In trademark disputes, the real point of friction is rarely the mark in isolation. It is the point at which a later entrant’s adoption intersects with an existing market presence built around the same element. Once that overlap exists, the enquiry becomes less about creative variation and more about priority, similarity, and the likelihood of confusion in the ordinary course of trade.
The Madras High Court’s decision in Sugar Brands v. Sugar Pop Bath and Body LLP is a clean illustration of that principle. Sugar Brands, operating in the cosmetics space since 2015 under marks built around the word SUGAR, successfully challenged the registration of SUGAR POP obtained by a later entrant claiming use from 2018. The Court found prior use established, the marks likely to cause confusion, and the registration made without sufficient cause.
Factual Background
1. The Petitioner: Sugar Brands Pvt. Ltd.
Sugar Brands Pvt. Ltd. carries on business in cosmetics and related products. It holds multiple registrations for marks comprising the element SUGAR, including SUGAR COSMETICS, SUGAR STRAND OUT, S SUGAR, and variants thereof, spanning various classes relevant to the cosmetics trade. The user claim in each registration dates from 1 February 2015.
The petitioner’s evidence included invoices from January 2016, online articles about the brand, news coverage of awards received by the company’s promoters, e-commerce platform listings, social media extracts, and a Chartered Accountant certificate specifying sales turnover and advertising expenditure from 2015 to 2020. Notably, the petitioner had also applied for and obtained its own registration for the mark SUGAR POP in Class 35 with effect from 25 January 2022.
2. The Respondent: Sugar Pop Bath and Body LLP
The first respondent, M/s Sugar Pop Bath and Body LLP, obtained registration for the mark SUGAR POP under Application No. 4074848 in Class 3, covering soaps, perfumes, and cosmetics. The application for registration was filed in 2019. In its counter statement, the respondent claimed use from 2018.
The respondent initially participated in the proceedings by filing a counter statement. However, counsel for the respondent later informed the Court that she had no instructions and would no longer appear. The respondent was set ex parte on 22 January 2026 after remaining unrepresented at the next listing. The matter thereafter proceeded for recording of ex parte evidence.
Issues Before the Court
- Whether the petitioner had established prior use of the SUGAR formative marks sufficient to ground a rectification claim.
- Whether the impugned mark SUGAR POP was likely to cause confusion or deception in light of the marks involved and the goods covered.
- Whether the registration of Trade Mark No. 4074848 was made without sufficient cause, warranting rectification under Section 57 of the Trade Marks Act, 1999.
Judicial Reasoning
1. Prior Use Established
The Court examined the petitioner’s documentary record and found that the user claim in each of the petitioner’s registrations dated from 1 February 2015. The invoices at Ex. P12 evidenced commercial use from January 2016. The respondent, in its counter statement, claimed use only from 2018. The respondent’s application for registration was filed in 2019.
On this basis, the Court made a direct finding:
Therefore, the conclusion that follows from the evidence on record is that the petitioner is the prior user.
This finding was the foundation of the subsequent analysis. Once prior use was established in favour of the petitioner, the respondent’s registration became vulnerable to the further enquiries of similarity and confusion.
2. Similarity of Marks and Goods
The Court noted that the petitioner’s marks each carried the word element SUGAR as their prominent feature. The impugned mark, SUGAR POP, incorporated the same element. Both parties operated in the cosmetics trade, with the respondent’s registration covering soaps, perfumes, and cosmetics in Class 3. The goods were therefore substantially similar, if not identical, to the petitioner’s field of business.
Applying these findings, the Court held:
Considering the marks and the substantially similar businesses, the use of the impugned mark is likely to cause confusion or deception among the public.
The Court also observed, as a matter of factual record, that the petitioner had itself applied for and obtained registration for the mark SUGAR POP in Class 35. This supported the petitioner’s claim that SUGAR POP was part of its own mark family and that the respondent’s use of the same name in overlapping goods was not an independent adoption.
3. Failure of Due Diligence by the Registrar
The examination report for the respondent’s application, exhibited as Ex. P10, contained a search report dated 20 February 2019 indicating that there were no conflicting marks. The petitioner’s counsel pointed out that multiple SUGAR formative registrations were already on the register by that date.
The Court accepted this submission and addressed it directly:
As contended by learned counsel for the petitioner, it appears that the Registrar of Trade Marks did not exercise due diligence while carrying out a search for conflicting marks.
This observation carries significant practical weight. It confirms that the grant of registration following examination is not conclusive evidence that the mark was properly assessed. The Court was willing to look behind the examination record, evaluate the register as it stood at the date of the examination, and conclude that the search was inadequate.
4. Registration Without Sufficient Cause
Having established prior use, similarity of marks, overlapping goods, and likelihood of confusion, the Court drew the statutory conclusion:
Hence, I conclude that the impugned mark was entered on the register without sufficient cause. Consequently, rectification is warranted.
The Court allowed the petition and directed that Trade Mark No. 4074848 be removed from the register within four weeks of receipt of the order. There was no order as to costs.
Governing Law
Trade Marks Act, 1999: Section 9, Section 11, Section 12, Section 18, Section 29, Section 34 and Section 57 | Trade Marks Rules, 2017
