13 judgments of the Calcutta High Court, the Madras High Court and 3 other courts applying Constitution of India s.226, from 2023–2025, each with a headnote by BRB Legal.
Writ allowed and a refusal based on pre-grant opposition set aside, on a point of procedure that recurs in opposition practice. Where the objections raised in the First Examination Report differ from those in the representation under section 25(1), the Controller is obliged to hold two separate hearings, one on the pre-grant opposition and one on the application under examination, and to pass separate orders dealing with each. The Court also held that the Controller erred in failing to consider the applicant's expert affidavit and technical evidence, and that conducting an independent scientific analysis without giving the applicant an opportunity to address it was a serious infirmity and a breach of natural justice.
A granted patent lapsed when the renewal fee, though paid to the agent and acknowledged, was never filed, and the proprietor learned of the lapse only years later. Refusing the restoration application would waste the time and effort of the invention and would be a perversity of justice on a technical ground.
The register showed the wrong proprietor for a mark registered in 2002 because the original Form TM-1 had not been fully uploaded during digitisation. The Registry produced both versions, accepted the error and was directed to correct the digitised record within two weeks.
Writ allowed, the refusal to stay the suit set aside and the application under section 124 of the Trade Marks Act granted. The trial court had considered only the proviso to section 124(1)(a) and had misdirected itself by not applying section 124(1)(b), which governs where rectification proceedings are already pending. The Court also rejected the contention that invalidity had not been pleaded: although one paragraph of the written statement did not take the point, another expressly disputed the validity of the registration, pleaded that the user claim from 1992 was unsupported by any document, and reserved liberty to seek rectification. Where rectification is pending, the suit must be stayed pending its disposal.
A company that had changed its name filed Form TM-P for four registrations and went to court five weeks later without having sent any reminder. The Registry's complaint that the petitioner rushed to court was not without merit, but the application being purely procedural, disposal was directed.
Writ petitions allowed and the State circular of January 30, 2024 on section 52(1)(za) of the Copyright Act quashed. The State defended the circular as an informational document putting the public on notice of the marriage ceremony exception. The Division Bench held it was nothing of the kind: the respondents' own affidavit distinguished a disc jockey playing recordings for commercial gain from recordings played on a venue speaker as an integral part of the ceremony, which is an exercise in interpreting section 52(1)(za) and belongs to the court seized of the facts of each case. The circular had to be read as a whole for its overall tenor and could not be saved in part.
Writ seeking a direction to the Registrar to act on a Form TM-P filed under section 45(1) read with Rules 75 and 76(2) to record an assignment of a registered mark to a newly incorporated company. Disposed of without any direction: no material had been placed on record from which the Court could assume the application was in fact pending before the Registrar, and in the absence of those details it would not direct him to proceed. Liberty reserved to pursue the application before the Registrar if one is pending.
An opposition filed in 2020 was still unheard four years later. The Registry resisted on grounds of backlog and equality among applicants, but gave no figures in its counter affidavit on how many oppositions are pending or how long one takes. Without that material the backlog plea could not be accepted.
An application of 1987 was advertised in 1994, the opposition dismissed in 2009 and the certificate issued in 2019, dating back to a registration that had expired long before. The Registry then pleaded limitation on renewal. He who is at fault can hardly claim locus standi within the statutory scheme to insist on limitation.
Writ against an interlocutory order admitting an opponent's affidavit in support of opposition, dismissed with exemplary costs. The applicant had not appeared before the Registrar to resist that application and had never raised deemed abandonment under Rule 45 there, so the plea could not be taken for the first time in a writ petition for want of factual support. Mahesh Gupta v. Registrar of Trademark was held inapplicable on these facts.
A writ seeking restoration of a mark to the register had been pending since 2017 and was listed for dismissal with nobody appearing for the petitioner. Given the limited nature of the relief, the Court still directed the Registrar to decide the pending representation on merits after a hearing.
A writ against an order of the Appellate Board did not survive, the related rectification applications having been transferred to the Madras High Court under the Tribunals Reforms Act, 2021. Section 33(3) sends a pending matter to the court where it would have been filed, which may then proceed from any stage or afresh.
Two writs sought to quash a rival's application and a certificate, and to compel consideration of an amendment representation. An enquiry on the objections was already pending before the Registrar, so the parties were left to take part in it rather than have the Court decide first.
