Short Summary
The Madras High Court set aside a previous rejection order, allowing M/s. Godfrey Phillips India Limited to successfully challenge the registration of 'Khoday's Red & White'. The court found that the appellant possessed a well-known trademark used since 1940 for cigarettes, and crucially noted the prolonged non-use of the mark by Khoday India Limited from its application date in 1995. This decision reinforces the importance of continuous use and reputation when challenging subsequent registrations.
Detailed Summary
In the world of trademarks, registration is not a trophy you lock in a cabinet and forget. It is a living asset that demands attention, use, and protection. When a company files for a mark it never intends to use — and then leaves it dormant for nearly three decades — it builds a house of cards that a determined competitor can blow down with a single legal breeze. This case before the Madras High Court is a textbook example of how prolonged non-use, combined with an opponent's well-known reputation, can unravel a trademark registration entirely.
The dispute centered on the trademark 'Khoday's Red & White', which had been applied for by Khoday India Limited back in 1995 on a 'proposed to be used' basis. On the other side stood M/s. Godfrey Phillips India Limited, a company whose trademark heritage in the cigarette industry stretched all the way back to 1940. Godfrey Phillips had built decades of continuous use and reputation around its mark, making it a well-known trademark in the relevant market. When Godfrey Phillips moved to challenge the registration of 'Khoday's Red & White', the initial rejection of their challenge set the stage for an appeal before the Madras High Court in OA/37/2013/TM/CHN, decided on 9 November 2023.
Godfrey Phillips argued from a position of historical strength: their mark had been in continuous use since 1940, earning it the status of a well-known trademark in the cigarette trade. They contended that Khoday India Limited's registration — filed in 1995 on a 'proposed to be used' basis — should not be allowed to coexist alongside their established rights. The prolonged non-use of the mark by Khoday India Limited became the centerpiece of their challenge. On the other side, Khoday India Limited relied on its registered status, but the gap between registration and actual use told a story that worked against them. The legal friction was clear: a registered but unused mark versus a continuously used, well-known mark with a legacy spanning more than half a century.
The Madras High Court ruled in favor of Godfrey Phillips India Limited, setting aside the previous rejection order. The court recognized Godfrey Phillips' status as the holder of a well-known trademark with continuous use dating back to 1940. Crucially, the court placed significant weight on the prolonged non-use of the mark by Khoday India Limited from its 1995 application date onward. This combination — an established well-known mark on one side, and decades of dormancy on the other — provided strong grounds for cancellation under Section 57(4) of the Trade Marks Act. The plaintiff's challenge succeeded, and the registration of 'Khoday's Red & White' was effectively dismantled.
For founders and IP professionals, this case delivers a sharp, practical lesson: registering a trademark on a 'proposed to be used' basis is not a permanent shield. If you do not use the mark, and a competitor with a well-known, continuously used brand challenges your registration, you are exposed. Continuous use is not just a legal formality — it is the lifeblood of trademark rights. Before filing, ask yourself whether you are truly ready to bring the mark into commerce. And if you are the established player, remember that a sleeping registration is a vulnerability you can exploit under Section 57(4) of the Trade Marks Act.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in trademark matters before Madras High Court. Understanding the court's reasoning in M/s. Godfrey Phillips India Limited vs Khoday India Limited is valuable context for structuring arguments or assessing risk in similar proceedings.
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