In an important and one of its kind decisions, the Delhi HC in M/s. VANS Inc. USA (‘VANS’) v. FCB Garment Tex India (P) Ltd. (‘FCB’) and Anr.^[1] and VANS v. Fateh Chand Bhansali and Another^[2], held that the declaration of a well-known trademark cannot give an automatic, unabridged and unmitigated right to a proprietor to apply for rectification against prior users of trademarks.

This ruling came in the context of VANS initiating rectification petitions against the marks ‘IVANS’ and ‘IV ANS NXT’ owned by FCB (‘FCB Marks’). While VANS had applied for the ‘VANS’ trademark in India in the year 1992, it did not commence its use, and the products bearing the ‘VANS’ brand were launched in the Indian market only in the year 2011. The trademark ‘VANS’ was declared a well-known trademark by the Indian Trade Marks Registry as recently as February 19, 2024. FCB on the other hand applied for the trademark ‘IVANS’ in the year 2002 claiming use since the year 1999.

The Court dismissed the rectification petitions inter alia for the following reasons: (i) While FCB was using the FCB Marks only for apparel, VANS was using the trademark primarily for footwear and FCB had no intention to venture into ‘footwear’; (ii) relying on the ‘first in the market’ test, FCB was the prior user of the FCB Marks in India whereas VANS launched products in the Indian market only in 2011, more than 19 years after VANS applied for the trademark; and (iii) there were significant differences in the customer base, the relevant price points and the nature of the stores through which the rival products were being sold and therefore, there was no likelihood of confusion. Lastly, the Court also observed that the declaration of VANS as a well-known trademark does not have any bearing as FCB cannot suddenly lose rights over their own trademark which are being prior in time as compared to the ‘VANS’ trademark.

^[1] C.O. (COMM.IPD-TM) 161/2021 & I.A. 15763/2022.

^[2] C.O. (COMM.IPD-TM) 416/2022.