Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 07.11.2026
Delhi HC: Registrar Cannot Reject Trademark Applications Through Non-Speaking Orders
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 the Trade Marks Registry must provide written reasons and the supporting material whenever it refuses or conditionally accepts a trade mark application.
A decisive ruling on reasoned orders
In Intellectual Property Attorneys Association v. Controller General of Patents, Designs & Trade Marks & Anr., decided on 16 October 2019, the Delhi High Court addressed a recurring concern for trade mark applicants: orders that communicate a refusal without explaining why it was made.
The Court ruled that Section 18(5) of the Trade Marks Act, 1999 imposes a mandatory obligation on the Registrar of Trade Marks to record, in writing:
- the grounds for refusing an application or accepting it subject to conditions; and
- the material relied upon to reach that decision.
The Registrar must then send the reasoned order to the applicant within two weeks of passing it.
The legal issue
Section 18 of the Trade Marks Act governs applications for registration. While the Registrar may accept an application, refuse it, or accept it subject to amendments, conditions, modifications, or limitations, Section 18(5) specifically protects applicants where the decision is adverse or qualified.
It requires the Registrar to record written grounds and the material used in making the decision. This requirement is important because an applicant cannot effectively assess or challenge a decision without knowing the reasons behind it.
The dispute arose because Rule 36 of the Trade Marks Rules, 2017 allowed the Registry to communicate its decision without automatically supplying the reasons. Under that process, an applicant seeking to appeal could apply in Form TM-M within 30 days to obtain the grounds for refusal or conditional acceptance.
Why the Court rejected the Rule 36 approach
The petitioner argued that Rule 36 conflicted with Section 18(5). The statute requires written reasons and the underlying material, whereas the Rule permitted the Registry to withhold those reasons unless the applicant took an additional procedural step.
The Court agreed. It held that Rule 36 was arbitrary, unreasonable, and inconsistent with the mandatory statutory requirement to provide reasons. A subordinate rule cannot dilute or override an obligation created by Parliament in the parent statute.
Accordingly, the Court held that Section 18(5) must prevail over Rule 36 to the extent of the inconsistency.
The Courtβs direction
Allowing the writ petition, the Court directed the Registrar of Trade Marks to strictly comply with Section 18(5). In practical terms, this means that every refusal or conditional acceptance must be accompanied by an order that:
- states the specific grounds for the decision;
- identifies the material relied upon; and
- is sent to the applicant within two weeks of the order being passed.
Practical impact for trade mark applicants
The ruling reinforces procedural fairness in trade mark prosecution. A reasoned order enables an applicant to understand whether the objection concerns, for example, distinctiveness, similarity with an earlier mark, classification, descriptiveness, or another statutory ground.
It also improves the ability to decide whether to amend the application, submit further evidence, seek review, or file an appeal. Without reasons, applicants may be forced to pursue remedies without clarity on the legal and factual basis of the decision.
Key takeaway
The judgment confirms that reasoned decision-making is not optional in trade mark registration matters: when an application is refused or conditionally accepted, the Trade Marks Registry must provide the applicant with written grounds and the materials relied upon, promptly and as part of the decision itself.
Connected Matter
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Source: Delhi High Court
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