block the Register and constitutes ‘trafficking in trademarks’ rendering it liable for removal.
11. It is stated that MLOGRAND is phonetically, structurally and visually similar to the prior adopted, used, registered and popularly known mark LEGRAND of the Petitioners. Respondent No.1 has merely substituted the letter ‘E’ with letter ‘O’ in LEGRAND and added letter ‘M’ at the beginning, which are insufficient for distinguishing the impugned mark. Petitioners’ mark has French origin and pronunciation of MLOGRAND is virtually identical to French pronunciation of LEGRAND and lack of bona fides of Respondent No.1 is further evident from the fact that it subsequently applied for registration of device mark in Class 09 vide application no. 5638919 which is identical to Petitioners’ logo in terms of color combination and device element placed as prefix, to which Petitioner No.3 filed opposition and the mark was abandoned, as Respondent No.1 was unable to defend the opposition.
12. Learned counsel for the Petitioners submits that Petitioners belong to the Legrand Group which is a global specialist in electrical and digital building infrastructure since the past 60 years and Petitioner No.3 is the subsidiary of Legrand S.A. and is principally engaged in manufacturing all kinds of electrical goods, light engineering goods and allied goods.
LEGRAND is a unique and arbitrary trademark and inherently distinctive and was internationally adopted in 1968 and has been used in India since
1996. Petitioners No.1 and 2 are registered proprietors of LEGRAND and its several variants and have consented to the use of the mark by Petitioner No.3. Due to extensive use LEGRAND has become synonymous with Petitioners and registration of the mark gives statutory rights to the Petitioners to its exclusive use.
13. It is urged that Respondent No.1’s adoption of MLOGRAND is a dishonest adoption and registration of a structurally, phonetically and visually deceptively similar mark cannot stand and must be cancelled. Respondent No.1 has appropriated the dominant suffix GRAND in its entirety and merely substituted the vowels ‘E’ and ‘O’ while adding the prefix ‘M’. Reliance is placed on the judgments of the Supreme Court in: Amritdhara Pharmacy v. Satya Deo Gupta, 1962 SCC OnLine SC 13; Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories, 1964 SCC OnLine SC 14; Parle Products (P) Ltd. v. J.P. & Co., Mysore, 1972 SCC OnLine SC 69; and Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 SCC OnLine SC 11. Addition of the letter ‘M’ is phonetically insignificant. In the course of trade, MLOGRAND is likely to be slurred and pronounced similar to LEGRAND, causing inevitable confusion. Reliance is placed on the judgment of the Supreme Court in M/s K.R. Chinna Krishna Chettiar v. Sri Ambalal & Co, Madras and Another, 1969 SCC OnLine SC 191 and of this Court in Fybros Electric Private Limited v. Vasu Dev Gupta Trading As Vasu Electronics and Another, 2023 SCC OnLine Del 3179.
14. It is argued that the mark MLOGRAND covers identical goods in Class 09 i.e., electrical apparatus, with common trade channels and consumer base and likelihood of confusion cannot be ruled out. For all these reasons the mark is liable to be removed from the Register of Trade Marks in light of Section 11(1) of the 1999 Act.
15. It is further argued that the mark also deserves to be removed owing to its non-use from the time of its adoption and registration on 21.05.2019 and Respondent No.1 has clearly obtained registration only to traffic in the trademark. Respondent No.1 has consciously chosen to stay away from these proceedings and has been proceeded ex parte and hence, the plea of non-user is deemed to be admitted in the absence of a specific denial, as held by this Court in Ankit Aggarwal v. Gupta Casting Fvl. Ltd., 2023 SCC OnLine Del 2343 and DORCO Co. Ltd. v. Durga Enterprises and Another, 2023 SCC OnLine Del 1484; and by the IPAB in Shell Transource Limited v. Shell International Petroleum Company Ltd., 2012 SCC OnLine IPAB 35.
16. Respondent No.1 is ex parte and Respondent No.2/Registrar of Trade Marks has not filed any response to the petition. Counsel for Respondent No.2 orally defends the registration and submits that the impugned mark was correctly registered as there is no deceptive similarity in the mark of the Petitioners and the impugned mark.
17. Heard counsels for the parties.
18. Respondent No.1 was set ex parte on 15.01.2026 as he failed to appear despite being served by publication. No steps were taken for recall of the order and Respondent No.1 has not joined the proceedings thereafter and no reply has been filed to contest this petition. Hence, the averments in the petition are deemed to be admitted including those related to non-user of MLOGRAND. It would be relevant to refer to a passage from the judgement of this Court in DORCO (supra), which is as follows:- ……
19. The same view has been taken by this Court in Kiranakart Technologies Private Limited v. Mohammad Arshad, 2025 SCC OnLine Del 1401. Perusal of the Section 47(1)(b) of the 1999 Act leaves no doubt that a registered trademark is liable to be taken off the Register of Trade Marks if up to a date three months prior to the date of filing of the rectification petition, the same is not used in relation to the goods/services in respect of which it is registered for a continuous period of at least five years from the date on which the mark is entered in the Register of Trade Marks. Dealing with the issue of non-use of a registered mark by a registered proprietor, this Court in Russell Corp Australia Pty. Limited v. Ashok Mahajan and Another, 2023 SCC OnLine Del 4796, held as follows:-
20. Both in Kiranakart (supra) and Russell (supra), this Court also observed that if investigation by independent investigator reveals that impugned mark was not used for goods or services in the Class for which it is registered and a categorical stand is taken in the petition, which is not disputed or refuted by the Respondent, the mark is liable to be removed owing to non-use. In this context, I may refer to a passage from Kiranakart (supra) as follow:-