38 judgments of the Madras High Court, the Delhi High Court and 1 other court applying Trade Marks Act s.91, from 2023–2026, each with a headnote by BRB Legal.
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.
Order treating an application as abandoned for failure to file a counter-statement quashed, and the application and opposition restored. The judgment is notable for what the Court said beyond the facts: it reminded the Registry of an earlier direction to adopt a technical solution providing proof that an email has been received by the recipient, warning that unless the authorities act on this, every rejection on the ground of abandonment will be challenged and the authorities themselves will be overburdened.
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 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.
Refusal of a mark as descriptive set aside. The Court held that the reasoning was imaginary and based on conjecture: the order never clarified which products consumers were supposed to be choosing between, and there was no factual material to support the conclusion that the mark denoted a variety of goods. Decisively, the application was filed on a proposed-to-be-used basis, so there was no prior use from which any conclusion about consumer options could be drawn, and the order was silent on that aspect.
The order recorded that it was passed after hearing the submissions of the applicant's authorised agent. On instructions the Registry confirmed that no oral hearing had been given and that the order rested on the reply to the examination report. On that short ground alone the order was set aside.
A hearing notice fixed the review petition for hearing on 3 May. The review was dismissed on 3 April, a month before the date fixed. The dates were not disputed, and until the applicant had been heard on the date fixed, the question of deciding the review did not arise.
Refusal under section 9(1)(b) set aside. The objection rested on an erroneous assumption that the mark was a word mark: what was applied for was an artistic device using no word at all, and the allegedly descriptive word appeared only in the trade mark description forming part of the application, which the applicant agreed to amend. The devices were in fact used on the packaging of a product whose own mark had been registered since 1967, and documents evidencing use from January 2019 had been filed with the appeal.
Refusal under section 11 quashed. The registration of the first cited mark had expired and had not been renewed, as the impugned order itself confirmed, and the second cited mark was subject to an opposition still pending before the Registrar. No prejudice would be caused by reconsidering the application afresh, and the applicant was permitted to put further evidence on record to show its mark was neither identical nor deceptively similar to the cited marks.
Writ seeking a direction to the Registry to receive a notice of opposition filed beyond the four month period in section 21, the delay being attributed to the pandemic. Dismissed: the opposition was filed outside the statutory period and the Registry could not be directed to receive it, the remedy available being an appeal under section 91.
The impugned order was passed by an officer engaged on contract as a Hearing Officer or Associate Manager, who is not competent to pass a quasi-judicial order. Following this Court's earlier ruling to that effect, the order was set aside and the matter remanded with all points kept open.
Refusal of a device mark set aside and the matter remanded. The show cause hearing notice bore no proper dispatch date and was never served, the appellant learning of it only on the day of the hearing during a routine follow-up, and its letter raising that grievance was not considered before the refusal issued. The Court held that principles of natural justice demand a right of hearing unless excluded by law, and that no person is to be condemned unheard. The respondent fairly agreed that a hearing should be given.
Three appeals allowed, the opposition orders set aside and the matters remanded to the Registrar to be decided by a competent officer. The orders had been passed by Associate Managers of Trade Marks engaged on contract. The Court held that the Registrar's function under the Trade Marks Act is quasi-judicial, that the power to delegate under section 3(2) is a power to delegate administrative functions only, since quasi-judicial functions must be performed independently and not under the superintendence or direction of anyone, and that Associate Managers so appointed are not empowered to pass quasi-judicial orders. No post of Associate Manager appears in the 2011 Recruitment Rules. In two of the appeals the officer's own engagement letter showed his term had expired before the date of the order.
The hearing was by video and was disrupted by connectivity problems. Two days later the applicant wrote saying it had been unable to make proper submissions and asked for another opportunity, got no response, and a year later the application was refused. That alone was enough to set the order aside, without going into the merits.
A Form TM-M deleting the conflicting goods was treated as filed out of time, the delay being attributed to Registry system downtime. The cited mark was in any event only proposed to be used, and the appellant held the same mark in another class. The refusal was set aside.
A delay of 425 days was not condoned, the explanation being specious, cursory and flimsy, and the merits failed too. The cited marks were structurally and phonetically similar and registered for a similar category of goods, and to draw a distinction between tyres and automobiles would be too tenuous. That two cited marks co-exist on the register is no excuse for a third.
A class was wrongly stated in the application and the Registry says it emailed a defect notice, treating the application as abandoned when the defect went uncured. The question was not whether the email was issued but whether any intimation of its despatch reached the applicant or its agent, a facility that did not exist when the order was passed. The benefit of the doubt went to the applicant.
Appeals by an opponent against orders allowing Form TM-16 applications under section 22, substituting the assignee's name as applicant in two pending applications, dismissed. The appellant had not appeared since May 2022 and had taken no steps to pursue the appeals. In any event the appeals lay only against the substitution: the oppositions themselves were unaffected, and the impugned orders had expressly preserved the opponent's contentions on merits for the final hearing and awarded it costs for the inconvenience.
A refusal under section 11(1) fell on every ground. Evidence of use cannot be rejected for want of turnover and advertising figures where invoices, online material and the applicant's own registrations in other classes are on record. A cited mark shown as 'objected' in the search report cannot be treated as valid, subsisting and the prior user. The rule that a combination of two known words is not an invented word is correct but has no application to a device mark. And a certificate under section 65B of the Evidence Act is required only for an electronic record within the producer's own possession, control or custody, so none can be demanded for third party news articles, which the Registry can access and verify for itself.
A Form TM-16 to amend the applicant's name in opposition proceedings was rejected only because it came about five years after the company was formed. The amendment was largely consequential to the transfer of the partnership firm's assets, including the mark, and its liabilities to the company, and should not have been refused on delay alone.
The Registrar's restoration, on review, of an application treated as abandoned for want of prosecution was upheld. Rule 56(3) of the 2002 Rules says an application 'may be treated as abandoned', which vests a discretion and creates no deemed abandonment, unlike section 21(2) of the Act or Rule 45 of the 2017 Rules. With no provision in the Act to set aside an ex parte order and no grounds of review in section 127(c), the third ground in Order XLVII Rule 1 of the Code of Civil Procedure, any other sufficient reason, was properly invoked.
Refusal under section 11 set aside and remanded. The cited registrations had all been filed long after the appellant's adoption of the mark in 1933, and the appellant held the corresponding domain name and showed extensive global use. On that material the case could fall within section 12, which permits registration by more than one proprietor on honest concurrent use or other special circumstances, and the Registrar was directed to consider it.
A delay of 1,506 days in appealing against a deemed abandonment was not condoned. The Registry produced despatch numbers and dates for both the examination report and the abandonment order, and no change of agent had ever been notified to it, so the claim of ignorance was unconvincing and reflected a lack of due diligence.
Of the four cited marks one was the applicant's own and one had been abandoned. For the remaining two the applicant produced letters of consent from the registered proprietor, together with registrations of the identical mark obtained in other jurisdictions on the strength of the same consents, which indicated co-existence.
Five identical refusals fell together. A status table showed the citations abandoned or facing removal for non-renewal, and the applicant's mark was a coined phrase presented as a device with distinctive colouring, font and a stylised symbol, while the citations carried one or other of the two words as prefix or suffix. The applicant's own registrations of the identical mark and of its prominent feature in other classes also defeated the objection that the mark was non-distinctive.
Two dictionary words used together did not directly describe a positive quality of the services and only hinted at their intended nature, so the mark was suggestive at the highest even though it had the potential of being commendatory. A user affidavit showed use in India since 2013, identical registrations existed in several jurisdictions, and half of the ten cited marks were the applicant's own.
The companion appeal. There were hardly any differences between the refused device mark and the applicant's own registered formative marks, which carried the same logo and the same distinctive word, and both of those are prominent features of the mark refused. The objection that it lacked distinctiveness could not stand.
Refusal under section 11(1)(a) set aside where the current status of the cited marks, handed over at the hearing, showed two lapsed for non-payment of the renewal fee, two refused and two abandoned. The only surviving citation was a device mark prima facie dissimilar to the applicant's device. The mark was allowed to proceed, subject to a disclaimer.
Refusal under sections 9(1)(a), 9(1)(b) and 11(1)(a) set aside. The combined term was not a dictionary word but a joining of two distinct words which, taken together, suggested a brand relating to the care of colours and so was suggestive at best for cosmetics, and it was written in a stylised manner that set it apart. Continuous use since 2013 gave some basis for a claim of acquired distinctiveness. The relative grounds objection fell away because the applicant removed from the mark the element it shared with the cited marks.
A one-line refusal under sections 9 and 11. The identical mark was already registered to the applicant in three other classes and in use since 1988, two of the three citations belonged to a sister concern in the same group of companies which had no objection, and the third had been abandoned after the applicant opposed it.
Refusal under sections 9(1)(b), 11(1)(a) and 11(1)(b) set aside. Although one element of the composite mark could be correlated with milk products, paired with the second element it produced a mark that did not describe the goods, so the mark was suggestive at best and not descriptive. Compared as a whole the mark was prima facie dissimilar to the cited marks except for one common word, and the appellant's own earlier registration of the word mark had not even been cited. The order recorded that no documents of use were on record when an affidavit giving sales figures from 1994-95 onwards had been filed and was on the record on the date of hearing.
Refusal under section 11(1)(a) and (b) set aside where the proprietor of the cited mark had already consented to the appellant's use and registration for the very goods applied for. That consent formed part of a settlement recorded on a joint application under Order XXIII Rule 3 of the Code of Civil Procedure, on which the earlier suit between the same parties had been decreed. The settlement had been brought to the Senior Examiner's notice in the reply to the examination report but was overlooked, and a binding agreement forming the basis of a court decree made the reasons in the impugned order unsustainable.
A composite of two ordinary dictionary words which has no dictionary meaning of its own, and which alludes to the purpose of the services without explicitly stating it, is suggestive and not descriptive. The applicant also held the identical mark registered in two other classes. On the relative ground, a single shared word did not make the marks similar when each was compared as a whole.
Where a dictionary word is used in conjunction with another and the combination draws no instant connection with the kind of goods, the mark is at best suggestive. The objection rested on the generic half of the mark, over which no exclusivity was claimed or asserted, and the applicant already held the distinctive half registered as a word mark in the very class refused.
A challenge to an order expediting a rival's application under Rule 34 of the 2017 Rules was dismissed with costs. The Rule imposes only three conditions: the official application number must have been received, so the request cannot be filed before or together with the application itself; the request must be on Form TM-M; and the prescribed fee must be paid. Nothing confines it to the pre-examination stage, and reading it that way would defeat its purpose, which is to fast-track applications stuck in the backlog. Expedited processing dilutes no prescribed timeline: it fast-tracks administrative steps only, and an opposition is still heard under Rule 50. Under the 2002 Rules the Deputy Registrar had a discretion; under the 2017 Rules every applicant may request expedition on payment. An allegation of bias without evidence was an unwarranted attack of no consequence.
The conclusion in the order was not supported by any reasons at all, the examination report was mechanically followed without its contents being discussed, and only the first word of a composite mark was considered, leaving out the suffix, the byline and the device elements. The Registry's own counsel accepted that there were no reasons and asked for a remand.
Allowed. A composite label mark comprising a wave or splash of milk with the words "JUST" and "MILK" was held capable of distinguishing. The use of "JUST" in relation to milk is plainly arbitrary, and in conjunction with "MILK" the mark becomes suggestive rather than descriptive. The appellant's existing registrations for the word "JUST" for milk and milk products supported the conclusion, and the objection under section 9 did not sustain.
A tweaked place name was registrable. Under the Registry's own Manual the name of a sea, a lake or a mountain is accepted prima facie for goods not associated with that geographical feature, and the mark had no reputation for the class 18 goods applied for. The one device mark cited against it was prima facie dissimilar, and had already been got past in other classes.
