Snacks, Similarity, and Statutory Rights: The MODERN v. MARDEM Trademark Dispute

Introduction

In the recent case of M/s Modern Snacks Pvt. Ltd. v. Kamran Ghani & Anr.[1], the Delhi High Court granted a rectification petition under the Trade Marks Act, 1999, ordering the trademark “MARDEM”, which was registered in favor of Respondent No. 1, Mr. Kamran Ghani, to be cancelled. The case is noteworthy because it upholds the sanctity of the Trade Marks Register, prior user rights, phonetic similarities, and deceptive similarity.

Facts

The Petitioner, M/s Modern Snacks Pvt. Ltd., a Company duly incorporated in 2005, has been in the business of manufacturing and marketing a wide range of food items, including snacks, namkeens, confectioneries, etc. The Petitioner claims ownership and continuous use of its mark ‘MODERN’ (both in English and Hindi) since 1990, through its predecessor-in-interest, M/s Modern Namkeen Bhandar. The said mark has been used extensively in relation to goods under Class 30, particularly namkeens and snacks. The Petitioner also owns other “MODERN” comprising trademark registrations, alongside copyright registrations for the associated label marks and artistic works under the Trade Marks Act, 1999 and the Copyright Act, 1957 respectively.

Respondent No. 1, operated its business under the name ‘MARDEM NAMKEEN’, offering similar food products, thereby directly competing with the Petitioner. The Respondent had registered the trademark ‘MARDEM’ in Class 30 on July 22, 2018. The Petitioner filed a Rectification Petition under Sections 47 and 57 of the Trade Marks Act, claiming that the disputed mark was phonetically and deceptively similar to its own well-established mark, seeking cancellation of the registration.

Procedural History

The matter was initially before the Intellectual Property Appellate Board (IPAB) but was transferred to the Delhi High Court following the abolition of the IPAB under the Tribunals Reforms Ordinance, 2021. Despite multiple notices, Respondent No. 1 did not appear or contest the proceedings. His authorized attorney indicated that he lacked jurisdiction to represent him in this instance. As a result, the Court moved against him ex parte.

Petitioner’s contentions and evidence

The Petitioner claimed that it had been continuously and exclusively using the mark, “MODERN” since its adoption in 1990. The Petitioner further emphasizes that its mark has acquired secondary meaning and distinctiveness in the market, primarily due to extensive use, advertising, and promotion. To support the same, documentary evidence pertaining to sales records, web extracts, invoices, and documentation showcasing its online presence on platforms such as Amazon and eSuppliers India, were provided. The Copyrights in its labels and domain names comprising the Petitioner’s marks, were also given some acknowledgement.

Furthermore, it was contended that despite registering the impugned mark, “MARDEM” the Respondent had not used it or any similar mark in connection with the goods covered by the registration. This lack of usage, as well as the absence of any intention to utilize the mark, created concerns that the Respondent was attempting to abuse the Petitioner's goodwill without a legitimate business purpose.

Decision and Reasoning

The Court allowed the Petition and directed cancellation of the trademark ‘MARDEM’, holding that:

• The Petitioner had convincingly demonstrated prior adoption and continuous use of the mark ‘MODERN’ since 1990.

  
  

• The impugned mark ‘MARDEM’ was phonetically and deceptively similar to the Petitioner’s mark, “MODERN”, especially considering the similar syllabic structure and the same class of goods (Class 30). It noted that while there may be some minor differences in the appearance of the marks, their phonetic similarity was striking, especially considering that both marks are used for similar goods. The minor difference between the letters 'N' and 'M' did not suffice to eliminate the likelihood of confusion, particularly given the nature of the products and the consumer base.

  
  

• The impugned mark was applied for by a person who had previously acted as a vendor to the Petitioner, thereby being fully aware of the Petitioner’s presence, marks and business.

  
  

• The likelihood of confusion among average consumers in the same geographic market was high, particularly considering that both businesses operate in the Hindi-speaking belt and cater to a similar consumer base.

  
  

The Court articulated the applicable legal standards on deceptive similarity, confusion, and the test of average consumer perception by citing the Supreme Court's rulings in Amritdhara Pharmacy v. Satya Deo Gupta (1962)[2], Khoday Distilleries Ltd. v. Scotch Whiskey Association (2008)[3], and Ruston & Hornsby Ltd. v. Zamindara Engineering Co. (1969)[4].

Significance and Observations

This decision reinforces the long-standing jurisprudence that phonetic similarity alone can constitute deceptive similarity under Indian Trademark law. The Court rightly emphasized the importance of maintaining the purity of the Register and protecting prior users from mala fide registrations aimed at free riding on established goodwill.

Further, the judgment illustrates how prior business relationships and insider knowledge can be weaponized to dilute or undermine a legitimate brand, and how courts may infer bad faith in such circumstances.

Crucially, the Court took adverse note of Respondent No. 1’s continued absence and failure to respond, observing that the pleadings had remained uncontroverted. This procedural default led to the presumption that the allegations raised by the Petitioner—including assertions of bad faith, prior vendor relationship, and lack of bona fide intent to use—stood admitted. In trademark disputes, where subjective elements like intent and market confusion are central, such lack of rebuttal significantly tilted the scales in favour of the Petitioner.

Conclusion

The present case serves as a cautionary precedent against opportunistic trademark registrations and emphasizes the principle that trademarks must not only be distinctive but also used in good faith. This judgment strengthens the legal position of prior users and reinforces judicial sensitivity toward consumer confusion, particularly in price-sensitive and vernacular markets.

References:

1. C.O. (COMM.IPD-TM) 76/2021

2.  1963 AIR 449

3.  AIR 2008 SUPREME COURT 2737

4. 1970 AIR 1649