Dunlop International initiated eight opposition proceedings against applications filed by Dunlop India Limited (later Glorious Investment Limited) for registration of the mark \u201cDUNLOP\u201d 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 \u2014 all filed on a \u201cproposed to be used\u201d basis.
\nThe 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 \u201cDUNLOP\u201d was allowed to proceed to registration in each of the classes.<\/p>\n
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 \u2014 from Dunlop India to Ruia Sons Pvt. Ltd., then to Vrisha Services Pvt. Ltd., and finally to Glorious Investment.
\nDunlop 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 \u201cDUNLOP\u201d mark.<\/p>\n
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 \u2014 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.
\nAs the cases had been pending since 2012, with pleadings completed more than a decade ago, the Court stated that the Registrar\u2019s 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\u2019s refusal to grant an adjournment based on the 2017 Rules was\u00a0 misplaced.<\/p>\n
The impugned orders, in the Court\u2019s view, were devoid of reasoning. The Deputy Registrar\u2019s blanket statement \u2014 that the applicant was already a registered proprietor in other classes and that no cause was shown to reject the mark \u2014 failed to disclose what documents were examined or why the oppositions lacked merit.
\nThe Court reiterated that quasi-judicial orders must answer the dual tests of \u201cwhat\u201d and \u201cwhy.\u201d As per the Court, the Registrar\u2019s decisions failed both. The Court observed that the lack of analysis of the parties\u2019 claims, documents, and objections rendered the orders arbitrary and invalid.<\/p>\n
The Registrar had also held that \u201cDUNLOP\u201d 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.<\/p>\n
An unusual feature of the case was the contradictory stands taken by the Registrar\u2019s 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\u2019s view, further impaired the credibility of the orders.<\/p>\n
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\u2019s order.<\/p>\n