13 judgments of the Delhi High Court, the Supreme Court of India and 2 other courts applying Trade Marks Act s.57, from 2024–2026, 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.
Applications for leave to cross-examine a witness in rectification proceedings dismissed. The Court held that Rule 7(viii) of the Delhi High Court Intellectual Property Rights Division Rules 2022 permits cross-examination only in exceptional circumstances and on recorded reasons, and that where a specific rule governs the question, recourse to the general provisions of the Code of Civil Procedure, including Order XIX Rule 2, is unwarranted and impermissible. On the facts, the challenge was laid under section 9(1)(a) on the ground that the mark lacked distinctive character, so the use of the mark was not the subject matter of the petition and an application to cross-examine on user was misconceived.
Rectification allowed and KREOFLAT removed from the Register in Class 5, the mark having been registered despite the prior existence of PANKREOFLAT in the same class and without properly considering the earlier mark. The judgment restates the rule that the tests of confusing similarity are modified for medicinal products: confusion between pharmaceutical preparations can produce physically harmful results, so greater protection is required and a lesser quantum of proof of confusing similarity is called for than in an ordinary case.
Appeal allowed and an injunction granted against use of a mark sharing the appellant's dominant textual element. Following the Supreme Court in the AMBAL and ANDAL case, the Division Bench held that where the main feature of rival composite marks is phonetically similar and likely to confuse the average consumer, visual dissimilarity between the whole logos does not mitigate infringement. It added that a word mark registration entitles the proprietor to injunct not only a deceptively similar word mark but also any device mark whose prominent feature is textual, where that text infringes. Once a prima facie case of infringement is made out, an injunction must follow under Midas Hygiene.
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, an order dismissing an opposition set aside, and the resulting registration expunged. Two points carry beyond the facts. The respondent had earlier been authorised for six months to sell goods under the appellant's mark on e-commerce platforms, which the Court read as implicit acceptance of the appellant's rights. And a mark owner is always entitled to expand its goods and services as a natural consequence of business expansion, so viewed commercially there could be confusion that the competing goods stem from the same trade source. With identical marks and similar goods sharing a consumer base and trade channels, section 11 barred registration.
Operation of the judgment dismissing the suit stayed pending appeal, and the interim injunction that had run in the trial court since January 2012 continued. The Division Bench held that the trial court's finding that the defendants were the prior user was perverse, the plaintiff's mark having been registered abroad in 1954 and in India on April 25, 1979, against the defendants' adoption in 1992, with no justifiable explanation for that adoption. Questions on whether the person who affirmed the plaint had to enter the witness box, and whether the suit was maintainable for want of filing by an authorised person, were left to the hearing of the appeal.
Rectification allowed and the respondent's registration of KONVIO NEER in Class 35 cancelled. The petitioner had registered KONVIO and KONVIO NEER in Class 11 with effect from 2018 and had already obtained a decree of permanent injunction against the respondent in a civil suit, while the respondent's impugned registration took effect only from December 2022. Adoption of an identical mark for identical and similar goods years later could not be treated as honest or bona fide, and the registration was held to contravene sections 9, 11, 12 and 18 of the Trade Marks Act.
Notice issued by the Registrar quashed, with directions on how section 57(4) is to be worked. The Court held that section 57(4) does not qualify the source from which the Registrar may gather information, so information may come from anyone including a person aggrieved, since it is usually such a person who would know of something that sullies the register. The Registrar must treat what he receives as information and not as a complaint, however it is described, and must filter it to ensure the appeal to his suo motu power is not a camouflage for private interests, in much the same way as the intent behind a purported public interest litigation is tested. If the information would support a private rectification under section 57(1) or (2), the Registrar should step back. Section 57(4) contemplates no pre-cognizance enquiry; an inquiry is held only once the decision to act suo motu is taken.
Refusal set aside on two grounds. The Registrar had relied on an inability to ascertain whether a rectification petition filed by the applicant against the cited mark was pending elsewhere. The Court held that the pendency of a rectification petition between the applicant and the rival claimant need not per se concern the Registrar, whose task is to evaluate the application under section 9 or section 11(1), and that an inability to verify it is no ground at all to refuse: if particulars were wanted, the applicant could have been asked for them. On the user claim, the Registrar had overlooked the licence document under which the applicant permitted a sister entity to use the mark. The Court also recorded that nothing in the Act prohibits a fresh application where an earlier one was treated as abandoned for non-response to the examination report, the merits never having been considered.
Opposition declared abandoned on the Registry's assertion that it had emailed the counter statement, set aside. The Registry invoked the presumption under the illustration to section 114 of the Evidence Act that official acts are done promptly and correctly, which would have left the opponent to prove a negative it could not establish. The Court held that beyond a self-saving statement something more was required of the Registry, and that where substantial rights are at stake the benefit of the doubt should go to the parties rather than the statutory authority. It reminded the Registry that it is a statutory functionary which must show the utmost sensitivity to the rights of parties before it rather than a hyper-technical disciplinarian attitude, and asked how, if it is keen to go by the Rules, it explains almost a year's delay in forwarding the counter statement: he who enforces discipline must also show some degree of respect for discipline at his own level.
The burden of proving service lies on the Registry. An opponent who asserts that the counter statement was never served makes a negative assertion and cannot be asked to prove the impossible; a statement uploaded on the Registry's website saying it was served by email is not adequate proof, and the Registry never produced the email itself. The availability of rectification is no answer to a breach of natural justice.
