Trademark Opposition Fails Without Territorial Use Evidence

Summary

In a recent judgment, the Madras High Court upheld the Registrar of Trademarks’ decision to allow the ‘JAI HANUMAN’ mark by S.A.S. Refineries. The appeal by Raghuvar (India) Limited was dismissed due to lack of territorial use evidence of its mark ‘HANUMAN’ in South India. This ruling reinforces the importance of proving regional use during opposition proceedings.

This appeal was filed before the Madras High Court, under Section 91 of the Trade Marks Act, 1999, to set aside an order passed by the Trade Marks Registry, Chennai on 01.05.2019 (“Order”).

Parties to the case

• • Appellant: Raghuvar (India) Limited
  • Respondent No. 1: Registrar of Trademarks
  • Respondent No. 2: S.A.S. Refineries (P) Limited

Background of the case

Raghuvar (India) Limited, through its former company (predecessor-in-interest), Rohtas Industries Limited, had been using the trademark ‘HANUMAN’ for edible oil vanaspathi since the year 1966. Meanwhile, S.A.S. Refineries (P) Limited filed an application for the trademark ‘JAI HANUMAN’ in Class 29 for edible oils under Application No. 861833. When the trademark ‘JAI HANUMAN’ was advertised, the Appellant opposed the application.

However, the opposition was rejected by the Registrar of Trademarks, as per the Order on the following grounds:

1. 1. The assignment from Rohtas Industries Limited to the Appellant had not been recorded in the records of the Trade Marks Registry.
   2. The Appellant failed to produce any evidence of use of its mark, ‘HANUMAN’, in the southern states of India.

Considering the above grounds, the Registrar of Trademarks directed that the application proceed further, provided the mark, ‘JAI HANUMAN’, was restricted for sale in South India upon deleting vanaspathi from the specification of goods.

Arguments raised

Aggrieved by the Order, the Appellant filed the appeal, citing that:

1. 1. An application for registration of the assignment deed executed by Rohtas Industries Limited was available with the Trade Marks Registry.
   2. Despite that, the Registrar’s conclusion that it wasn’t recorded was unreasonable.
   3. Prior usage of the Appellant’s mark across the country was not considered.

Conclusion

Upon examining the documents placed on record by the Appellant, it was observed that no evidence of use of its mark in any of the South Indian states was submitted. In this circumstance, the Court concluded that no interference with the Order was warranted. Hence, the appeal was dismissed with no costs. This case reinforces the principle that evidence of actual territorial use is also necessary for successful opposition.

Citation: Raghuvar (India) Limited vs The Registrar of Trademarks & Anr., In the Madras High Court, (T)C.M.A.(TM)No.76 of 2023, (OA/1/2020/TM/CHN) on 27th February 2025. Available at: https://indiankanoon.org/doc/156956415/

Article and Accessibility reviewed by Ms. Kavya Sadashivan.