Summary
The Delhi High Court ruled that the vertical inversion of letters in a trademark does not constitute a substantial amendment under Rule 37 of the Trade Marks Rules, 2017. The Court emphasized procedural lapses by the Registrar and upheld the appellant’s registration, setting aside the cancellation order.
Background:
The present matter came before the Delhi High Court as an appeal under Section 91 of the Trademarks Act 1999, against an order by the Registrar of Trademarks cancelling the trademark application of the appellant.
The appellant was in the business of self-tapping metal screws and self-drilling screw, and had been using the mark since 2013. He filed a trademark application in Class 6 in 2018. The Registrar issued an Examination Report in November 2018, to which the appellant filed a response in December 2018, along with the following amendment in the applied for mark, as noted by the Court:
“the two letters ‘S’ and ‘D’ were originally placed horizontally in the applied mark, which were subsequently placed vertically by way of the amendment. The subject mark continued to have the same four letters ‘S’, ‘D’, ‘H’ and ‘P’ wherein the letters ‘S’ and ‘D’ continued to be in smaller font as compared to the letters ‘H’ and ‘P’.”
The mark in use 
The mark as filed
The appellant when filing the amendment claimed inadvertent clerical error. In June 2019, the application proceeded towards registration and was subsequently registered. In July 2019, Respondent No. 2 filed a rectification petition against the said mark and also obtained an ex-parte interim injunction, which was vacated in October 2019. Later, in July 2020, Respondent No. 2 filed a complaint before the Registrar raising an objection for the first time that the amendment sought in the applied mark was substantial in nature and not permissible under Rule 37 of the Trade Marks Rules, 2017 (‘Rules’), and also that a fresh user affidavit was not filed along with the amendment application.
The Registrar issued notice to the appellant, and a hearing was held in November 2022, following which the impugned order was passed.
The Appellant made the following submissions:
- The Registrar failed to give 1 month notice of the hearing as mandated under Section 57(4) of the Act and Rule 100 of the Rules, since the email was sent on 1st November 2022 while the hearing took place on 17th November 2022. It was further submitted that Section 57(4) had wrongly been invoked by the Registrar as the hearing held on 17th November 2022 was not on account of its own motion but only pursuant to the complaint filed by Respondent No. 2. In the aforesaid notice, the ground taken for cancellation was ‘substantial alteration’ of the applied mark. However, the impugned order went beyond the aforesaid ground while directing the cancellation of registration the subject mark. Thus, the appellant argued that the order contravened the Act and the Rules.
- The size and font of the letters ‘SD’ had not been changed and the amendment was sought to the limited extent of inverting the letters ‘SD’ in the applied mark. Therefore, there was no substantial change/ alteration in the subject mark as compared to the applied mark in terms of Rule 37 of the Rules. However, there was no explanation or finding in the impugned order as to how the amendment sought by the appellant resulted in a ‘substantial alteration’ in the applied mark.
- In response to the objection about the affidavit, appellant argued that the amendment was necessitated on account of a clerical error that the letters ‘SD’ in the applied mark had been written horizontally instead of vertically. Therefore, no fresh user affidavit was required to be filed along with the amendment application.
Respondent No. 2 made the following submissions:
- The appellant did not raise any objection before the Registrar that the notice of hearing was not provided at least one month before the hearing. By attending the hearing and making submissions before the Registrar without raising the aforesaid objection, the appellant has waived his right to object to the notice.
- It can be inferred from a comparison of the applied mark with the subject mark that size of the letters ‘SD’ has also been enlarged in the subject mark. Therefore, there was no clerical error, and by virtue of the amendment, the appellant sought ‘substantial alteration’ in the visual representation of the applied mark which is impermissible under Rule 37 of the Rules. Therefore, the amendment application filed by the appellant was erroneously allowed by the Registrar.
- There is no bar on the Registrar of Trade Marks to invoke its suo moto powers even during the pendency of any other proceedings, and such proceedings have no effect on the validity/ legality of the proceedings under Section 57(4) of the Act.
Court’s Analysis and Decision:
The Court found that the hearing notice issued by the Registrar was in clear violation of the mandate of Rule 100 of the Rules which provides that the Registrar of Trade Marks is required to give at least one month’s notice under Section 57(4) of the Act, and also in violation of principles of natural justice. By virtue of the said notice, the Registrar was seeking to cancel the registration granted in favour of the appellant more than three years prior. Therefore, it was only fair that the Registrar gave to the appellant the bare minimum time prescribed under the statute to put forward his case. Surprisingly, the Registrar did not even allow the 21 days given for filing response in its own notice, and fixed the date of hearing within 17 days from the date of the notice.
It further held that the requirements and timelines prescribed under Rule 100 of the Rules are mandatory. There cannot be any question of waiver of such requirements and timelines by the appellant.
The Court proceeded to state as follows:
“13. The notice was premised on the ground that there was ‘substantial alteration’ of the applied mark in the subject mark. However, a reading of the impugned order would show that there is no finding on the ‘substantial alteration’ carried out by the appellant despite recording the appellant’s submission that there has been no substantial change in the subject mark consequent to the amendment.
14. The impugned order proceeds on the basis that the subject mark, subsequent to the amendment, was advertised without seeking any clarification or asking any explanation from the appellant about the amendment sought by him and also without seeking a fresh affidavit and documents in respect of the appellant’s alleged user claim for the subject mark. To be noted, requirement of a fresh user affidavit to establish the user claim in respect of the subject mark since 27th February 2013 was not mentioned in the notice issued by the Registrar as a ground for cancellation of the registration. If the Registrar was of the view that the appellant had not filed a fresh user affidavit along with documents in support of his user claim in respect of the subject mark since 27th February 2013, it should have called upon the appellant to furnish such affidavit and/ or documents. The notice issued by the [Registrar] never called upon the appellant to file a fresh user affidavit or documents to evidence his use of the subject mark since 27th February 2013.”
The Court observed that, the impugned order, in effect, sought to set aside the amendment that was allowed in favour of the appellant. However, the same could not have been done by the Registrar without following the prescribed timelines provided in the statute. Further, the Registrar also erred in passing the impugned order on the basis of grounds which were not even mentioned in the notice issued to the appellant.
The Court set aside the impugned order and allowed the appeal.
Citation:Romil Gupta Trading as Sohan Lal Gupta vs Registrar of Trade Marks & Anr, Delhi High Court, 14th May 2025, C.A.(COMM.IPD-TM) 1/2023 with I.A. 1530/2023, I.A. 1532/2023 and I.A. 26186/2023 http://indiankanoon.org/doc/112776575/
Authored by Ms. Ashwini Arun