5 judgments of the Supreme Court of India, the Delhi High Court and 1 other court applying Trade Marks Act s.45, from 2023–2026, each with a headnote by BRB Legal.
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.
Appeals dismissed and an injunction upheld in a dispute over a restaurant name. The appellants could not be treated as permissive users, the mark in question being the very mark registered in favour of the respondents, and the appellants' use for restaurants and like activities was allied and cognate to the registered specification. A prima facie case of infringement with likelihood of confusion under section 29(2)(b) was therefore made out, and following Midas Hygiene an injunction had to follow.
Opposition deemed abandoned under Rule 45(2) because the letter electing not to adduce evidence was emailed to the Mumbai office rather than Chennai. Set aside: the communication was addressed to the Chennai Registrar, so there was substantial compliance with Rule 45(1). Grant of a registration certificate during a timely appeal under interim stay does not make the appeal infructuous. Remanded for decision on merits in three months.
A notesheet noting entering two persons as subsequent proprietors under section 45 set aside for want of a hearing. The mark stood registered in the names of three individuals trading as a firm, so any change in the register could be effected only after hearing the original registrants. Remitted for a fresh, reasoned decision after hearing both sides.
Order deeming an opposition abandoned under Rule 45(2) for late evidence set aside. Rule 45(1) requires the evidence to be left with the Registrar, not filed, and Rule 8 gathers making, serving, leaving, sending and paying into a single nebulous parenthesis. Where a provision affecting a valuable commercial right is ambiguous, the benefit of the ambiguity goes to the citizen. The opponent had tried to e-file on the last day, when the Registry website was not functioning, couriered the evidence the next day, and it reached the office three days late. That attempt falls within the broad embrace of Rule 8. Procedural provisions are owed deference but cannot be read so rigidly as to eviscerate substantive rights, the right to oppose being as sacrosanct as the right to seek registration. The Court expressly left open whether the Registrar has any power to extend time under section 131 read with Rules 8, 45 and 109.
