Court’s decision
The Delhi High Court dismissed two writ petitions challenging the Intellectual Property Appellate Board’s order cancelling the trademark registration of the mark “THUKRAL” in Class 21 for brooms.
Justice Tejas Karia held that the Appellate Board had rightly proceeded on merits after repeated non-filing of a counter statement by the registered proprietor. The Court ruled that prior user rights under Section 34 of the Trade Marks Act override statutory registration and that writ jurisdiction under Article 226 cannot be invoked to reappreciate evidence or rectify a party’s procedural lapses .
Facts
The petitioner, a sole proprietor trading as Agarwal Enterprises in Bareilly, claimed use of the mark “THUKRAL” since 1995 for brooms and secured registration in 2003 under Registration No. 1223066 in Class 21.
The respondents filed rectification applications seeking cancellation of the mark, asserting prior family use of “THUKRAL” in relation to brooms since 1954 through various family firms operating in Delhi.
The Intellectual Property Appellate Board issued notices and granted multiple adjournments. However, the petitioner failed to file a counter statement within the prescribed two-month period under Rule 10(1) of the IPAB Rules, despite repeated indulgence and imposition of costs.
Issues
The High Court considered:
- Whether the petitioner was denied natural justice in the rectification proceedings.
- Whether failure of previous counsel to file a counter statement justified interference.
- Whether the Board’s findings on prior user, non-use, and dishonest adoption warranted writ intervention.
- Whether registration conferred absolute rights despite claims of prior user.
Petitioner’s arguments
The petitioner contended that his previous counsel failed to file the counter statement despite assurances, and that he should not suffer for counsel’s lapse. It was argued that the Board decided the matter without properly hearing him.
He asserted prior user since 1995 and claimed that the respondents’ evidence was unreliable, including allegedly forged invoices. He also argued that the mark “THUKRAL” was not exclusive to the respondents and that mere similarity in surname spelling—“Thakral” versus “Thukral”—could not establish prior user.
The petitioner sought restoration of the trademark’s registered status.
Respondents’ arguments
The respondents submitted that the mark “THUKRAL” had been used by their family businesses since 1954 for identical goods—brooms and allied products. They argued that the petitioner deliberately adopted their surname despite being unrelated.
It was contended that the petitioner persistently defaulted in filing the counter statement and ignored repeated directions, including payment of costs. The Board’s orders demonstrated continuous non-appearance and procedural non-compliance.
The respondents emphasized that prior user rights under Section 34 prevail over subsequent registration and that non-use of the mark after registration also justified removal under Section 47.
Analysis of the law
The Court first reiterated the limited scope of writ jurisdiction under Article 226. It does not function as an appellate forum over findings of a specialized tribunal unless there is perversity, jurisdictional error, or violation of natural justice.
Rule 10(1) of the IPAB Rules mandates filing of a counter statement within two months of service. The record showed repeated extensions and indulgence, culminating in denial of further opportunity due to non-compliance.
The Court held that absence of a verified and signed counter statement undermined the petitioner’s claim of counsel’s fault. No documentary proof of preparation or verification was produced.
Precedent analysis
The Court relied on the settled principle embodied in Sections 27, 28, and 34 of the Trade Marks Act that registration rights are subject to prior user rights.
It reiterated the Supreme Court’s jurisprudence in Yishudas Trading v. Vazier Sultan Tobacco Co. that trademark registration is not absolute or perpetual.
The judgment reaffirmed that removal for non-use under Section 47 is statutorily permissible and that prior user superiority is embedded in the legislative scheme.
Court’s reasoning
The Court found that the petitioner had multiple opportunities between 2013 and 2016 to file a counter statement and failed to do so. Orders recorded repeated adjournments, non-appearance, and non-payment of costs.
The explanation blaming prior counsel was termed a “bare assertion” unsupported by any signed draft or proof of payment.
On merits, the Board had recorded findings of prior user since 1954, non-use by the petitioner after registration in 2003, and dishonest adoption of the surname without explanation. These were factual determinations based on available material.
The Court held that a party who chooses not to contest cannot later allege non-consideration of evidence.
Conclusion
The Delhi High Court upheld the IPAB’s order dated 10.05.2016 directing cancellation and removal of the mark “THUKRAL” from the Trade Marks Register.
Both writ petitions were dismissed, and the Court declined to interfere under Article 226, finding no perversity, jurisdictional error, or violation of natural justice .
Implications
This ruling reinforces key trademark principles:
• Prior user rights override subsequent registration.
• Trademark registration is not absolute or perpetual.
• Non-use can justify rectification under Section 47.
• Procedural discipline in rectification proceedings is critical.
• Writ courts will not rescue parties from self-created procedural defaults.
The decision strengthens the doctrine of prior user superiority and underscores the importance of active defense in rectification proceedings.
Case law references
- Yishudas Trading v. Vazier Sultan Tobacco Co. Ltd. (1996) – Trademark registration is not absolute or perpetual and remains subject to statutory conditions.
- Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Bayer Aktiengesellschaft – Fraudulent procurement of registration can invalidate exclusivity claims.
- Sections 27, 28, 34 and 47, Trade Marks Act, 1999 – Registration rights are subordinate to prior user rights and liable to removal for non-use.
FAQs
1. Does trademark registration give absolute ownership?
No. Registration is subject to statutory limitations, including prior user rights under Section 34 and removal for non-use under Section 47.
2. What happens if a party fails to file a counter statement in rectification proceedings?
Failure to file within prescribed timelines can result in loss of the right to contest, and the tribunal may proceed on available material.
3. Can the High Court re-examine factual findings of the IPAB in writ jurisdiction?
Generally no. The High Court interferes only in cases of perversity, jurisdictional error, or violation of natural justice.