Court’s Decision
The Calcutta High Court set aside eight impugned orders passed by the Deputy Registrar of Trademarks, which had allowed the registration of the word mark “Dunlop” in favour of Glorious Investment Limited across several classes. Holding that the orders were “bereft of any reasoning,” the Court concluded that the principles of natural justice had been violated. Justice Ravi Krishan Kapur remanded the matters for fresh consideration with a direction to complete proceedings within three months, observing, “In the facade of proceduralism, there has been an arbitrary and unjustified exercise of discretion.”
Facts
The case revolved around eight appeals concerning applications for registration of the word mark “Dunlop” in different classes—ranging from telecommunications to alcoholic beverages—on a “proposed to be used” basis. Originally filed by Dunlop India Ltd., the applications eventually stood in the name of Glorious Investment Ltd. due to a series of alleged assignments. The appellant opposed these registrations, citing fraudulent assignments executed during the pendency of winding-up proceedings of Dunlop India Ltd.
Issues
- Whether the Registrar’s rejection of opposition and acceptance of the trademark applications violated principles of natural justice.
- Whether the Registrar’s findings were reasoned and supported by law.
- Whether the purported assignments during liquidation proceedings were fraudulent and void.
- Whether incorrect procedural forms were used in filing assignments.
- Whether the mark “Dunlop” qualified as a well-known trademark under law.
Petitioner’s Arguments
The petitioner contended that the impugned orders were unreasoned, ex facie illegal, and rendered without a fair hearing. It was argued that fraudulent assignments were executed during liquidation proceedings of Dunlop India Ltd., without notice to the petitioner or the Official Liquidator. The Registrar’s conduct was also alleged to be arbitrary, with the rejection of adjournment in breach of Trademark Rules, 2002, which applied at the time of initiation. The petitioner argued that the assignments were void, backdated, and filed using the incorrect forms (TM-16 instead of TM-23/TM-24), and that the Registrar had failed to apply Section 11(6)-(9) of the Trademarks Act in determining whether “Dunlop” was a well-known mark.
Respondent’s Arguments
The respondent no.1 (Glorious Investment Ltd.) submitted that the opposition was meritless and that procedural irregularities were raised for the first time in appeal. It argued that the impugned orders were reasoned and justified, that the Registrar rightly refused adjournments, and that the mark “Dunlop” was well-known. It relied on precedents such as Armasuisse v. Trade Mark Registry and Kamdhenu Ispat Ltd. v. Kamdhenu Pickles and Spices to support procedural validity and the correctness of the assignments.
Analysis of the Law
The Court held that while Rule 50 of the Trademarks Rules, 2017 restricts adjournments to two, such restriction did not apply retrospectively to proceedings initiated under the 2002 Rules, which permitted broader discretion. Procedural laws are not to be construed so rigidly as to frustrate justice. The Registrar’s refusal to adjourn and the misleading record of hearings violated natural justice and contravened settled law on fair hearings. The Court also stressed that the Registrar failed to assess the validity of assignments as per Section 45 of the Trademarks Act, nor did it evaluate distinctiveness or the well-known status of the mark under Sections 11(6)-(9).
Precedent Analysis (in brief bullet points)
- Kranti Associates v. Masood Ahmed Khan (2010) 9 SCC 496: Emphasised the requirement of reasoned orders as a facet of natural justice.
- State of Punjab v. Shamlal AIR 1976 SC 1177: Rules of procedure must serve justice and not obstruct it.
- Uniworth Resorts v. Ashok Mittal 2007 SCC OnLine Cal 532: Orders must explain “why” for the “what.”
- Daimler Benz v. Hybo Hindustan AIR 1994 Del 239: Criteria for determining well-known trademarks.
- UCO Bank v. Spanco Ltd. 2014 SCC OnLine Bom 1232: Fraudulent actions in commercial and liquidation contexts.
- Kia Wang v. Reg. of Trade Marks 2023 SCC OnLine Del 5844 and BPI Sports LLC v. Saurabh Gulati (2023) 3 HCC (Del) 164: Importance of Registrar applying mind and maintaining register purity.
Court’s Reasoning
The Court found that the Registrar’s orders were mechanical and devoid of analytical reasoning. The record of hearing was misleading as the appellant was not allowed a fair opportunity to present arguments. The orders failed to identify any specific documents or evidence relied upon, violating the principle that “reason is the life of the law.” The Court also criticised the contradictory positions taken by the Registrar’s counsel across different appeals and held that serious allegations of fraud, if ignored, undermined the credibility of the trademark registration process.
Conclusion
The Court set aside all eight impugned orders and remanded the matters to the Registrar for reconsideration. The Registrar was directed to grant a proper hearing and dispose of the matters within three months. All observations in the judgment were declared tentative and the parties were left free to argue all issues afresh.
Implications
The judgment underscores the importance of reasoned decision-making, procedural fairness, and due diligence in handling intellectual property matters—especially those involving allegations of fraud and liquidation. The Court’s emphasis on transparency and accountability reinforces judicial oversight in the administrative functioning of trademark authorities.
