Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 19.10.2026
Delhi HC: Composite Trademarks Must Be Evaluated as a Whole Under Section 11(1) of Trade Marks Act
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Delhi High Court has set aside the Trade Marks Registryβs refusal to register the word mark βKAMA CASAβ, holding that the Registry wrongly split the composite mark into separate elements and compared them with distinct earlier device marks.
Background of the dispute
Modi Woodspace Private Limited applied on 29 August 2023 to register KAMA CASA as a proposed-to-be-used word mark in Classes 20 and 35. The Trade Marks Registry objected under Section 11(1) of the Trade Marks Act, 1999, which concerns the likelihood of confusion with earlier trademarks.
After hearings, the Registrar refused the application on 21 May 2025. The refusal was based on earlier Class 20 registrations containing the terms βKAMAβ and βCASA.β The Registrar concluded that combining those words in βKAMA CASAβ could confuse consumers and traders about the commercial origin of the goods.
Modi Woodspace appealed to the Delhi High Court under Section 91 of the Act.
The key issue: Can a composite mark be broken into parts?
The central issue was whether the Registrar could assess the applicantβs mark by isolating the words βKAMAβ and βCASAβ and comparing each part separately with different prior marks.
The Court held that this approach was incorrect. It applied the anti-dissection rule, a settled trademark principle requiring a mark to be assessed as a whole rather than broken into individual components.
According to the Court, KAMA CASA is a composite word mark and should have been evaluated in its entirety. The cited prior marks were device or label marks with their own visual and design elements. The Registry could not disregard those elements, extract the words βKAMAβ and βCASA,β and use them separately to reject the composite word mark.
Why the refusal was flawed
The Court identified two material distinctions:
Different mark types: The applicant sought registration of a word mark, while the cited marks were device marks.
Improper comparison: The cited device marks could not be reduced to their word elements alone. Their overall visual presentation and device features formed part of the registered marks.
The Court found it difficult to understand how the Registrar could conclude that the composite word mark βKAMA CASAβ was deceptively similar to separate device marks containing βKAMAβ and βCASA,β particularly when each cited mark had distinctive device elements.
It further observed that the mere fact that the marks fell in the same class did not establish similarity or a likelihood of confusion.
Relevance of other βCASAβ registrations
During the appeal, Modi Woodspace submitted a Trade Marks Registry search report showing numerous registrations containing the word βCASAβ in the same or similar classes. Although this report had not been submitted to the Registrar during the original examination process, the Court considered it relevant.
The presence of multiple registered marks containing βCASAβ may be important when evaluating whether that word, in the relevant market context, can by itself justify refusal of a later composite mark. The Court therefore directed the Registrar to consider the search report in the renewed examination.
Courtβs decision
In its judgment delivered on 22 April 2026, the Delhi High Court:
quashed the refusal order dated 21 May 2025;
revived trademark application No. 6087367 for KAMA CASA;
remitted the application to the Registrar of Trade Marks for a fresh, de novo consideration; and
required the Registrar to complete that reconsideration within four months.
The Court clarified that its observations were made for the purpose of remand and should not be treated as a final finding that the mark must be registered.
Significance for trademark applicants
The ruling reinforces that trademark similarity assessments must be based on the overall commercial impression of competing marks. A registry or court should not artificially dissect a composite mark and assemble objections from separate earlier registrations unless the law and the facts justify that conclusion.
For applicants, the decision also highlights the value of submitting marketplace and registry search evidence early. Evidence of numerous similar registrations may help place a disputed word or element in context, especially where the applicantβs mark combines common or widely used terms into a distinct overall expression.
Ultimately, the case confirms that a Section 11(1) objection requires a careful comparison of the marks as consumers encounter them, not an isolated comparison of selected words taken out of their full visual and commercial context.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 25.09.2026
Delhi High Court: Trademark Refusal Must Be Based on Reasoned Analysis, Not Mere Similarity of Marks
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Delhi High Court has set aside the refusal of Lucy Group Ltd.βs application for registration of the trademark βGEMINIβ in Class 09, holding that the Registrar of Trademarks failed to consider crucial factual and legal submissions placed before it.
Justice Jyoti Singh held that the Registrar’s order was βunreasoned, non-speaking and reflects non-application of mindβ, observing that a quasi-judicial authority is legally required to consider all relevant contentions and issues raised by the parties before arriving at its decision.
The High Court, however, did not decide whether GEMINI was ultimately entitled to registration. Instead, it remanded the trademark application to the Registrar for fresh consideration and directed a decision within 10 weeks after hearing Lucy Group.
Lucy Group Ltd. filed the appeal under Section 91 of the Trade Marks Act, 1999, challenging the Registrar’s order dated 17 April 2025, which had refused registration of its trademark under Application No. 5247072 dated 14 December 2021 in Class 09.
According to the company, it first used the GEMINI mark in India at the Elecrama trade event in Bengaluru on 13 February 2016, where it promoted and displayed products to potential customers and business associates.
Lucy Group subsequently filed a convention trademark application in Great Britain on 16 June 2021 and, on 14 December 2021, applied to register GEMINI in India as a convention application.
Trademark Registry Cites Four Earlier βGEMINIβ Marks
On 4 January 2022, the Registry issued an Examination Report raising an objection under Section 11(1) of the Trade Marks Act.
Four earlier marks were cited on the ground that Lucy Group’s proposed GEMINI mark was identical or similar to marks already appearing on the Register in respect of identical or similar goods.
Following hearings and written submissions, the Registrar refused registration on 17 April 2025. Lucy Group thereafter filed Form TM-M on 15 May 2025 seeking detailed grounds for refusal, but according to the appeal, those grounds were never supplied.
Lucy Group: Registrar Failed to Compare the Actual Goods
Lucy Group’s principal grievance was that the Registrar had merely noted the existence of four earlier registrations and concluded that there was a likelihood of confusion because of the allegedly similar goods.
The company argued that the Registrar had failed to undertake a meaningful comparative analysis of the nature and function of the goods, their trade channels and the relevant consumers.
It also challenged the Registrar’s finding that adoption of GEMINI was not bona fide, arguing that this was not a ground of refusal under Section 11(1).
Lucy Group’s GEMINI Products Are Industrial SCADA and RTU Systems
A central aspect of Lucy Group’s case was the highly specialised nature of the products for which registration was sought.
The application covered industrial-grade products including SCADA (Supervisory Control and Data Acquisition) systems and GEMINI RTUs (Remote Terminal Units).
The RTUs were described as multipurpose units intended for advanced feeder automation and for controlling and monitoring pole- and ground-mounted medium-voltage switchgear.
Lucy Group relied on product catalogues, technical specifications and its corporate profile to show that it operated in the specialised field of power automation, grid monitoring and infrastructure control systems.
The company also claimed continuous and extensive use of GEMINI in India since February 2016 and argued that the specialised nature, application and trade channels of its goods distinguished them from the products covered by the cited registrations.
Cited Mark 1: βWires and Cablesβ
The first cited GEMINI registration, No. 728627 in Class 09, covered βwires and cables.β
Lucy Group argued that wires and cables were basic electrical transmission components, whereas its SCADA systems, RTUs and industrial switchgear were advanced control systems integrated with software and supplied as part of specialised engineering projects.
It further claimed that the two marks had co-existed in the Indian market since 2016 without reported confusion and that GEMINI had acquired secondary distinctiveness among its customers.
Cited Mark 2: Television Broadcasting and Entertainment Products
The second cited registration, No. 953168, was also for GEMINI in Class 09 and belonged to Sun TV Network Limited.
Lucy Group argued that the goods associated with this registration related to the television broadcasting and entertainment sector, whereas its own products concerned industrial power-distribution and control solutions.
According to Lucy Group, the nature, purpose and consumer base of the respective goods were entirely different. It also informed the Court that it had filed a rectification petition on the ground of non-use against the second cited mark on 30 July 2022, which remained pending.
Third Mark Abandoned; Fourth Filed on βProposed to Be Usedβ Basis
Lucy Group also raised specific objections regarding the remaining two cited marks.
It submitted that Registration No. 3164101 for GEMINI in Class 09 had been abandoned before the date of the impugned order.
As regards the fourth mark, Application No. 3939124, Lucy Group pointed out that it had been filed on a βproposed to be usedβ basis and that its filing was later than Lucy Group’s claimed first use of GEMINI.
The detailed comparison reproduced on pages 5β9 of the High Court order further contrasted Lucy Group’s specialised industrial products with the goods associated with each cited mark, including wires and cables, broadcasting/electronic goods, consumer electronics and portable spectroscopic instruments.
Same Trademark Class Does Not Automatically Mean Goods Are Similar: Lucy Group’s Argument
Lucy Group argued that goods cannot be treated as similar merely because they fall within the same Nice Classification class.
According to the company, the correct enquiry was whether the respective goods were commercially and functionally similar, rather than whether there was a theoretical or broad overlap in their classification.
It also emphasised that Section 11 requires consideration of likelihood of confusion βon the part of the publicβ, yet the Registrar had not identified the relevant public or adequately examined the consumers involved.
Registrar Defends Refusal Under Section 11
The Registrar defended the order, arguing that the GEMINI application was barred by earlier identical marks appearing on the Trade Marks Register.
It contended that Lucy Group’s mark was phonetically, visually and structurally identical to the cited marks and that the relevant goods were similar or identical, creating a likelihood of confusion under Section 11(1).
In particular, the Registrar argued that electrical goods such as wires, cables and switchgear may travel through the same trade channels and reach common classes of consumers such as electricians, contractors and engineers.
According to the Registrar, treating specialised industrial products as wholly different from cables created an artificial distinction because cables and switchgear could be closely connected in the modern electrical industry.
Delhi High Court Finds Crucial Submissions Were Ignored
After examining the Examination Report, Lucy Group’s reply and its detailed written submissions, the High Court found a fundamental defect in the Registrar’s decision-making process.
Justice Jyoti Singh observed that none of the crucial submissions had been considered.
The registration had essentially been refused because the applied-for mark was considered phonetically and visually similar to the cited marks and the goods were treated as similar.
However, the Registrar had not examined the distinctions Lucy Group sought to establish regarding the nature and function of the competing goods.
Registrar Failed to Consider Abandoned and Later-Filed Marks
The Court specifically noted that the Registrar had also failed to consider Lucy Group’s submissions that:
the third cited mark had been abandoned; and
the fourth cited mark was filed on a βproposed to be usedβ basis much after Lucy Group’s claimed first use.
The High Court observed that these crucial facts and legal issues were not even referred to in the impugned order.
Significantly, the Court stated that had these matters been considered and adjudicated, the decision might have been different.
Quasi-Judicial Authorities Must Deal With Relevant Contentions
The Court then reiterated an important principle governing administrative and quasi-judicial decision-making.
It held that even a quasi-judicial authority is under a legal obligation to consider all contentions and issues raised by the parties, insofar as they are relevant, before taking a decision.
Viewed against that requirement, the Registrar’s order was held to be:
βclearly unreasoned, non-speaking and reflects non-application of mind.β
This became the decisive basis for judicial interference.
High Court Does Not Decide Trademark Registration on Merits
Importantly, the Delhi High Court expressly stated that it was not entering into the merits of Lucy Group’s claim for registration.
The Court therefore did not finally rule that the cited GEMINI marks were dissimilar, that there was no likelihood of confusion, or that Lucy Group was necessarily entitled to registration.
Instead, it remanded the matter to the Registrar for a fresh decision.
This distinction is significant because Lucy Group secured a procedural appellate victory, while the substantive question of whether GEMINI should ultimately be registered remains for reconsideration by the Trademark Registry.
Fresh Decision Within 10 Weeks
The High Court directed the Registrar to freshly consider Application No. 5247072 after hearing Lucy Group and taking into account all the points raised in response to the Examination Report.
The Registrar was specifically directed to consider documents already on record, including the:
priority documents;
user affidavit;
written submissions dated 6 August 2024;
written submissions dated 17 February 2025; and
written submissions dated 15 March 2025.
The fresh decision must be taken within 10 weeks from 27 March 2026. The Court also directed that no new documents would be permitted before the Registrar during the reconsideration.
The appeal was accordingly allowed and disposed of.
Why the Judgment Matters for Trademark Examination
The ruling highlights an important procedural safeguard in trademark registration proceedings. The existence of an identical or similar earlier mark may trigger scrutiny under Section 11, but a refusal order must still demonstrate that the Registrar has considered the material factual and legal submissions placed by the applicant.
Where an applicant specifically distinguishes the competing goods by their function, market, consumer base and trade channelsβor raises issues concerning abandonment, priority and claimed prior useβthose contentions cannot simply be ignored.
At the same time, the judgment should not be understood as establishing a general rule that goods within the same class are necessarily dissimilar merely because their applications differ. The High Court deliberately left the merits open for the Registrar’s fresh determination.
Key Takeaway
The Delhi High Court’s decision reinforces that trademark refusal orders must be reasoned, speaking orders reflecting consideration of relevant evidence and contentions.
A mechanical conclusion based on similarity of marks and broadly stated similarity of goods, without addressing material objections raised by the applicant, may not withstand appellate scrutiny.
For Lucy Group, the judgment reopens the path to registration of GEMINI in Class 09, but does not itself grant the trademark registration. The Registrar must now reconsider the application on its merits within the timeline fixed by the Court.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 24.09.2026
Delhi HC Expands Protection for Well-Known Marks: Formal Declaration Not a Precondition Under Section 11(2)
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
In a significant ruling on the protection of well-known trademarks against dilution, the Delhi High Court has cancelled the registration of the mark ZORA in Class 24 after finding it deceptively similar to the globally recognised ZARA trademark.
Justice Jyoti Singh held that the Registrar of Trade Marks had applied an incorrect test by dissecting the rival marks into βZA/ZOβ and βRAβ, rather than comparing ZARA and ZORA as a whole.
The Court further delivered an important interpretation of Section 11(2) of the Trade Marks Act, 1999, holding that an earlier trademark need not have first obtained a formal declaration as a βwell-known trademarkβ from a court or the Registrar before its proprietor can invoke Section 11(2). What matters is whether evidence establishes that the mark satisfies the statutory requirements for protection as a well-known mark.
The High Court ultimately allowed ZARA owner Industria De Diseno Textil S.A.’s appeal, quashed the Registrar’s order dated 8 February 2024, cancelled ZORA’s registration and directed the Trade Marks Registry to remove the mark from the Register.
Dispute Between ZARA and ZORA
Industria De Diseno Textil S.A. (Inditex) approached the Delhi High Court under Section 91 of the Trade Marks Act, 1999, challenging the Registrar’s decision dismissing its opposition to registration of ZORA.
Inditex asserted that it conceived and adopted the trademark ZARA in 1975 and subsequently developed it into an internationally recognised fashion and lifestyle brand.
In India, the company stated that ZARA had been used through contract manufacturers since 1986-87. Its Indian registrations included ZARA in Class 25 from 1993 and Class 24 from 2003, along with registrations covering several other classes and products.
Significantly, the Delhi High Court had earlier held in Industria De Diseno Textile S.A. v. Oriental Cuisines Pvt. Ltd. & Ors., 2015 SCC OnLine Del 9565 that ZARA was a well-known mark based on its sales, advertising, reputation in India and transborder reputation.
Aggarwal Bag House Obtained Registration for ZORA
Respondent No. 2, trading as Aggarwal Bag House, applied on 30 October 2019 for registration of ZORA, claiming use since 3 June 2016.
The application covered fabrics, including plain, coated, laminated, impregnated and waterproof fabrics falling under Class 24.
After the application was advertised in the Trade Marks Journal, ZARA opposed the registration. However, by an order dated 8 February 2024, the Registrar rejected the opposition and permitted ZORA to proceed to registration. A registration certificate was issued the following day.
Registrar Found ZARA and ZORA Dissimilar
The Registrar’s reasoning rested substantially on the view that ZARA and ZORA were neither phonetically nor visually similar.
For phonetic comparison, the Registrar separated the marks and compared βZOβ with βZAβ, reasoning that the βoβ and βaβ sounds were different.
For visual comparison, the Registrar again focused on the prefixes βZOβ and βZAβ, despite both marks sharing the suffix βRAβ.
The Registrar also considered the parties’ trade channels different. ZORA was being used for raw laminated fabric sold in rolls to bag manufacturers, whereas ZARA sold finished products through its stores and websites.
The absence of evidence of actual confusion was also taken into consideration.
ZARA challenged each of these findings before the High Court.
Delhi HC: Section 11(2) Does Not Require a Prior Formal Declaration of Well-Known Status
One of the most significant aspects of the judgment concerns the meaning of a well-known trademark under Section 11(2).
Respondent No. 2 argued that ZARA could not claim the expanded protection available to well-known trademarks because it had not been formally declared a well-known mark or included in the Registrar’s list.
The High Court rejected this argument.
Justice Singh noted that Section 11(2) uses the expression that the earlier mark βis a well-known trade mark in Indiaβ. It does not say that the mark must have already been formally βdeclaredβ well-known by a court or entered in the Registrar’s list.
The Court held that the relevant enquiry is whether the mark satisfies the statutory requirements of Section 2(1)(zg) and the factors contemplated under Section 11(6).
Accordingly, the right to oppose registration under Section 11(2) flows from the well-known nature and reputation of the earlier mark, rather than from the existence of a prior formal declaration.
Registrar Can Determine Well-Known Status in Opposition Proceedings
The High Court further clarified that the Registrar is empowered, while deciding an opposition, to determine whether an earlier mark qualifies for protection as a well-known trademark.
This determination can be based on factors such as the duration and extent of use, promotion, recognition among the relevant public, registrations and previous enforcement of rights.
The Court therefore held that there is no statutory requirement under Section 11(2) that the proprietor must first obtain a separate declaration of well-known status before invoking the provision in opposition proceedings.
The Court found support for this interpretation in the Madras High Court’s decision in Lego Juris A/S v. Gurumukh Singh and Another, 2024 SCC OnLine Mad 4858, where similar protection had been considered in the context of the LEGO mark.
ZARA Satisfies Requirements of a Well-Known Mark
Turning to the evidence, the High Court found substantial material establishing ZARA’s reputation.
The Court noted the brand’s large international retail and online presence, extensive sales, manufacturing expenditure, advertising, diversified product portfolio and recognition among consumers.
It also relied upon the earlier Delhi High Court decision recognising ZARA’s reputation and transborder goodwill.
The Court concluded that ZARA satisfied the statutory factors under Section 11(6) read with Section 2(1)(zg) and was therefore entitled to protection as a well-known trademark under Section 11(2), irrespective of the absence of a separate formal declaration.
ZARA and ZORA Must Be Compared as a Whole
The High Court next found a fundamental error in the Registrar’s method of comparing the rival marks.
Justice Singh reiterated the settled anti-dissection principle: competing trademarks must ordinarily be compared as a whole, rather than being broken into individual syllables or components.
The Court relied upon the Supreme Court’s decision in Corn Products Refining Co. v. Shangrila Food Products Ltd., which held that similarity must be judged by considering the marks in their entirety.
The Registrar, however, had separated ZARA into βZA-RAβ and ZORA into βZO-RAβ and then focused on the distinction between βZAβ and βZOβ.
The High Court held that this approach was contrary to settled trademark law.
Difference of One Vowel Does Not Save ZORA
Comparing the marks as a whole, the Court found that ZARA and ZORA are phonetically deceptively similar.
Both are four-letter word marks. Both begin with βZβ, end with βRAβ, and possess the same overall consonantal structure. The principal difference is the substitution of the vowel βAβ with βOβ.
The Court reasoned that while ZARA is pronounced βZA-RAβ and ZORA as βZO-RAβ, both end with the same βRAβ sound and carry a similar rhythm. To a consumer of average intelligence and imperfect recollection, their overall sound would be almost alike.
The Court therefore held that the Registrar had erred in finding the marks dissimilar.
Dissimilar Goods Do Not Defeat Protection Under Section 11(2)
Another important question concerned the nature of the competing goods.
ZORA argued that it dealt with polyester fabric used as inner lining for bags, whereas ZARA’s business involved fashion, bags and home products sold through a very different retail network.
The High Court held that this argument was ultimately irrelevant for the purpose of Section 11(2).
Unlike Section 11(1), which deals with confusion arising from identical or similar marks in relation to identical or similar goods or services, Section 11(2) specifically extends protection to a well-known earlier mark even where the later mark is sought to be registered for dissimilar goods or services.
The essential question is whether use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier well-known mark.
Court Finds Trade Connection Between ZARA and ZORA Goods
Although it was unnecessary to conclusively establish similarity of goods for Section 11(2), the Court nevertheless found that the competing commercial activities were not wholly disconnected.
Both marks were registered or sought to be registered in Class 24, which covers textiles and fabrics.
ZARA’s commercial activities extended beyond finished clothing to bags, home products and interactions with manufacturers, suppliers and traders dealing in textiles and related products. ZORA’s polyester fabric was used in bags.
The Court therefore found a connection in the course of trade, rejecting the argument that the parties operated in entirely unrelated commercial spheres.
Actual Consumer Confusion Not Required Under Section 11(2)
The High Court also found that the Registrar had applied the wrong test by looking for evidence of actual consumer confusion.
The Court drew a clear distinction between Sections 11(1) and 11(2).
Under Section 11(1), likelihood of confusion and association between marks is central. Section 11(2), however, focuses on protecting the reputation and distinctive character of a well-known trademark against dilution, unfair advantage and detriment, including where the goods are dissimilar.
Accordingly, absence of evidence that consumers had actually been confused by ZORA did not defeat ZARA’s opposition.
Court Finds ZORA Would Dilute ZARA’s Distinctiveness
The Court further found that ZARA had acquired extensive reputation well before ZORA’s claimed adoption in 2016.
It concluded that ZORA had no honest reason or due cause for adopting a deceptively similar mark and that its use could take unfair advantage of ZARA’s reputation.
The judgment also considered evidence concerning the commercial growth of ZORA after adoption of the mark and the manner in which ZORA appeared prominently on packaging of polyester rolls.
In the Court’s assessment, such use could lead customers and traders to believe that the polyester rolls were supplied by, associated with, or commercially connected to ZARA, thereby diluting the distinctive character and reputation of the earlier mark.
ZORA Registration Cancelled; Registry Directed to Remove Mark
The Delhi High Court ultimately found that the Registrar’s rejection of ZARA’s opposition was legally flawed.
Accordingly, the Court quashed and set aside the Registrar’s order dated 8 February 2024 and cancelled registration No. 4310686 for ZORA in Class 24.
The Registrar of Trade Marks was directed to remove ZORA’s entry from the Register and rectify the Register within two months, with the Court specifically referring to maintaining the βpurity of the Registerβ.
The appeal filed by Industria De Diseno Textil S.A. was accordingly allowed, along with disposal of the pending application.
Key Legal Takeaways
The judgment establishes an important distinction in India’s trademark-registration regime: formal inclusion in the Registrar’s list of well-known trademarks is not a prerequisite for invoking Section 11(2). A proprietor may establish through evidence in opposition proceedings that its earlier mark possesses the statutory attributes of a well-known trademark.
The ruling also reinforces the anti-dissection rule. Trademark comparison cannot ordinarily be reduced to identifying isolated differences in individual vowels or syllables. The marks must be assessed from the standpoint of their overall visual, structural and phonetic impression.
Most importantly, where Section 11(2) applies, the enquiry moves beyond conventional consumer confusion. The provision protects the distinctiveness and reputation of well-known marks from dilution and unfair advantage even in relation to dissimilar goods or services.
For trademark owners, the decision substantially reinforces the ability to oppose later marks that come too close to established brands, even where a formal well-known-mark declaration has not previously been obtained.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 23.09.2026
Notice Under Section 132 Mandatory Before Treating Trademark Application as βAbandonedβ
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Delhi High Court has held that a trademark application cannot be treated as βabandonedβ under Section 132 of the Trade Marks Act, 1999 without first issuing a notice to the applicant requiring it to remedy the alleged default within a specified period.
Justice Jyoti Singh allowed an appeal filed by RITES Limited, formerly Rail India Technical and Economic Service Limited, against an order of the Registrar of Trade Marks dated 25 November 2025, which had treated RITESβ trademark application as abandoned.
The Court held that notice under Section 132 is a βsine qua nonβ before an application can be declared abandoned and found that the Registrar’s action in the present case was legally untenable because RITES had not been given the statutory opportunity to rectify the alleged default.
RITES Sought Registration of Its Trademark in Class 37
According to the order, RITES commenced use of the trademark βRITESβ on 26 March 2008 in relation to construction, infrastructure consultancy and allied services.
On 25 May 2023, the company filed Trademark Application No. 5951147 in Class 37 seeking registration of the mark.
A hearing notice was subsequently issued on 12 September 2025 and the matter came up before the Hearing Officer on 12 November 2025.
The dispute arose over the filing of additional documents intended to substantiate RITESβ claimed use of the mark from 26 March 2008.
Hearing Officer Informally Indicated Filing of Additional Documents
RITES contended that during the hearing on 12 November 2025, the Hearing Officer had informally indicated that additional documents should be filed.
However, according to the High Court’s record, no written direction was passed and no timeline was fixed for filing those documents.
The very next day, on 13 November 2025, RITES uploaded the additional documents.
A technical/clerical error, however, resulted in those documents being uploaded against a related trademark application instead of the application presently under consideration.
Registrar Treated Trademark Application as βAbandonedβ
On 25 November 2025, the Registrar of Trade Marks treated RITES’ application as abandoned.
The impugned order proceeded on the basis that RITES had been required to file documents supporting its claim of use from 26 March 2008 within two days, but had failed to do so even after 12 days.
RITES challenged that decision before the Delhi High Court under Section 91 of the Trade Marks Act, 1999.
RITES: Documents Were Filed Next Day, But Against Wrong Application
Before the High Court, RITES argued that the Registrar had wrongly treated its application as abandoned and had failed to give any cogent reason apart from the alleged non-filing of documents within two days.
The company maintained that it had, in fact, uploaded the user documents on 13 November 2025βthe day immediately following the hearing.
The problem was that, due to a clerical oversight, the documents were inadvertently uploaded against Application No. 515449 rather than the trademark application involved in the present appeal.
RITES Relied on Its Existing Registrations in Classes 37 and 42
RITES also argued that the Trade Marks Registry had itself previously recognised its proprietary rights in the mark RITES by granting multiple registrations of the same mark, including registrations in Classes 37 and 42.
According to the company, those registrations represented statutory recognition of its longstanding use and distinctiveness and supported its expectation of consistent treatment by the Registry.
The High Court’s order, however, ultimately turned on the procedural safeguards contained in Section 132 rather than finally determining RITES’ substantive entitlement to registration.
Section 132 Is Not an Automatic or Punitive Provision, RITES Argued
RITES submitted that Section 132 is not intended to operate as a punitive mechanism.
Under the provision, the Registrar may treat an application as abandoned where, in the Registrar’s opinion, the applicant has defaulted in prosecuting its application.
But RITES emphasised that this power is accompanied by an express procedural safeguard: before declaring the application abandoned, the Registrar must issue a notice requiring the applicant to remedy the default within the period specified in the notice.
The applicant may also seek an opportunity of being heard.
Only when the applicant fails to remedy the default within the specified period can the application be treated as abandoned.
RITES argued that no such statutory notice had been issued in its case.
Registrar Defended Abandonment Order
The Registrar of Trade Marks defended the impugned decision.
It was argued that despite RITES having been granted time to produce documents substantiating its claim of use from 26 March 2008, the company failed to furnish the required material.
The Registrar therefore maintained that there was no reason for the High Court to interfere with the abandonment order.
Delhi HC: Section 132 Was Violated Rather Than Complied With
The High Court rejected the Registrar’s defence.
Justice Jyoti Singh observed that there was merit in RITES’ contention that the impugned order had been passed βmore in violation than in compliance of Section 132β of the Trade Marks Act.
The Court explained that although Section 132 empowers the Registrar to treat an application as abandoned where the applicant defaults in prosecution, the provision also mandates issuance of notice to the applicant.
That notice must require the applicant to remedy the default within a specified period. If desired, the applicant may also seek an opportunity of hearing.
Notice Under Section 132 Is a βSine Qua Nonβ: Delhi HC
The Court laid down the central proposition in clear terms:
βNotice under Section 132 to the defaulting applicant is a sine qua non before an action is taken.β
In other words, the Registrar cannot directly jump from an alleged procedural default to abandonment of the trademark application.
The statutory notice is a condition precedent to exercise of the abandonment power.
This finding is significant for trademark prosecution because abandonment can have serious consequences for applicants, particularly where the alleged default is capable of being readily cured.
Technical Glitch Did Not Permit Registrar to Bypass Statutory Notice
The Court also examined the specific circumstances surrounding RITES’ documents.
The hearing had taken place on 12 November 2025, and RITES had uploaded the supporting documents on 13 November 2025, albeit against the wrong application.
The High Court held that even assuming this technical glitch amounted to a default in prosecution, the Registrar was still bound to issue notice to RITES requiring it to remedy the default and correctly upload the documents supporting its claim of use from 26 March 2008.
The mistake did not eliminate the protection conferred by Section 132.
Abandonment Without Opportunity to Remedy Default Legally Untenable
The Court noted that no such notice was issued.
Instead, the application was directly declared abandoned through the order dated 25 November 2025.
Justice Jyoti Singh therefore held that without notice giving the applicant an opportunity to remedy the default, the abandonment order was legally untenable.
The judgment consequently reinforces an important distinction between the existence of a procedural default and the legal consequences that may follow from that default.
Even where a default exists, the Registrar must comply with the procedure prescribed by the Trade Marks Act before imposing the consequence of abandonment.
Delhi HC Sets Aside Registrarβs Order
The High Court ultimately allowed RITES’ appeal and set aside the Registrar’s order dated 25 November 2025.
The Registrar was directed to give RITES an opportunity to furnish the requisite supporting documents substantiating its claimed use of the trademark.
A specific timeline is to be provided for filing those documents, after which the Registrar must proceed with the application in accordance with law.
RITES Wins Procedural Relief, But Trademark Registration Not Yet Granted
An important qualification is that the Delhi High Court did not order registration of the RITES trademark.
Nor did it finally adjudicate the merits of the company’s claim regarding use, distinctiveness or registrability of the mark.
The Court expressly disposed of the appeal with βno expression on the merits of the case.β
Accordingly, RITES obtained a significant procedural victory: its application can no longer be treated as abandoned on the basis of the impugned order, and it must now be given an opportunity to furnish the required evidence.
The ultimate question of registration remains for the Trade Marks Registry to determine in accordance with law.
Why the Judgment Matters for Trademark Applicants
The decision has practical significance for trademark prosecution before the Registry.
Applicants frequently face procedural issues relating to uploading evidence, filing user affidavits, responding to examination requirements and complying with directions issued during hearings. The RITES ruling makes clear that where the Registrar proposes to invoke Section 132 because of an alleged default in prosecution, the statutory safeguard cannot be bypassed.
The decision is particularly relevant where the alleged default arises from a clerical error, technical glitch or incorrect uploading of documents.
The Registrar retains the power to treat an application as abandoned, but only after the applicant has first been notified of the default and given the statutorily contemplated opportunity to cure it.
Key Takeaway
The Delhi High Court has clarified that notice under Section 132 of the Trade Marks Act is mandatory before a trademark application can be treated as abandoned for default in prosecution.
Even where supporting documents were mistakenly uploaded against another application, the Registrar could not directly declare the application abandoned.
The applicant first had to be given notice and an opportunity to remedy the default.
The judgment therefore reinforces the broader principle that procedural mistakes capable of rectification cannot be converted into abandonment without following the safeguards expressly prescribed by the Trade Marks Act.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 22.09.2026
Rajasthan High Court: 15-Year Delay in Trademark Application Violates Natural Justice
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Rajasthan High Court has held that trademark registration applications cannot be kept pending indefinitely, observing that excessive delay in deciding such applications violates principles of natural justice and that the right to their speedy and expeditious disposal is protected under Article 21 of the Constitution of India.
Justice Anoop Kumar Dhand made the observations while dealing with a petition filed by Mrs. Nirmala Kabra, whose application for registration of the trademark βBreastoneβ, filed in June 2010, had remained undecided for more than 15 years.
Trademark Application Pending Since 2010
The petitioner approached the High Court with a limited prayer seeking a direction to the Registrar of Trade Marks to decide her application for registration of the mark βBreastone.β
The application had been filed on 25 June 2010. According to the petitioner, despite the passage of considerable time, the Registrar had neither decided the application nor passed a reasoned and speaking order. She therefore sought a time-bound direction for disposal of the application.
The Registrar opposed the petition, though the Court recorded that counsel appearing for the Registrar was not in a position to controvert the petitioner’s submissions.
Opposition Filed in 2013; Matter Stagnant After 2017
Examining the record, the High Court found that the application for βBreastoneβ was filed on 25 June 2010 and was subsequently opposed by Respondent No. 2, Hassnar Health and Personal Care, through an opposition dated 7 March 2013.
After completion of pleadings, the matter was posted for recording evidence on 25 July 2017. However, according to the judgment, nothing further had been done for more than eight years thereafter.
The case thus presented what the Court regarded as a striking example of delay in India’s trademark registration system.
Rule 50 of Trade Marks Rules Provides Time-Bound Framework
The High Court examined Rule 50 of the Trade Marks Rules, 2017, which governs hearing and decision in trademark opposition proceedings.
Rule 50 requires the Registrar, after closure of evidence, to notify the parties of the first date of hearing. It also regulates adjournments and provides that no party should receive more than two adjournments, with each adjournment not exceeding 30 days.
The Court observed that these restrictions demonstrate that the Rules contain a mechanism intended to ensure expeditious disposal of trademark registration proceedings.
15-Year Delay Violated Rule 50: High Court
The High Court strongly criticised the delay.
It observed that the trademark application had remained pending for more than one and a half decades, which the Court treated as a clear violation of the mandatory provisions of Rule 50.
The Registrar, the Court said, is expected to follow the Trade Marks Rules, 2017 in their βletter and spiritβ and cannot be permitted to keep matters pending indefinitely.
Excessive Delay Violates Principles of Natural Justice
The judgment also addressed the broader consequences of administrative delay in intellectual property proceedings.
According to the Court, prolonged pendency can lead to loss of evidence, increased costs and a sense of injustice among the parties. Such delays may also undermine public confidence in the fairness and efficiency of the statutory system and leave businesses in prolonged uncertainty.
Significantly, the Court held that excessive delay in disposal of trademark applications amounts to a violation of principles of natural justice, since statutory procedures are required to be conducted fairly and within a timely framework.
Speedy Disposal of Trademark Applications Is Protected Under Article 21
One of the most significant observations in the judgment concerns Article 21 of the Constitution.
The High Court held that trademark registration applications cannot remain pending for decades and that the Registrar is expected to decide them within a reasonable period.
The Court went on to state that the right to speedy and expeditious disposal of such applications is a valuable and cherished right of the applicant guaranteed under Article 21, treating it as an integral and essential component of the fundamental right to life.
This gives the judgment significance beyond the individual trademark dispute, because the Court connected administrative efficiency in trademark proceedings with constitutional principles of timely decision-making.
Registrar Directed to Decide βBreastoneβ Application Within Three Months
Taking serious note of the fact that the petitioner’s application had remained undecided for more than 15 years, the High Court issued both case-specific and general directions.
For Mrs. Kabra’s application, the Registrar was directed to decide the pending trademark application as expeditiously as possible and within three months from receipt of the certified copy of the order.
Importantly, the High Court did not direct registration of the trademark βBreastoneβ and did not decide the merits of the opposition. The relief was confined to ensuring a timely decision by the competent statutory authority.
General Direction for All Pending Trademark Applications
The Court did not restrict its observations to the petitioner’s individual application.
It issued a general direction to the Registrar of Trade Marks to decide all pending applications expeditiously, as early as possible and in accordance with Rule 50 of the Trade Marks Rules, 2017.
This aspect gives the judgment wider administrative significance for applicants whose trademark registration or opposition proceedings have remained pending for extended periods.
High Court Calls for Strategy to Address Trademark Backlog
Before concluding, the Court also addressed the systemic problem of pending trademark applications.
It expected the Registrar of Trade Marks to develop a strategy to tackle the backlog and observed that a fast and simple mechanism for securing intellectual property rights and protecting businesses is the need of the hour.
According to the Court, expeditious disposal of pending trademark applications would enable the system to resolve disputes more fairly and effectively while maintaining public confidence in the trademark administration framework. A copy of the order was directed to be sent to the Registrar of Trade Marks for necessary compliance.
Why the Judgment Matters
The ruling carries significance for trademark applicants and businesses facing prolonged delays before the Trade Marks Registry. It establishes three notable propositions from the Court’s reasoning: Rule 50 provides an expeditious procedural framework; excessive administrative delay can violate principles of natural justice; and the Court treated speedy disposal of trademark applications as protected by Article 21.
At the same time, the judgment should not be read as creating automatic registration rights merely because an application has remained pending for a long period. The Registrar retains authority to decide the application and any opposition on their merits.
Key Takeaway
The Rajasthan High Court has made it clear that the Trade Marks Registry cannot allow registration applications to remain undecided for decades. In Mrs. Nirmala Kabra’s case, a trademark application pending for more than 15 years prompted the Court not only to direct its disposal within three months but also to issue a broader direction for expeditious disposal of pending trademark applications and call upon the Registrar to formulate a strategy to tackle the backlog.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 21.09.2026
Rajasthan High Court: Trademark Applications Cannot Remain Pending Indefinitely; Speedy Disposal Is a Right Protected Under Article 21
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Rajasthan High Court, Jaipur Bench, has held that trademark registration proceedings cannot be kept pending indefinitely and that the right to a speedy and expeditious hearing and timely disposal of statutory applications is an inalienable right of every litigant.
Justice Maneesh Sharma, allowing a writ petition filed by Mittal Commerce Classes Pvt. Ltd., directed the Registrar of Trade Marks, Ahmedabad to endeavour to decide the company’s pending trademark application along with the connected opposition expeditiously and preferably within four months from receipt of a certified copy of the order.
The order was passed on September 14, 2026, in Mittal Commerce Classes Pvt. Ltd. v. Union of India & Ors., S.B. Civil Writ Petition No. 9703/2026, Neutral Citation 2026:RJ-JP:36884.
Trademark Application Pending Since 2018
Mittal Commerce Classes Pvt. Ltd., which provides educational coaching and training services, approached the High Court complaining of prolonged delay in adjudication of its trademark proceedings.
The company stated that it was already the registered proprietor of Trade Mark No. 2039137 dated October 18, 2010.
It subsequently filed Trademark Application No. 3944189 in Class 41 for the same/associated mark βMittal Commerce Classβ before the Trade Marks Registry, Ahmedabad on September 13, 2018.
Despite completion of pleadings and filing of evidence, the trademark application remained undecided.
The petitioner argued that this prolonged pendency was causing serious prejudice and was inconsistent with the statutory scheme contemplated under the Trade Marks Rules, 2017.
Opposition Filed in 2020, But Proceedings Remained Undecided
The High Court examined the procedural history and found that Trademark Application No. 3944189 had been filed on September 13, 2018.
Opposition No. 1043339 was subsequently filed on May 4, 2020.
After completion of pleadings by both parties, the matter was posted for evidence. However, the Court noted that nothing further had transpired despite the passage of more than six years.
By the time the High Court considered the matter, the trademark application had remained pending for approximately eight years, while the opposition had been pending for more than six years.
Petitioner Invokes Rule 50 of Trade Marks Rules, 2017
Mittal Commerce Classes relied principally upon Rule 50 of the Trade Marks Rules, 2017, which governs hearing and decision in trademark opposition proceedings.
The company sought a direction requiring the Registrar to hear and finally dispose of the pending application and connected opposition without unnecessary adjournments or further avoidable delay.
The petitioner initially sought disposal preferably within 30 days, although the High Court ultimately fixed a preferred period of four months.
What Does Rule 50 Require?
The High Court reproduced Rule 50 in detail.
Under Rule 50(1), after closure of evidence, the Registrar is required to issue notice to the parties specifying the first date of hearing. That hearing must be fixed for a date at least one month after the date of the first notice.
Rule 50(2) allows a party to seek an adjournment for reasonable cause through Form TM-M, accompanied by the prescribed fee and filed at least three days before the hearing.
Crucially, the proviso imposes limits on adjournments:
No party can be granted more than two adjournments, and each adjournment cannot exceed 30 days.
Rule 50 further provides consequences for non-appearance. If the applicant fails to appear on the adjourned hearing date, the application may be treated as abandoned; if the opponent fails to appear, the opposition may be dismissed for want of prosecution and the application may proceed toward registration, subject to Section 19.
The Registrar must also consider written arguments submitted by the parties and communicate the final decision in writing.
The High Court interpreted the strict limits on adjournments under Rule 50 as reflecting a clear legislative intention.
Justice Sharma observed that the statutory restriction of a maximum of two adjournments, with each not exceeding 30 days, demonstrates that the Rules contemplate a complete and time-bound mechanism for expeditious disposal of trademark registration applications.
The Court held that the framework leaves βno room for unnecessary or avoidable delay.β
This observation is significant for applicants as well as opponents because prolonged pendency of trademark proceedings can create uncertainty regarding registration, enforcement and commercial exploitation of a mark.
Registry: Petitioner Had Not Filed Rule 34 Application
The respondents opposed the writ petition.
They argued that a writ petition merely seeking expedition of pending proceedings was not maintainable in the form presented.
More importantly, they contended that Mittal Commerce Classes had not filed an application under Rule 34 of the Trade Marks Rules, 2017, and was therefore not entitled to seek the relief claimed before the High Court.
The High Court rejected this objection.
Failure to File Rule 34 Application Cannot Be an Absolute Bar: Rajasthan HC
Justice Sharma held that the petitioner’s failure to move a formal application seeking expedition under Rule 34 was merely a procedural omission and could not operate as an absolute bar against approaching the High Court for expeditious disposal of the trademark proceedings.
The Court observed:
βThe mere procedural omission of not having moved a formal application for expediting the proceedings under Rule 34 cannot operate as an absolute barβ¦β
Accordingly, the Registry’s procedural objection was rejected.
This aspect of the ruling is particularly relevant because it prevents procedural technicalities from becoming a justification for continued and excessive delay in deciding statutory applications.
Excessive Delay in Trademark Proceedings Can Violate Natural Justice
The Rajasthan High Court relied upon an earlier decision of its Coordinate Bench in Mrs. Nirmala Kabra v. The Registrar of Trade Marks & Anr., S.B. Civil Writ Petition No. 18998/2022.
In that case, the Court had emphasised that excessive delays in deciding trademark registration applications undermine the very purpose for which such applications are filed.
The judgment observed that prolonged proceedings can result in consequences including:
loss of evidence;
increased costs;
continuing uncertainty for businesses and litigants; and
erosion of public confidence in the fairness and efficiency of the statutory system.
Most importantly, the Coordinate Bench had held that excessive delay in disposal of applications amounts to violation of principles of natural justice, because statutory procedures must be conducted fairly and within a reasonable timeframe.
Speedy Disposal of Trademark Applications Protected Under Article 21
The most significant constitutional aspect of the ruling concerns Article 21 of the Constitution of India.
Quoting the earlier Nirmala Kabra decision, the Court reiterated that trademark registration applications cannot be allowed to remain pending for decades and that the Registrar of Trade Marks is not expected to keep such applications pending for an indefinite period.
The earlier judgment had declared:
βThe right of speedy and expeditious disposal of these applications is one of the most valuable and cherished rights of the applicant guaranteed under Article 21β¦β
Justice Sharma applied that principle to the case before him.
The Court then independently observed that the right to a speedy and expeditious hearing and timely disposal of statutory applications is an inalienable right of every litigant.
Such a valuable right, it held, cannot be curtailed or defeated on the altar of procedural technicalities.
Eight-Year Pendency Considered Unacceptable
The factual timeline played an important role in the Court’s decision.
The trademark application had been pending since September 13, 2018, while the opposition had remained pending since May 4, 2020.
The High Court recorded that this amounted to approximately:
Proceeding
Date
Pendency noted by Court
Trademark Application No. 3944189
September 13, 2018
About 8 years
Opposition No. 1043339
May 4, 2020
More than 6 years
Class
Class 41
Educational/coaching services
Order of Rajasthan HC
September 14, 2026
Writ allowed
The Court concluded that such prolonged pendency justified issuance of a direction to the Registrar.
Registrar Directed to Decide Trademark Application Preferably Within Four Months
The Rajasthan High Court ultimately allowed the writ petition.
It directed the Registrar of Trade Marks, Ahmedabad to make an endeavour to decide Trademark Application No. 3944189 together with Opposition No. 1043339 expeditiously and preferably within four months from receipt of a certified copy of the High Court’s order.
All other pending applications in the writ proceedings were consequently disposed of.
Importantly, the High Court did not decide whether the βMittal Commerce Classesβ trademark should ultimately be registered or whether the opposition should succeed.
The judgment concerns the delay in adjudication and the petitioner’s right to obtain a timely decision. The merits of the trademark application and opposition remain for the Registrar to determine.
Why the Judgment Is Important for Trademark Applicants and Opponents
The ruling has wider implications for parties facing long-pending proceedings before the Trade Marks Registry.
First, it reinforces that statutory trademark proceedings are expected to progress within a reasonable and time-bound framework, particularly once evidence has been completed and the matter has reached the hearing stage.
Second, the Court’s interpretation of Rule 50 emphasises that repeated adjournments cannot be used to indefinitely postpone adjudication. The Rules themselves cap both the number and duration of adjournments.
Third, the ruling indicates that failure to first file a procedural application seeking expedition under Rule 34 does not necessarily prevent a litigant from approaching the High Court where extraordinary delay has already occurred.
Finally, by connecting speedy disposal with Article 21 and principles of natural justice, the Rajasthan High Court has treated delay not merely as an administrative inconvenience but as an issue capable of affecting substantive procedural rights.
Important Legal Distinction
The judgment should not be interpreted as granting Mittal Commerce Classes registration of its trademark.
The High Court has not adjudicated the merits of Trademark Application No. 3944189 or Opposition No. 1043339. It has instead directed the Registrar to bring the long-pending statutory proceedings to a timely conclusion.
The eventual question of whether the mark should be accepted or refusedβand whether the opposition should succeedβremains within the jurisdiction of the Trade Marks Registry.
Key Takeaway
The Rajasthan High Court has sent a clear message against indefinite pendency of trademark applications and opposition proceedings.
Where an application filed in 2018 and an opposition filed in 2020 remained unresolved despite completion of the procedural stages, the Court held that procedural technicalities such as failure to file a Rule 34 application could not defeat the litigant’s right to seek timely adjudication.
The Court’s reliance on Rule 50 of the Trade Marks Rules, 2017, principles of natural justice and Article 21 of the Constitution makes the decision particularly relevant to trademark applicants and opponents facing prolonged delays before the Registry.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 19.09.2026
Punjab & Haryana HC: Trade Mark Search & Seizure Cannot Be Conducted by Officer Below DSP Rank
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Punjab and Haryana High Court has quashed a criminal prosecution under Sections 103 and 104 of the Trade Marks Act, 1999, holding that the mandatory safeguards prescribed under Section 115(4) were violated because the search and seizure was conducted by an officer below the rank of Deputy Superintendent of Police and without obtaining the prior opinion of the Registrar of Trade Marks.
In Ashok Kumar v. State of Punjab & Anr., CRM-M-12823-2021 (O&M), Justice Jasjit Singh Bedi held that the statutory procedure had been breached on two counts and that there was consequently a βclear statutory embargoβ on the initiation and continuation of the criminal proceedings.
The judgment was delivered on 10 January 2023.
Allegations of Selling Duplicate βNorth Faceβ and βJansportβ Bags
The proceedings originated from a complaint submitted by Vishal Joshi, described as an Enforcement Officer of United Overseas Trade Mark Company.
The complainant alleged that Ashok Kumar, proprietor of Amar Bag House, was manufacturing, selling and supplying duplicate bags bearing the marks βNorth Faceβ and βJansport.β
On the basis of the complaint, FIR No. 10 dated 1 February 2019 was registered at Police Station Mahilpur, District Hoshiarpur, initially under Sections 63 and 65 of the Copyright Act, 1957.
136 Allegedly Fake Bags Recovered During Raid
During the investigation, the police raided the petitionerβs shop.
According to the judgment, the search resulted in recovery of 60 black bags carrying the βNorth Faceβ mark and 76 bags carrying the βJansportβ mark, totalling 136 bags.
A wooden board carrying a βJansportβ company sticker was also recovered. The recovered bags were alleged to be fake and were taken into police possession.
However, the legality of the manner in which this search and seizure was carried out ultimately became decisive before the High Court.
Copyright Charges Deleted; Trade Marks Act Invoked
After investigation, the police initially prepared the final report under Sections 63 and 65 of the Copyright Act.
The matter was thereafter sent to the District Attorney, Hoshiarpur, who opined that offences under Sections 103 and 104 of the Trade Marks Act, 1999 were made out. Consequently, the Copyright Act offences were deleted and the report under Section 173(2) CrPC was presented under Sections 103 and 104 of the Trade Marks Act.
Charges were subsequently framed against Ashok Kumar under those provisions on 1 February 2021.
The petitioner then approached the High Court under Section 482 CrPC, seeking quashing of the FIR, the order framing charges and all consequential proceedings.
Petitioner Challenges Search and Seizure Under Section 115(4)
Ashok Kumarβs principal argument was that the investigation had failed to comply with the mandatory requirements of Section 115(4) of the Trade Marks Act.
He raised two specific objections.
First, the search and seizure had been conducted by officers of the rank of Sub-Inspector/Assistant Sub-Inspector, whereas Section 115(4) authorises warrantless search and seizure by a police officer not below the rank of Deputy Superintendent of Police or equivalent.
Second, the police had not obtained the opinion of the Registrar of Trade Marks before conducting the search and seizure, as required by the proviso to Section 115(4).
The petitioner therefore argued that the entire search and seizure stood vitiated and the resulting criminal prosecution could not legally continue.
What Section 115(4) of the Trade Marks Act Requires
The High Court reproduced Section 115 of the Trade Marks Act and closely examined its statutory safeguards.
Under Section 115(3), offences under Sections 103, 104 and 105 are cognizable.
However, Section 115(4) provides that a police officer not below the rank of Deputy Superintendent of Police or equivalent may conduct a warrantless search and seizure where satisfied that an offence referred to in Section 115(3) has been, is being, or is likely to be committed.
Crucially, the proviso further states that before conducting any search and seizure, the police officer shall obtain the opinion of the Registrar on the facts involved in the offence relating to the trade mark and shall abide by that opinion.
Thus, the Court treated the statutory scheme as imposing substantive procedural safeguards upon police action in such trademark prosecutions.
Search by Sub-Inspector Violated Section 115(4)
The High Court found from the recovery memo and the final report under Section 173(2) CrPC that the search and seizure had in fact been conducted by an officer of the rank of Sub-Inspector.
Justice Bedi held that this directly violated Section 115(4), because the raid and consequential search and seizure were required to be undertaken by an officer not below the rank of Deputy Superintendent of Police or equivalent.
The Court consequently held that the proceedings emanating from the FIR were liable to be quashed on this ground.
Prior Opinion of Registrar of Trade Marks Was Also Mandatory
There was a second and independent statutory violation.
The Court found that no opinion of the Registrar of Trade Marks had been obtained before the search and seizure.
The Sub-Inspector who conducted the search was therefore not only below the statutorily prescribed rank but had also proceeded without complying with the proviso to Section 115(4).
The High Court held that the proceedings were liable to be quashed on this ground as well.
State Argues Objections Should Be Decided During Trial
The State opposed the quashing petition.
It argued that after registration of the FIR, the police had completed investigation and presented the report under Section 173(2) CrPC. Charges had also been framed.
According to the State, the grounds raised by the petitioner could therefore be adjudicated during the trial rather than being used to quash the prosecution at the threshold.
However, the State also conceded that its reply contained no specific denial of the petitionerβs contentions concerning the alleged statutory violations.
The High Court ultimately rejected the argument that the petitioner should be relegated to trial because the defect concerned violation of the statutory conditions governing the very search and seizure underlying the prosecution.
Mandatory Procedure Under Trade Marks Act Cannot Be Ignored
The High Court relied on its earlier decisions in Anil Kumar v. State of Punjab & Anr. and Satpal & Anr. v. State of Punjab & Ors..
In Anil Kumar, the Court had held that Section 115(4) does not permit an officer below the rank of DSP to conduct the relevant search and seizure. It had further held that obtaining the Registrarβs opinion before such action was mandatory, observing that use of the word βshallβ indicated the mandatory nature of the requirement.
Similarly, in Satpal, the Court held that where the search was conducted by a Sub-Inspector without obtaining the Registrarβs opinion, the proceedings stood vitiated. It emphasised that where a statute creating an offence also prescribes a procedure, authorities cannot simply ignore that procedure.
Other High Court Precedents Support Mandatory Compliance
The judgment also referred to the Madhya Pradesh High Court decision in Kasim Ali v. State of Madhya Pradesh & Anr., where prosecution under the Trade Marks Act was found unsustainable because the mandatory Section 115 procedure had not been followed.
That decision similarly recognised that a search under Section 115(4) must be conducted by the prescribed rank of police officer and only after obtaining the Registrarβs opinion.
The Punjab and Haryana High Court also considered Pitambra Industries v. State of Madhya Pradesh & Ors., in which the Madhya Pradesh High Court treated obtaining the Registrarβs opinion before search and seizure as a sine qua non and held that compliance with Section 115(4) was mandatory.
The Court further referred to the Bombay High Courtβs ruling in Shrenik Shantilal Dhadiwal v. State of Maharashtra & Ors., where investigation by an Assistant Police Inspector without the Registrarβs opinion was found contrary to Section 115(4).
Bhajan Lal Principles Applied
The petitioner also relied upon the Supreme Courtβs landmark judgment in State of Haryana & Ors. v. Bhajan Lal & Ors., 1992 Supp (1) SCC 335.
Among the recognised categories for exercising jurisdiction under Section 482 CrPC is a situation where there exists an express legal bar under the Code or the concerned statute to the institution or continuation of criminal proceedings.
Applying this principle, the High Court found that Section 115(4) had been violated in two material respects:
the search and seizure was undertaken by an officer below the rank of DSP, and the proceedings were initiated without obtaining the opinion of the Registrar of Trade Marks.
The Court therefore concluded that there was a clear statutory embargo on the initiation and continuation of the proceedings.
FIR, Charges and Entire Criminal Proceedings Quashed
Having found both statutory violations established, the Punjab and Haryana High Court allowed Ashok Kumarβs petition.
It quashed:
FIR No. 10 dated 1 February 2019 under Sections 103 and 104 of the Trade Marks Act at Police Station Mahilpur, District Hoshiarpur;
the order dated 1 February 2021 framing charges against the petitioner; and
all subsequent proceedings arising from the FIR.
Thus, Ashok Kumar succeeded before the High Court, and the prosecution arising from the allegedly counterfeit βNorth Faceβ and βJansportβ bags was brought to an end because the mandatory statutory procedure governing search and seizure had not been followed.
Key Takeaway
The judgment underscores that the procedural safeguards contained in Section 115(4) of the Trade Marks Act cannot be bypassed in criminal enforcement actions involving offences under Sections 103, 104 and 105.
Where a warrantless search and seizure is undertaken under Section 115(4), the judgment treats two requirements as critical: the officer conducting the statutory search must be not below the rank of Deputy Superintendent of Police or equivalent, and the prescribed opinion of the Registrar of Trade Marks must be obtained before the search and seizure. In Ashok Kumar, failure to satisfy both requirements was sufficient for the High Court to hold that continuation of the prosecution was legally impermissible and to quash the FIR, charge-framing order and all consequential proceedings.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 18.09.2026
Gujarat HC Quashes Copyright FIR Over Alleged Counterfeit Apple Accessories; Says Trademark Dispute Cannot Be Camouflaged as Copyright Offence to Bypass Statutory Safeguards
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
In an important ruling concerning the overlap between copyright and trademark enforcement in counterfeit-goods cases, the Gujarat High Court has quashed an FIR registered against a shopkeeper following the seizure of alleged counterfeit Apple-branded electronic accessories worth approximately βΉ15.11 lakh.
Justice P. M. Raval held that commercial hardware such as AirPods, cables, power adapters and smartwatches does not, merely by being counterfeit or bearing a registered brand, constitute a literary or artistic work for the purpose of attracting criminal liability under Section 63 of the Copyright Act.
The Court further held that the authorities could not subsequently sustain the case under the Trade Marks Act because the raid itself had been conducted without complying with the mandatory safeguards under Section 115(4)βincluding obtaining the prior opinion of the Registrar of Trade Marks and having the search and seizure conducted by an officer of the statutorily prescribed rank.
FIR Registered Under Copyright Act Following Raid on Ahmedabad Shop
The petitioner, Jitendrabhai Mohanbhai Kriplani, approached the High Court under Section 482 CrPC seeking quashing of FIR C.R. No. 11191026220492 of 2022, registered on October 19, 2022 at Kalupur Police Station, Ahmedabad City.
The FIR invoked Sections 51, 63 and 64 of the Copyright Act, 1957.
The complainant was a manager of Griffin Intellectual Property Service Pvt. Ltd., which, according to the FIR, had been authorised by Apple Inc. to take legal action against persons allegedly infringing Apple’s rights or selling counterfeit iPhones, iPads, MacBooks, mobile phones and accessories.
Acting on information concerning alleged counterfeit Apple products being sold in shops in the Kalupur area, the complainant approached the police. A raid was subsequently conducted at βRaj Cover Houseβ, where the petitioner was present.
βΉ15.11 Lakh Worth of Alleged Counterfeit Apple Products Seized
According to the FIR, the authorities recovered several categories of allegedly counterfeit Apple-branded products, including AirPods, USB cables, power adapters, a smartwatch and different kinds of Apple-branded stickers and barcode/MRP labels.
The FIR placed the aggregate value of the seized items at βΉ15,11,193.
The key question before the High Court was whether allegations concerning the possession or sale of such duplicate commercial products could legally sustain criminal proceedings for copyright infringement.
Petitioner: Counterfeit Hardware Is Not a Copyrightable βWorkβ
The petitioner argued that the seized goods did not fall within the categories of works protected under Section 13 of the Copyright Act.
His case was that AirPods, cables, adapters, smartwatches and similar electronic products were commercial articles rather than literary, dramatic, musical or artistic works.
Accordingly, the ingredients necessary for invoking Sections 63 and 64 of the Copyright Act were absent.
The petitioner further argued that if the allegation was actually one of misuse of Apple’s trademark on counterfeit goods, the case would fall under the Trade Marks Act, 1999, rather than being converted into a copyright prosecution.
Gujarat HC: Commercial Hardware Is Not Literary or Artistic Work
The High Court accepted the central distinction advanced by the petitioner.
It held that copyright protection under Section 13 read with Section 2(c) is confined to protected categories of works, whereas hardware components, cables, power adapters and electronic devices are commercial industrial products.
The Court observed that misuse of a brand name or manufacture of duplicate hardware bearing a trademark would ordinarily constitute trademark falsification punishable under Sections 103 and 104 of the Trade Marks Act, rather than an offence under the Copyright Act.
It consequently held that mere possession or sale of counterfeit commercial goods or accessories bearing brand labels does not, by itself, satisfy the requirements of Sections 13 and 63 of the Copyright Act.
FIR Failed to Identify Any Specific Copyrighted Literary or Artistic Work
The Court then examined whether the stickers, seals, packaging labels and other material allegedly recovered could independently support the copyright prosecution.
It noted that the FIR merely described the seized articles as goods infringing Apple’s copyright and bearing Apple’s trademark.
Crucially, however, the FIR did not identify any specific copyrighted literary workβsuch as an instruction sheet or user manualβor any specific artistic work such as an original graphical layout or packaging design whose copyright had allegedly been infringed.
The Court stressed that copyright is a statutory right, and an FIR invoking Section 63 must set out how the material allegedly infringed satisfies the statutory definition of a protected work under Sections 2 and 13.
No User Manuals or Instruction Manuals Were Actually Seized
The complainant argued that product literature, packaging, labels and instruction manuals constituted original literary or artistic works belonging to Apple.
The High Court, however, examined the investigation papers and found that no instruction manual or user leaflet had actually been recovered or seized from the petitioner’s shop.
The Court said a new factual foundation could not be introduced during oral arguments when it was absent from the police recovery memo.
The recovery panchnama was also silent regarding any user or instruction manual. Photographs produced later through an affidavit-in-reply, which were not part of the investigation papers, could not be relied upon to cure that deficiency.
MRP Tags and Barcodes Are Functional Data, Not Automatically Literary Works
The Court also addressed the argument that stickers, MRP labels and barcodes constituted literary works.
It held that an inclusive definition of βliterary workβ cannot be stretched so far as to convert every commercial label or container into a literary work.
An MRP price tag, standard barcode or technical model sticker contains essentially functional and factual information, the Court observed, and cannot automatically be treated as an original literary work of authorship.
This distinction was central to the Court’s conclusion that the alleged counterfeit hardware and functional labels could not sustain the criminal copyright case as framed in the FIR.
βCannot Camouflage a Trademark Dispute as a Copyright Offenceβ
One of the most significant observations in the judgment concerns attempts to invoke copyright law where the substance of the allegation is trademark counterfeiting.
The Court found that the primary allegation was the sale of counterfeit Apple hardware and accessories, a subject that fell within Sections 103 and 104 of the Trade Marks Act.
It held that the complainant could not camouflage a trademark dispute as a copyright offence in a manner that bypassed the procedural safeguards prescribed for trademark searches and seizures under Section 115 of the Trade Marks Act.
Could the Case Continue Under the Trade Marks Act?
Having found Section 63 of the Copyright Act unsustainable, the High Court considered the respondents’ alternative submission.
The complainant and State argued that even if the Copyright Act provisions were incorrectly invoked, the allegations nevertheless disclosed offences under Sections 103 and 104 of the Trade Marks Act, 1999.
In other words, it was argued that incorrect labelling of the statutory provision in the FIR should not prevent the investigation from proceeding under the appropriate law.
The High Court rejected this argument because the Trade Marks Act contains its own mandatory safeguards governing search and seizure.
Prior Opinion of Registrar Under Section 115(4) Is a Statutory Condition Precedent
Section 115(4) of the Trade Marks Act requires the police officer, before conducting search and seizure, to obtain the opinion of the Registrar on the facts involved in the offence relating to the trademark and abide by that opinion.
The High Court found from the FIR and police record that no prior written opinion had been sought or obtained from the Registrar of Trade Marks before the raid on Raj Cover House.
Justice Raval described this requirement as a βstatutory condition precedentβ rather than a technical formality.
The Court viewed the safeguard as designed to prevent arbitrary police raids on commercial establishments at the instance of private corporate entities.
The Court consequently held that a search and seizure conducted in total defiance of Section 115(4) was vitiated.
Raid Conducted by Officers Below Statutorily Required Rank
There was another fundamental procedural defect.
The Court noted that Section 115(4) provides that no police officer below the rank of Deputy Superintendent of Police or equivalent shall search and seize without warrant in such cases.
Although the initial application had been forwarded by the DCP Zone-03 to Kalupur Police Station, the actual raid, search and seizure were carried out under a Police Inspector along with head constables and police constables.
The High Court found these officers to be below the statutorily prescribed rank of DSP/ACP and consequently held that they lacked the requisite authority to conduct the search and seizure under the Trade Marks Act.
Court Finds βColourable Exercise of Powerβ
The High Court went further and described the record as demonstrating a βclear pattern of colourable exercise of power.β
According to the Court, the complainant-company was aware that proceeding under the Trade Marks Act required the Registrar’s prior opinion and execution of the raid by an appropriately ranked police officer.
The Court found that what was essentially a trademark dispute had instead been presented as copyright infringement, thereby enabling an immediate raid through local police officers without satisfying those statutory safeguards.
The Court held that permitting the prosecution subsequently to fall back upon trademark charges would effectively sanction an evasion of the statutory mandate.
It reiterated that the FIR and seizure memo did not disclose recovery of original literary works or user manuals and that the controversy essentially concerned alleged falsification of a registered trademark on commercial accessories.
Complainant’s Authority to Lodge FIR Was Upheld
Importantly, the High Court did not accept every contention raised by the petitioner.
The petitioner had challenged the complainant’s locus and authority to institute the proceedings.
On examining the authorisation documents, however, the Court found that authority had been given to the agency and, in turn, to its authorised person to lodge the FIR.
The petitioner’s objection regarding the complainant’s lack of locus was therefore rejected.
Thus, the FIR was not quashed because the complainant lacked authority. It was quashed because the Copyright Act provisions were found inapplicable to the allegations as framed and the statutory requirements necessary for a Trade Marks Act prosecution had not been followed.
Gujarat HC Quashes FIR and All Consequential Proceedings
Summarising its conclusions, the Gujarat High Court held that the allegations did not satisfy the statutory ingredients of Sections 13 and 63 of the Copyright Act, since the commercial hardware in question did not constitute literary or artistic works for the purposes of the prosecution as framed.
It further held that Sections 103 and 104 of the Trade Marks Act could not simply be substituted to save the proceedings because the search, raid and seizure had been conducted in breach of Section 115(4)βboth because the Registrar’s prior opinion had not been obtained and because the operation was carried out by officers below the prescribed rank.
Continuation of the proceedings, the Court concluded, would amount to an abuse of the process of Court and cause grave miscarriage of justice.
Accordingly, the High Court allowed Jitendrabhai Kriplani’s petition and quashed FIR C.R. No. 11191026220492 of 2022 dated October 19, 2022 and all consequential proceedings insofar as the petitioner was concerned.
Why This Judgment Matters
The ruling draws an important boundary between copyright enforcement and trademark counterfeiting.
The judgment does not hold that counterfeit branded electronic goods are lawful. Rather, it holds that allegations of counterfeiting must be prosecuted under the correct statutory framework, and the procedural safeguards attached to that legislation cannot be avoided by characterising a trademark dispute as copyright infringement.
The decision is especially significant for intellectual-property enforcement agencies, brand-protection companies, police authorities, retailers and businesses because it stresses that the choice of statute directly affects the legality of search, seizure and prosecution.
Where the substance of an allegation concerns falsification of trademarks on commercial products, authorities cannot use the Copyright Act merely to circumvent the safeguards specifically prescribed by Section 115(4) of the Trade Marks Act.
Key Takeaway
Counterfeit commercial hardware bearing a registered brand does not automatically constitute copyright infringement. Where the allegations essentially concern trademark falsification, the Trade Marks Act must be followedβincluding its mandatory search-and-seizure safeguards. A trademark dispute cannot be dressed up as a copyright case merely to bypass those statutory requirements.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 16.09.2026
Gujarat High Court: Trademark Application Cannot Be Denied Advertisement Merely Due to Section 11(1) Objection
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Gujarat High Court has allowed an appeal filed by Lincoln Pharmaceuticals Private Limited against the rejection of its trademark application for βGLYPANTAβ, holding that Section 20 of the Trade Marks Act, 1999 permits advertisement of a trademark application despite objections under Section 11(1).
Justice Mauna M. Bhatt, by an order dated 20 November 2025 in Lincoln Pharmaceuticals Private Limited v. Registrar of Trade Marks & Anr., R/Civil Appeal No. 7 of 2025, quashed the Trade Marks Registry’s rejection order dated 11 August 2025 and directed the Registry to proceed with advertisement of the application within three months.
The ruling does not amount to final registration of βGLYPANTA.β The Court directed advertisement of the application, leaving any opposition to be considered independently on its merits.
Lincoln Pharmaceuticals Sought Registration of βGLYPANTAβ
Lincoln Pharmaceuticals had filed an application on 22 August 2023 under Section 18(1) of the Trade Marks Act, 1999, seeking registration of the mark βGLYPANTA.β
The application was examined by the Trade Marks Registry, which issued an examination report raising objections. Lincoln Pharmaceuticals responded through a detailed reply dated 30 October 2023, raising various grounds in support of registration.
According to the pharmaceutical company, however, the grounds raised in its response were not properly considered before the application was ultimately rejected on 11 August 2025.
The rejection prompted Lincoln Pharmaceuticals to approach the Gujarat High Court under Section 91 of the Trade Marks Act.
Section 11(1) Objection Raised Over Similar Trademark
The principal objection before the Registry arose under Section 11(1) of the Trade Marks Act, which deals with relative grounds for refusal of trademark registration, including situations where similarity with an earlier trademark may create a likelihood of confusion.
Lincoln Pharmaceuticals argued that the objection was unsustainable and that its detailed response to the examination report had not been properly considered.
One of the company’s key arguments was that even where competing pharmaceutical trademarks fall within the same class, differences in the composition of the respective pharmaceutical products may constitute an additional mitigating factor while assessing likelihood of confusion.
Delhi High Courtβs Elyon Pharmaceuticals Decision Cited
To support this argument, Lincoln Pharmaceuticals relied upon the Delhi High Court’s decision in Elyon Pharmaceuticals Pvt. Ltd. v. Registrar of Trademarks, C.A. (COMM.IPD-TM) 153/2021, decided on 23 August 2023.
In that case, the Delhi High Court had considered the marks βELEMENTALβ and βELMENTINβ and observed that differences in the pharmaceutical composition of products could provide an additional mitigating consideration when examining the possibility of public confusion.
Lincoln Pharmaceuticals relied on this reasoning to argue that the Registry’s Section 11(1) objection against βGLYPANTAβ should not have resulted in rejection of its application in the manner adopted.
Company Says βGLYPANTAβ Was Already in Use Since 2023
Another argument raised before the High Court was that the Registry had relied upon trademarks that were proposed to be used, whereas Lincoln Pharmaceuticals claimed that βGLYPANTAβ had been in use since 2023 and had acquired a substantial market for the product.
The company also objected to the fact that its application had been rejected before publication in the Trade Marks Journal.
Its contention was that publication would enable the statutory process to proceed and, if any third party wished to oppose the application, such opposition could thereafter be considered in accordance with law.
Section 20 Permits Advertisement Despite Section 11 Objections: Lincoln Pharmaceuticals
Lincoln Pharmaceuticals placed particular reliance upon Section 20 of the Trade Marks Act, 1999.
It argued that even where objections under Sections 11(1) or 11(2) exist, the statutory framework permits advertisement of a trademark application.
The company therefore sought an opportunity for its application to be advertised rather than being rejected outright before publication.
The Registry’s counsel also raised an issue concerning non-joinder of the opposition party. Lincoln Pharmaceuticals responded that no private respondent was required at that stage because the challenge concerned rejection of the application before publication.
The High Court recorded that counsel appearing for the respondents could not dispute the provisions of Section 20.
Gujarat High Court Relies on Section 20
After considering the submissions, Justice Mauna M. Bhatt noted that Section 20 permits advertisement despite objections under Section 11(1).
On that basis, the Court allowed Lincoln Pharmaceuticals’ appeal and quashed and set aside the Trade Marks Registry’s order dated 11 August 2025.
The Registry was then specifically directed to proceed with advertisement of the subject trademark application in accordance with the proviso to Section 20 of the Trade Marks Act.
The Court directed that the exercise be completed within three months from receipt of its order.
Any Opposition to βGLYPANTAβ Must Be Decided on Its Own Merits
Significantly, the High Court did not direct the Registry to grant final registration of βGLYPANTA.β
Instead, the Court restored the application to the stage of advertisement. It expressly provided that if any opposition is filed against the trademark application after advertisement, such opposition must be decided on its own merits.
Thus, Lincoln Pharmaceuticals succeeded in having the rejection order set aside and obtaining publication of its application, but the ultimate registrability of βGLYPANTAβ remains subject to the statutory process, including any opposition that may be filed.
Why the Judgment Matters for Trademark Applicants
The order is significant for trademark prosecution because it highlights the distinction between an examination-stage objection and the subsequent advertisement/opposition process.
In the circumstances before it, the Gujarat High Court relied on Section 20 to permit the application to proceed to advertisement despite the Section 11(1) objection, rather than allowing the pre-publication rejection to stand.
The decision is particularly relevant to pharmaceutical trademark applications, where the Registry frequently examines competing marks closely because of concerns regarding similarity and confusion. The case also demonstrates that factors such as the nature and composition of competing pharmaceutical products may be raised by an applicant while responding to relative-ground objections, though the Gujarat High Court did not finally adjudicate the merits of the βGLYPANTAβ mark’s registrability in this order.
Key Legal Takeaway
The immediate principle emerging from the order is that the existence of a Section 11(1) objection does not, by itself in the circumstances considered by the Court, prevent the application from being advertised under Section 20.
At the same time, advertisement should not be confused with registration. Publication gives third parties an opportunity to oppose the mark, and the Registry retains the responsibility to determine any such opposition on its merits.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 15.09.2026
Delhi HC Cancels Deceptively Similar βROCKPAPAβ Trademark; Holds Prior User Has Superior Rights Over Registered Proprietor
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Delhi High Court has ordered removal of a deceptively similar βROCKPAPAβ device mark from the Trade Marks Register, holding that the rights of a prior user can prevail over those of a subsequent user even where the latter has obtained trademark registration.
In Kia Wang v. Registrar of Trade Marks & Anr., C.O. (COMM.IPD-TM) 2/2021, Justice Jyoti Singh allowed a rectification petition filed by Kia Wang and directed the Registrar of Trade Marks to remove the impugned device mark registered under Trademark No. 4400360 in Class 09. The judgment was delivered on 15 September 2023.
The Court found the rival marks strikingly similar and concluded that the respondent’s adoption was tainted by bad faith and dishonest intention, aimed at encashing upon the goodwill associated with the petitioner’s mark.
Dispute Over βROCKPAPAβ Device Mark
Kia Wang claimed that he and his wife founded the ROCKPAPA brand in 2014, primarily for products aimed at children, including headphones, pencil boxes and school bags, as well as audio-related products such as headphones, earphones, loudspeakers and portable media players.
According to the petition, the brand operated internationally, including in Australia, Canada, Europe, the United States and India. The domain name for ROCKPAPA was registered on 9 April 2014, and the products were also marketed through e-commerce platforms.
The petitioner also relied upon trademark registrations obtained abroad, including in the United Kingdom, Australia, United States, Japan and Canada.
Respondent Obtained Registration in India in 2020
Respondent No. 2, Sachin Garg, proprietor of Pooja Creations, applied for registration of the impugned device mark on 7 January 2020. It was subsequently registered in Class 09 for mobile phones and accessories, including chargers, adaptors, batteries, screen protectors, power banks, mobile covers, memory cards, card readers and handsfree devices.
Kia Wang claimed that he discovered the registration only in June 2021 and thereafter approached the Delhi High Court seeking rectification of the Register under Sections 47, 57 and 125 of the Trade Marks Act, 1999.
Respondent No. 2 did not appear despite service and was eventually proceeded against ex parte. The Registrar did not file a counter-affidavit, though written submissions were placed before the Court.
Prior User Rights Can Override Subsequent Registration
One of the central issues before the Court was the petitioner’s claim of being the prior adopter and prior user of the ROCKPAPA mark.
The Court relied upon the Supreme Court decisions in Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624; S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683; and Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672.
Referring to these authorities, the High Court reiterated that the βfirst in the marketβ test assumes significance where competing trademarks are similar.
It observed that the βfirst userβ rule is a seminal feature of trademark law and held that:
A prior user’s rights will override those of a subsequent user even though the subsequent user’s trademark may have obtained registration.
On the evidence before it, the Court accepted Kia Wang’s claim of use since 2014. His prior use, overseas registrations and continuous use of the mark established that the trademark had become distinctive of his goods and associated with him.
Court Finds Rival Marks Strikingly Similar
The judgment contains a side-by-side visual comparison of the two device marks on page 15. Both use a substantially similar stylised face/hair/moustache device together with the word βRockpapaβ.
The Court observed that the similarity between the two marks was βwrit large on a bare perusal.β
It held that the similarity of the marks, coupled with identity of the competing goods, created a likelihood of consumer confusion and could adversely affect the petitioner’s reputation and goodwill.
Bad-Faith Trademark Registration Can Be Cancelled
The Court then examined Section 11(10)(ii) of the Trade Marks Act, 1999, which requires the Registrar to take into consideration the bad faith involved either on the part of the applicant or opponent while dealing with trademark registration.
Relying particularly upon BPI Sports LLC v. Saurabh Gulati, 2023 SCC OnLine Del 2424, the Court explained that βbad faithβ essentially involves the absence of honest intention and may include dishonest commercial conduct, fraud, deception or an attempt to appropriate another party’s trademark.
Applying this principle, the Court found βlittle doubtβ that Respondent No. 2 had acted with dishonest intention in adopting a similar mark for identical goods, including copying important visual characteristics of the petitioner’s device mark.
The Court concluded that the intention was to encash upon the goodwill of the petitioner’s trademark. It also noted that Respondent No. 2 had chosen not to contest the proceedings or rebut the petitioner’s claim of prior use.
Maintaining βPurity of the Registerβ Is a Matter of Public Interest
The High Court went beyond the private dispute between the parties and emphasised the broader public-interest function of trademark rectification.
It referred to Khoday Distilleries Ltd. v. Scotch Whisky Association, (2008) 10 SCC 723, where the Supreme Court stressed the importance of maintaining the purity of the Trade Marks Register and considering the likelihood of deception or confusion.
The Court also relied on Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd., (2003) 11 SCC 92, while considering who qualifies as a βperson aggrievedβ entitled to seek rectification.
The Court held that Kia Wang qualified as a βperson aggrievedβ because the respondent’s registration operated as a restraint upon legal rights flowing from the petitioner’s prior, long, continuous and uninterrupted use of the mark.
Important Finding on Section 11(1) and Well-Known Trademark Claim
An important nuance in the judgment is that the Court did not accept every ground advanced by the petitioner.
Kia Wang had argued that the impugned registration violated Sections 11(1) and 11(2) because ROCKPAPA was an earlier and well-known trademark.
The Court rejected this particular argument. It observed that, for purposes of Section 11, the petitioner’s mark did not qualify as an βearlier trade markβ because it was neither registered in India nor covered by the specified categories of Indian/international/convention applications. The Court also found that the material and pleadings were insufficient to classify ROCKPAPA as a well-known trademark under Section 2(1)(zg) read with Section 11(6).
This makes the judgment particularly significant: the petition succeeded principally on prior-user rights, deceptive similarity, bad-faith adoption and the need to maintain purity of the Registerβnot because ROCKPAPA was judicially declared a well-known trademark.
Delhi High Court Orders Trademark Removed Within Four Weeks
Ultimately, the Court allowed the rectification petition and directed the Registrar of Trade Marks to remove Trademark No. 4400360, registered on 7 January 2020 in Class 09, from the Register.
The Registrar was directed to complete the rectification within four weeks from receipt of the judgment.
Key Legal Principle
The judgment reinforces three significant principles of Indian trademark law: prior user rights may prevail over subsequent registration; bad-faith adoption of a deceptively similar mark can justify cancellation; and rectification jurisdiction serves the wider public interest of maintaining the purity of the Trade Marks Register.
At the same time, the decision demonstrates that foreign registrations or international popularity alone do not automatically make a mark an βearlier trade markβ or a βwell-known trademarkβ in India for the purposes of Section 11.
Aadrikaa Legal Services is a trusted legal and regulatory support partner providing end-to-end legal solutions to law firms, corporate organizations, and businesses across India. We specialize in paralegal services, litigation support, tax and regulatory matters, delivering reliable, efficient, and result-oriented legal assistance.
Our services include comprehensive paralegal support, drafting and documentation, legal research, case management, litigation handling, and representation support across various judicial and quasi-judicial forums. We also assist in direct and indirect tax matters, customs, GST, corporate regulatory compliance, and legal advisory.
