Calcutta HC Sets Aside Trademark Registrations In Dunlop Dispute | Arbitrary Discretion And Procedural Irregularities Vitiate Registrar’s Orders
Isabella Mariam
The High Court of Calcutta Single Bench of Justice Ravi Krishan Kapur has set aside eight trademark registration orders passed by the Registrar of Trademarks in favor of a private company, directing the respondent authority to reconsider each matter after granting all parties a full opportunity of hearing. The Court remanded the disputes for a fresh decision and instructed the proceedings to be concluded within three months from the date of communication of the order. It clarified that no final determination on the merits had been made, and all issues would remain open for adjudication in accordance with law.
The matter originated from eight appeals involving a series of trademark applications for registration of the word mark “Dunlop” across different classes, ranging from telecommunications and materials treatment to beverages and educational services. The respondent, Glorious Investment Limited, had applied to register the mark on a “proposed to be used” basis. The Deputy Registrar of Trademarks allowed these registrations, finding that while the marks were identical to those previously held by the appellants, the goods were completely different.
The appellants opposed these registrations, citing their longstanding use and ownership of the “Dunlop” mark. They argued that the impugned orders lacked reasoning and were passed in violation of natural justice, particularly pointing to a lack of notice and opportunity to respond to various assignment deeds filed by the respondent. These deeds included a sequence of ownership changes from Dunlop India Ltd. to Ruia Sons Pvt. Ltd., then to Vrisha Services Pvt. Ltd., and finally to Glorious Investment Ltd., based on assignment documents allegedly executed during a period when Dunlop India Ltd. was under liquidation.
The appellants submitted that no intimation had been provided regarding these assignments, which were carried out in disregard of the Companies Act, 1956 and without proper procedural compliance. They further contended that the applications for recordal of these changes were filed in the incorrect statutory form. According to them, Form TM-23 or TM-24 was necessary for recording assignments, but the respondent instead filed under Form TM-16, applicable only for clerical corrections.
During hearings, the appellants were denied adjournments despite medical grounds having been cited. They asserted that the Trademark Rules of 2002, which governed the original proceedings, did not limit the number of adjournments, and their request should not have been denied under the 2017 Rules. They claimed that the Registrar had created an illusion of a full hearing while effectively conducting an ex parte proceeding.
In response, Glorious Investment Limited denied the allegations and stated that the registrations were legally justified. They argued that the mark “Dunlop” was not inherently well-known and that its use across different classes did not automatically grant exclusive rights across all categories. They defended the procedural conduct of the Registrar and submitted that the appellants had already availed three adjournments.
The respondent Registrar adopted conflicting positions across the various appeals. In one matter, the Registrar conceded the order was indefensible, while in others, it was defended as fully reasoned and compliant with law.
Justice Ravi Krishan Kapur began by referring to Lord Hewart’s well-known principle: “Justice must not only be done, but manifestly and undoubtedly be seen to be done.” He stated, “In the facade of proceduralism, there has been an arbitrary and unjustified exercise of discretion.” The Court noted that the hearings had been conducted in a manner that contravened natural justice, particularly pointing to the denial of a fair opportunity for hearing.
The Court referred to Rule 50 of the Trademark Rules, 2017 and held: “Any interpretation which eludes or frustrates the recipient of justice is not to be followed.” It added, “A procedural law is not ordinarily to be construed as mandatory.”
On the impugned orders, the Court observed: “There is no ‘why’ for the ‘what’ to stand on in any of the impugned orders.” It cited Uniworth Resorts Ltd. v. Ashok Mittal, reiterating that “Reasons are the safeguard against the ipse dixit of the decision-making process.”
The Court further recorded: “A pretence of reasons or ‘rubber-stamp’ reasons is not to be equated with a valid decision-making process.” It stated that the orders lacked clarity on which documents or evidence had been considered and that “Reason is the life of law.”
Addressing the issue of fraudulent assignments, the Court noted: “Fraud unravels all.” It held that these allegations were serious and deserved to be brought to the attention of the Registrar. It found merit in the appellant’s argument that the purported assignments were backdated and executed during the winding-up proceedings of Dunlop India Ltd.
Referring to the legal status of the mark “Dunlop,” the Court stated: “The finding in the impugned orders that ‘Dunlop’ is a well-known trademark is unreasoned and unsubstantiated.” It added that the Registrar had failed to apply the statutory tests under Sections 11(6) to 11(9) of the Trademarks Act, 1999 in determining whether the mark qualified as well-known.
It further recorded that the inconsistencies in the respondent’s submissions—particularly regarding which statutory forms were filed—raised additional concerns. The Court cited Section 45 of the Trademarks Act and clarified the limited jurisdiction of the Registrar, stating that where the validity of an assignment is in dispute, the matter must be adjudicated by a competent court.
The Court issued the following conclusive directions:
“For the above reasons, all the impugned orders in each of the appeals i.e. IPDTMA No. 14 of 2024, IPDTMA No. 15 of 2024, IPDTMA No. 16 of 2024, IPDTMA No. 17 of 2024, IPDTMA No. 18 of 2024, IPDTMA No. 19 of 2024, IPDTMA No. 20 of 2024 and IPDTMA No. 21 of 2024 is set aside.”
Each matter was remanded to the Registrar for fresh consideration: “Each of the matters is remanded to the respondent authorities with a direction to reconsider the same after granting an opportunity of hearing to all the parties.”
The Court fixed a strict timeline: “The above exercise is to be concluded and disposed of within a period of three months from the date of communication of this order.”
Finally, it clarified the scope of the remand: “It is made clear that any expression on the merits of the case is tentative and not final. All issues are left open to be decided afresh in accordance with law.”
Advocates Representing the Parties
For the Petitioners: Mr. Debnath Ghosh, Senior Advocate; Mr. Sushovit Dutt Majumder, Advocate; Ms. Pubali Sinha Chowdhury, Advocate; Mr. Biswaroop Mukherjee, Advocate; Ms. Mini Agarwal, Advocate
For the Respondents: Mr. Jaydeep Kar, Senior Advocate; Mr. Siddhartha Datta, Advocate; Ms. Trisha Mukherjee, Advocate; Mr. Siddharth Dey, Advocate; Mr. Chetan Kabra, Advocate
Case Title: Dunlop International Limited v. Glorious Investment Limited and Anr.
Case Number: IPDTMA/14/2024 to IPDTMA/21/2024
Bench: Justice Ravi Krishan Kapur
[Read/Download order]
