Madras High Court: In an appeal filed under Section 91 of the Trade Marks Act, 1999 (‘Trade Marks Act’), challenging the proceedings of the Registrar of Trade Marks dated 09-05-2025, a Single Judge Bench of N. Anand Venkatesh, J., held that the unilateral cancellation of the appellant’s trade mark registration was illegal and unsustainable. The Court observed that once a Registration Certificate is issued, cancellation can only be done through rectification proceedings, and not by unilateral administrative action. Consequently, the impugned order was set aside and reinstatement of the registration was directed.
Background
The appellant, a manufacturer of food products, adopted the trade mark “SAKTHI” in 1977 and used it openly, continuously, and extensively for spice and masala powders, cereals, pickles, edible oil, flour, and papad, marketed across India and exported abroad. To secure statutory protection, the appellant registered the mark “SAKTHI” under various Classes, including Class 30, and also obtained copyright for its distinctive label style and colour scheme.
On 13-12-1999, the appellant applied for registration of “SAKTHI” under Class 30 in respect of rice. The application was advertised in the Trade mark Journal dated 16-10-2002 and registration was granted on 15-07-2005 vide Certificate No. 400179 (‘Certificate’), renewed from time to time.
On 06-02-2023, a public notice listed applications deemed abandoned for failure to file counter statements. To the appellant’s shock, its application was included despite already being registered. Verification revealed that the registration had been unilaterally cancelled, and opposition had been filed by the respondent in 2018. The appellant made representations on 20-02-2023 and 27-02-2023 seeking restoration. Meanwhile, the public notices were challenged before the Delhi High Court, where the Controller undertook to withdraw them. Despite this, the appellant received an order dated 09-05-2025 abandoning its application.
The appellant contended that no opposition was filed against application, and that the opposition pertained to a different application concerning “MAHAVEER’S SHAKTI.” The respondent argued that opposition was filed, notice was issued, and since no reply was filed, the application was rightly treated as abandoned. It was further submitted that disputes in similar applications had been resolved by compromise, permitting sale in southern States and export, subject to which opposition could be withdrawn.
Analysis and Decision:
The Court observed that the trade mark registration was granted in favour of the appellant on 15-07-2005 vide Certificate, which was renewed from time to time. It was emphasised that after nearly 18 years, the public notice dated 06-02-2023 came to be issued wherein a list of trade mark applications were provided and the appellant’s application also formed part of it, and only at that point of time, the appellant came to know that the registration certificate had been unilaterally cancelled by the Registrar.
The Court noted that the opposition was filed only after the application was republished in 2018, and questioned whether such republication was permissible after issuance of a registration certificate. The Court highlighted the Delhi High Court’s order, where the Controller undertook to withdraw the public notices dated 06-02-2023 and 27-03-2023 within 10 days. Recording the same, the writ petition was closed. The Court observed that in such an event, no consequence could follow, and the matter must have ended there, however, the impugned order dated 09-05-2025 was passed, declaring the application abandoned.
The Court further observed that the impugned order was illegal and unsustainable for more than one reason. It was highlighted that the application submitted by the appellant was already acted upon and the registration certificate was issued and renewed, and if this certificate has to be cancelled for any reason, the appellant ought to have been put on notice and an opportunity must have been given to the appellant, failing which, such cancellation will be construed as a nullity in the eye of law.
The Court noted that once a registration certificate is given, if anyone is aggrieved, only a rectification can be filed, whereas the Registrar had proceeded to cancel the certificate unilaterally, restored the application, and entertained opposition and such procedure is nowhere contemplated under the Trade Marks Act and Trade Marks Rules, 2002. The Court remarked that the Registrar ought not to have proceeded further to pass the impugned order declaring abandonment after having taken a stand before the Delhi High Court that the public notices were to be withdrawn. If those public notices were withdrawn, there was no question of entertaining an opposition and calling upon the appellant to file a counter.
Ultimately, the Court held that the entire procedure followed by the Registrar smacked of arbitrariness and was in utter violation of principles of natural justice. Accordingly, the impugned order dated 09-05-2025 was set aside, and a direction was issued to reinstate the registration granted under the Certificate dated 15-07-2005 within four weeks.
The Court thus allowed the appeal, with no order as to costs.
[Perundurai Chennimalai Gounder Duraisamy Trading as Sakthi Trading Co. v. Registrar of Trade Marks Office, 2026 SCC OnLine Mad 868, decided on 27-01-2026]
Advocates who appeared in this case:
For the Respondent: C. Samivel, Senior Panel-Central Government Standing Counsel
