Summary
In a series of eight appeals concerning trademark oppositions filed by Dunlop International Limited against Glorious Investment Limited, the Calcutta High Court set aside orders passed by the Registrar of Trade Marks allowing Glorious Investment to register the mark "DUNLOP" in various classes. The Court held that the Registrar’s decisions were procedurally flawed, unreasoned, and passed in violation of natural justice.
The Oppositions and the Contested Applications
Dunlop International initiated eight opposition proceedings against applications filed by Dunlop India Limited (later Glorious Investment Limited) for registration of the mark “DUNLOP” across Classes 16, 26, 32, 33, 38, 40, 41, and 42. These applications covered goods and services including telecommunications, education, beverages, printed matter, and more — all filed on a “proposed to be used” basis.
The Registrar rejected all eight oppositions, holding that despite the marks being identical, the goods and services in question were different enough to avoid confusion. Consequently, the mark “DUNLOP” was allowed to proceed to registration in each of the classes.
Name Changes, Assignments, and the Trail of Title
At the heart of the dispute lay a complex trail of ownership. Originally filed by Dunlop India Limited, the applications were continued by Glorious Investment Limited following a series of name changes and alleged assignments — from Dunlop India to Ruia Sons Pvt. Ltd., then to Vrisha Services Pvt. Ltd., and finally to Glorious Investment.
Dunlop International challenged these assignments as fraudulent, claiming that they were executed while Dunlop India was under liquidation. As per Dunlop International, the deeds and related documents were neither disclosed to the objector nor notified to the Official Liquidator, raising serious questions about their validity. The Registrar, however, allowed the amendments without issuing any notice, thereby enabling Glorious Investment to step into the shoes of the applicant and continue the applications under the “DUNLOP” mark.
Procedural Irregularities and Denial of Hearing
The Court recorded glaring violations of due process. On 20 March 2024, when the matters were fixed for hearing, counsel for the appellant sought an adjournment on grounds of illness — the third such request. The Registrar refused and proceeded to decide the cases. Despite the Trademark Registrar recording that both parties were heard, the Court found that Dunlop International had no real opportunity to argue the matter on merits.
As the cases had been pending since 2012, with pleadings completed more than a decade ago, the Court stated that the Registrar’s abrupt conclusion of hearings was unjustified. Though Rule 50 of the Trademark Rules, 2017 imposes a limit of two adjournments, the Court noted that these proceedings had commenced under the 2002 Rules, which imposed no such constraint. The Court therefore concluded that the Registrar’s refusal to grant an adjournment based on the 2017 Rules was misplaced.
The Absence of Reasoned Orders
The impugned orders, in the Court’s view, were devoid of reasoning. The Deputy Registrar’s blanket statement — that the applicant was already a registered proprietor in other classes and that no cause was shown to reject the mark — failed to disclose what documents were examined or why the oppositions lacked merit.
The Court reiterated that quasi-judicial orders must answer the dual tests of “what” and “why.” As per the Court, the Registrar’s decisions failed both. The Court observed that the lack of analysis of the parties’ claims, documents, and objections rendered the orders arbitrary and invalid.
On the Claim of “Well-Known” Status
The Registrar had also held that “DUNLOP” was a well-known mark, though no inquiry was made under Sections 11(6) to 11(9) of the Act, and the mark was not on the official list of well-known trademarks under Rule 124. The Court found this conclusion to be unsupported by record or law, and held that mere historical use or prior registrations did not automatically confer well-known status, especially in unrelated classes.
Contradictions Within the Registrar’s Office
An unusual feature of the case was the contradictory stands taken by the Registrar’s own representatives. In one of the appeals (IPDTMA/17/2024), the advocate representing the Registry stated that the order under challenge was indefensible. In the remaining appeals, other Registry representatives defended the same set of orders as being valid and justified. This divergence in stance, in the Court’s view, further impaired the credibility of the orders.
Remand and Directions
Concluding that the orders were passed in breach of natural justice and without any application of mind, the Court set aside all eight impugned decisions and remanded the matters to the Registrar of Trade Marks for fresh adjudication. The Registry was directed to afford full opportunity to all parties and dispose of the proceedings within three months from receipt of the Court’s order.
Citation: Dunlop International Limited v. Glorious Investment Limited & Anr., IPDTMA Nos. 14–21 of 2024 (H.C. Calcutta, June 11, 2025). Available at: http://indiankanoon.org/doc/184627826/, Visited on: 12/06/2025.
