9 judgments of the Delhi High Court, the Madras High Court and 1 other court applying Trade Marks Act s.18, from 2023–2026, each with a headnote by BRB Legal.
Rectification allowed and MLOGRAND removed from the Register. Two independent grounds. First, the petition pleaded non-use and went unanswered, so the averment was deemed admitted and removal followed under section 47(1)(a) on that ground alone. Second, MLOGRAND is a colourable imitation of LEGRAND: the letter E was merely replaced by O, the dominant element GRAND was subsumed whole, the prefix M is insignificant, and the French pronunciation of the two is identical. The respondent had also applied for a device mark and abandoned it once opposed, which the Court read as evidence of mala fide intent to associate with the petitioners.
Appeals dismissed and the refusal of registration upheld, though for different reasons than the Registrar gave. The judgment turns on what "intention to use" requires: an applicant must have a definite and present intention to deal in the goods at the time of registration, a resolve or settled purpose, not a mere general intention of extending the business at some future time to anything it might think desirable. That the applicant had applied in 1994 but had still not commenced business or sales in India by the time opposition proceedings began over a decade later in 2007 was an additional, though not decisive, factor weighing against it.
Appeal allowed on a short and useful point: the Registrar had accepted the marks for advertisement by orders giving one set of reasons, and then rejected the same marks by an order whose reasoning was completely opposite. The Court held that the two orders could not coexist and set aside the impugned order on that ground alone.
The finding of the National Company Law Tribunal that the trade mark "Gloster" was an asset of the corporate debtor was set aside as perverse, in gross violation of natural justice, and beyond the scope of the enquiry, which concerned approval of the resolution plan. The Supreme Court held that a transaction sought to be brought within sections 43, 45, 46, 47 or 66 of the Insolvency and Bankruptcy Code requires specific material to be pleaded and an application moved by the Resolution Professional, with the party against whom relief is sought put on notice. The appellate tribunal's own finding on where title vested was equally beyond jurisdiction and was also set aside.
Appeal allowed and an order dismissing an opposition set aside. Although the goods differed and an earlier Supreme Court decision on the same mark had gone the other way, the Court identified a distinguishing feature: the applicant had adopted the word without any prefix or suffix and had reproduced the appellant's style of writing it, all in small letters. Given the appellant's long-established reputation in the mark, the phonetic identity combined with the imitated styling made the mark deceptively similar, and a customer familiar with the appellant's mark would be misled.
Appeal dismissed and the refusal of an interim injunction upheld. The Supreme Court compared BLENDERS PRIDE and IMPERIAL BLUE with LONDON PRIDE and found no visual, phonetic or structural resemblance capable of supporting infringement or passing off, resemblance being a sine qua non for both. The judgment works through the anti-dissection rule, the dominant feature test, the principle that no exclusive right attaches to common or descriptive terms, and the average consumer with imperfect recollection, and discusses the post-sale confusion doctrine as it has developed in the United Kingdom. Although the appellants held registrations for the composite marks, no evidence showed that any element, such as bottle shape, colour scheme or the word PRIDE, had acquired distinctiveness or secondary meaning. An earlier unsuccessful challenge to the use of PRIDE, where it was held that they had no independent registration for the word alone, also told against them.
Application deemed abandoned under section 21(2) for want of a counter statement, set aside. The Registry's own instructions showed no acknowledgment of service of the notice of opposition on the applicant or its agent, and counsel admitted the email had bounced. The notice having never been served, the application could not be treated as abandoned.
Applications deemed abandoned under section 21(2) for failure to file counter statements, quashed. The Registry relied on Rules 17 and 18 and on a dispatch record showing a status of success, Rule 18(2) deeming a communication served at the time of sending the email. The Court held that section 21(2) runs the two month period from the receipt by the applicant of the copy of the notice of opposition. Rule 18(2) incorporates a legal fiction which, construed literally, would mean no more than proof of transmission, and so construed it would not be in consonance with the section, particularly given that the statute does not incorporate deemed receipt and that a substantive right of the applicant is at stake. The prescribed time limit therefore runs only from the date of receipt of the email, and a dispatch record does not qualify as evidence of receipt.
During the appeal the appellant obtained registration of the corresponding word mark in the same class, without any accompanying disclaimer. That being so, the Registrar could not object to the device mark in that class, and the appeal succeeded on that ground alone, the Court expressly declining to go into whether the mark was otherwise registrable under section 9.
