BPI Sports LLC v. Saurabh Gulati & Anr

A petition was filed at the Delhi High Court under Section 57 of the Trade Marks Act, 1999. The petitioner was seeking rectification of the register of trademarks by removal, therefrom, of the trademark “BPI SPORTS” registered as a word mark in favor of Respondent 1 in Class 5 of the NICE classification, for “health food supplements, dietary supplements, and nutritional supplements”.

=> Brief Facts of The Case

1. The Petitioner is a company incorporated in Florida, USA. It claims to be a leading player in the dietary and nutritional supplements sector.

2. The wordmark “BPI SPORTS” and the device mark stands registered in favor of the Petitioner on 15th July 2014 and 28th November 2017 respectively in the US, in Class 5 in respect of dietary and nutritional supplements.

3. The petitioner claims to have been using the said mark “BPI SPORTS” for dietary and nutritional supplements since 28th January 2009. As per the averments in the petition, the petitioner commenced using the mark “BPI SPORTS” in India in January 2019. As such, even as of date, the Petitioner has, to its credit, only four years experience of use of the asserted mark “BPI SPORTS” in India.

4. Respondent 1 was one of the persons who was importing the goods of the petitioner in India, under the mark.

5. Respondent 1 surreptitiously applied and obtained registration, in its favor, of the word mark BPI SPORTS in Class 5 for health food supplements, dietary supplements, and nutritional supplements. Application No. 4422891 was submitted by Respondent 1, for the said registration on 28th January 2020, on a “proposed to be used” basis, and the word mark BPI SPORTS was registered in favor of Respondent 1 with effect from the said date vide certificate dated 26th September 2020.

Hence, the grievance as stated by the Petitioner is that the Respondent has fraudulently obtained registration of the impugned mark BPI SPORTS, which belongs to the Petitioner and stands registered in its favor, albeit in the US.

The petitioner alleges that the Respondent is resorting to trademark squatting, as it has no intention of using the mark BPI SPORTS and has merely got the mark registered in its favor, so as to avoid the mark being registered in favor of the Petitioner.

=> Observations of The Court

After hearing both sides, the Hon’ble Court made some significant observations as mentioned below:

1. The bench observed that Gulati was aware that the mark was registered in the name of BPI Sports in the USA and that the company enjoyed global repute in the said mark. Hence, this shows the clear intention of the Respondent to steal the Petitioner’s mark so as to block the company’s attempt at registering its name in India. This is a classic example of Trademark Squatting.

2. The Bench refused to recognize a relief to the Petitioner under sub-section (1) to (3) and Section 11 of the Act but did hold that the aggrieved was indeed entitled to relief under Section 11 (10)(ii) which requires the Registrar, while registering the mark, to take into consideration the bad faith involved either of the applicant or the opponent.

While acknowledging a fair attempt at Trademark Squatting made by the Respondent, the Court recognized bad faith and discussed relief for the Petitioner.

3. Additionally, The Court did clarify the contention of the Petitioner regarding infringement of its mark “as the prior adopter and user of the mark which was registered in its favor in the US”.

Since the Petitioner does not hold any registration in its favor in India of the mark BPI SPORTS either as a word mark or as a device mark, infringement under Section 29 of the Act cannot be entertained.