Isabella Mariam

The High Court of Delhi Single Bench of Justice Amit Bansal set aside the cancellation of a trade mark registration, citing procedural irregularities and violation of statutory requirements under the Trade Marks Act, 1999. The Court observed that the Registrar of Trade Marks failed to comply with Rule 100 of the Trade Marks Rules, 2017, which mandates a minimum notice period before initiating suo moto cancellation proceedings. The Bench held that the impugned order dated 15th December 2022 could not be sustained and accordingly allowed the appeal, reinstating the appellant’s trade mark registration.

The case revolved around a trade mark dispute concerning the registration of Trade Mark No. 3986970 in Class 6 by the appellant, Romil Gupta, trading as Sohan Lal Gupta, engaged in the manufacturing and trading of self-tapping metal screws and self-drilling screws. The appellant claimed bona fide use of the trade mark since 2013.

Also Read: Insurer's Statutory Liability Cannot Be Wiped Out Without Proof | Supreme Court Restores Tribunal's Award And Holds That The Obligation To Satisfy The Third-Party Claim Revives In Full

The application for registration was filed on 30th October 2018, asserting usage since 27th February 2013. The Registrar of Trade Marks issued an examination report on 26th November 2018, raising objections under Section 11 of the Trade Marks Act. The appellant responded on 13th December 2018, but inadvertently applied for the incorrect version of the mark. A correction application was filed on the same date to amend the applied mark to the intended subject mark, citing clerical error.

The registration was granted on 23rd June 2019. Subsequently, on 24th July 2019, Respondent No. 2 filed a rectification application seeking cancellation of the registration and also initiated a civil suit for permanent injunction, resulting in an ex-parte ad interim injunction on 7th September 2019, later vacated on 3rd October 2019.

Respondent No. 2 also lodged a complaint on 29th July 2020 with the Registrar of Trade Marks, alleging that the amendment constituted a substantial alteration not permissible under Rule 37 of the Trade Marks Rules, and further contending that no fresh user affidavit was submitted.

On 31st October 2022, the Registrar issued a notice under Section 57(4) of the Act, providing the appellant only 21 days to respond and fixing the hearing for 17th November 2022. The appellant argued that the notice period violated Rule 100, which requires at least one month’s notice.

During the hearing, the appellant submitted that the amendment only involved inverting the letters ‘SD’ and did not constitute a substantial alteration. It was further argued that the Registrar failed to provide any finding on the substantiality of the amendment and improperly expanded the grounds for cancellation without due notice.

The respondent contended that the appellant waived the objection by participating in the hearing and that the amendment materially changed the visual representation of the mark. They further alleged that documents submitted by the appellant were forged and that no fresh user affidavit was filed.

Justice Amit Bansal examined the statutory framework and procedural history, observing that the Registrar failed to comply with mandatory procedural requirements.

The Court recorded: “The notice issued was in clear violation of the mandate of Rule 100 of the Rules which provides that the Registrar of Trade Marks is required to give at least one month’s notice under Section 57(4) of the Act.”

The Court further noted that the notice dated 31st October 2022 failed to adhere to even the 21-day period mentioned therein and scheduled the hearing prematurely within 17 days, thereby breaching principles of natural justice.

Referring to the respondent’s submission that the appellant waived the objection by attending the hearing, the Court held: “The requirements and timelines prescribed under Rule 100 of the Rules are mandatory. There cannot be any question of waiver of such requirements and timelines by the appellant.”

On the issue of substantial alteration, the Court observed: “The amendment carried out by the appellant in the present case was that the two letters ‘S’ and ‘D’ were originally placed horizontally in the applied mark, which were subsequently placed vertically by way of the amendment. The subject mark continued to have the same four letters ‘S’, ‘D’, ‘H’ and ‘P’ wherein the letters ‘S’ and ‘D’ continued to be in smaller font as compared to the letter’s ‘H’ and ‘P’. By no stretch of imagination can this be termed as ‘substantial alteration’.”

The Court also criticized the Registrar for expanding the grounds of cancellation without providing the appellant an opportunity to respond to those new grounds, stating: “The respondent no.1 also erred in passing the impugned order on the basis of grounds which were not even mentioned in the notice issued to the appellant.”

The High Court set aside the impugned order dated 15th December 2022, reinstating the trade mark registration of the appellant. The appeal was allowed with the following directive: “The impugned order passed by the respondent no.1 is unsustainable, and the same is set aside. Consequently, the present appeal stands allowed.”

Also Read: Opposing Bail For Refusing To Incriminate Oneself Is A Draconian Practice | Punjab And Haryana High Court Grants Anticipatory Bail In Theft Case Citing Article 20(3) Protection

It was also clarified that the present decision would have no bearing on the rectification petition already filed by Respondent No. 2, which remains pending for independent adjudication.

The Registry was directed to forward a copy of the judgment to the Office of the Controller General of Patents, Designs, and Trade Marks for compliance.

Advocates Representing the Parties:

For the Appellant: Mr. Sanjeev Sindhwani, Senior Advocate with Mr. Rajat Bhardwaj, Mr. Sandeep Khatri, Mr. Gaurav Sindhwani, Ms. Shivani Negi, and Mr. Ujjwal Bhardwaj.

For Respondents: Ms. Nidhi Raman, CGSC with Mr. Debasish Mishra, Mr. R. Venkat Prabhat, SPC with Ms. Kamna Behrani, Mr. Ansh Kalra, and Mr. Divyanshu Sinha, Mr. J. Sai Deepak, Senior Advocate with Mr. Vipin Wason, Ms. Stuti Wason, Mr. Avinash Sharma, and Mr. Sanjay Pandita.

Case Title: Romil Gupta Trading as Sohan Lal Gupta vs. Registrar of Trade Marks & Anr.

Neutral Citation: 2025: DHC:3697

Case Number: C.A.(COMM.IPD-TM) 1/2023

Bench: Justice Amit Bansal

[Read/Download order]