Delhi High Court: In the cross-rectification petitions arising out of a long-standing dispute between the parties concerning the ‘S.S. WHITE’ trademark used in relation to dental and medical products, where the petitioner sought cancellation/rectification of trademark registration of respondent’s mark ‘S.S. WHITE’ in Classes 5 and 10 and in return respondent sought cancellation/rectification of Trademark Registration of petitioner’s mark ‘S.S. WHITE BURS INC’ in Class 10, the Single Judge Bench of Manmeet Pritam Singh Arora, J., held that respondent’s impugned registration bearing in Classes 5 and 10 was liable to be set aside. The Court held that the petitioner was the prior and rightful proprietor of the mark “S.S. WHITE”; the respondent’s adoption was dishonest, unauthorised, and in bad faith; and the registration was obtained through suppression and procedural manipulation.
Factual Matrix
In the instant matter, the dispute concerns with competing claims over the mark “S.S. WHITE” used in relation to dental and medical products. The petitioner is the registered proprietor of the mark “S.S. WHITE BURS INC.” in Class 10, applied on 19 October 1993 and registration granted on 15 October 2001. The respondent is the registered proprietor of the impugned mark “S.S. WHITE” in Classes 5 and 10, applied on 20 May 2011 and registered on 13 November 2013.
Both parties assert proprietary rights over the dominant element “S.S. WHITE”. While the petitioner claimed prior adoption, global reputation, and earlier registration, the respondent relies upon alleged prior use in India and claims honest concurrent use.
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Petitioner’s Case
The petitioner traced the origin of the mark to the year 1844, when Dr. Samuel Stockton White coined and used the mark in Philadelphia in connection with dental products. It is stated that the mark became associated with the S.S. White Company and subsequently passed through a chain of title, including acquisition by Pennwalt Corporation.
A pivotal development occurred in 1986 when, pursuant to an Asset Purchase Agreement, trademark rights were territorially divided. Thereafter, through amendments dated 15 June 1989, the petitioner was assigned all rights in the trademark “S.S. WHITE” globally, except for limited territories such as the United Kingdom, France, and Brazil. The assignment included the goodwill of the business and registrations.
The petitioner asserted that it had continuously used the mark globally and in India since 1991 through authorised distributors. It was further stated that the mark had been registered in more than 90 jurisdictions and had acquired substantial goodwill and recognition. It relied on sales figures, advertisements, and international exposure, including dental conferences and literature, to establish reputation.
The Petitioner stated that it first became aware of the respondent’s use in August 2012 and immediately issued a cease-and-desist notice dated 11 September 2012. The respondent refused compliance. The Petitioner later discovered that the respondent’s trademark application had already been accepted and advertised, and the limitation for opposition had expired. A protest petition was filed before the Registrar, followed by a writ petition. However, during pendency, the impugned mark was registered.
The petitioner alleged that the respondent had dishonestly adopted an identical mark, copied the stylized representation, and secured registration by misleading the Registry, including improper classification and failure of examination in Class 10.
Respondent’s Case
The Respondent stated that around 1991, a collaboration was proposed by a director of S.S. White UK for sale of products in India. It was claimed that, pursuant to such proposal, the respondent adopted the corporate name and trademark “S.S. WHITE” in 1991—1992 and began importing goods from S.S. White UK.
It was asserted that imports continued until about 1999 and that the respondent independently built goodwill in India. The respondent raised a preliminary objection that the petitioner failed to oppose the mark at the advertisement stage and therefore is not a “person aggrieved” entitled to seek rectification.
The respondent further claimed prior use, honest concurrent use, and reliance on Sections 12 and 34, Trade Marks Act, 1999. It disputed the petitioner’s trans-border reputation and contended that procedural defects in examination cannot invalidate a registration post grant.
Analysis
History and Prior Rights of Petitioner
The Court found that the mark “S.S. WHITE” is a coined and inherently distinctive mark originating from the name of its founder and had been used since 1844 in connection with dental products. The documentary record established a clear chain of title from the original proprietor to the petitioner through valid agreements. The 1989 amendment expressly assigns global rights (excluding specified territories) along with goodwill to the petitioner. It was noted that the petitioner had secured registrations in over 90 jurisdictions and has actively protected its rights worldwide.
In India, the petitioner had demonstrated commercial presence since at least 1991 through distributors. The affidavit evidence and even the respondent’s own documents acknowledged the presence of the petitioner’s products in the Indian market.
On this basis, the Court concluded that the petitioner had established prior, continuous, and bona fide use of the mark, and that the mark had recognition in India well before the respondent’s adoption.
Respondent’s Adoption — Unauthorized and Dishonest
The Court closely examined the respondent’s own pleadings and found that the adoption of the mark was not independent but allegedly at the instance of S.S. White UK. The respondent failed to produce any written agreement or authorization, and S.S. White UK had expressly denied granting any permission. Even assuming such permission existed, the Court held that S.S. White UK had no right to grant permission in India, as the territory belonged to the petitioner under the assignment.
The Court observed that the respondent’s explanation before the Registrar of Companies, that “S.S.” stood for “Surgical” and “Scientific”, was inconsistent with its plea of adoption through collaboration. It held these contradictory stands to be mutually destructive and indicative of dishonesty. Further, it noted that the material on record unmistakably established that the respondent had clear knowledge of the petitioner’s mark and its proprietary rights at the very inception of its adoption.
The Court also noted that the respondent imported goods bearing the mark and sold them in India, thereby deriving goodwill from the petitioner’s mark rather than creating independent goodwill through its own efforts. It was held that sales undertaken by respondent for its locally manufactured goods under the mark amounted to passing off as it was mixing its goods with the goods imported from S.S. White, U.K.
Accordingly, the Court held that in absence of any legally cognizable right, such adoption by respondent was ex facie dishonest and intended to appropriate the goodwill subsisting in the petitioner’s mark.
Imitation of Stylized Mark
The Court found that the respondent not only adopted the identical word mark but also copied the stylized device mark, including font, colour, and overall presentation. The Court described the respondent’s action as a “slavish imitation” and a deliberate attempt to create an association with the petitioner’s international brand. It treated the respondent’s conduct as a clear attempt to ride upon the goodwill and reputation of the petitioner. The Court held that such imitation clearly established bad faith and an intention to mislead consumers and thus reinforced the conclusion that the respondent’s adoption of mark was dishonest.
Suppression of Material Facts and Bad Faith under Section 11(10)
The Court noted that the respondent had knowledge of the petitioner’s prior rights, including receipt of cease-and-desist notice in 2012. Despite that, the respondent failed to disclose these facts to the Registrar during the pendency of its application. The Court held that such omission constituted suppression of material facts, particularly when it was related to prior identical registration and an existing dispute.
The Court asserted that applicants before the Registry owe a duty of candour and cannot take advantage of procedural lapses by withholding relevant information.
“The applicant bears a bounden duty of candour and good faith in placing all relevant facts before the Registrar. An applicant, as well as its authorized trademark attorney, cannot be permitted to remain silent on material facts, including knowledge of failure of a mandatory procedure and thereafter seek to take advantage of procedural lapses on the part of the Registry.”
The Court held that in these circumstances, the respondent’s conduct reflects bad faith and an attempt to obtain registration by suppression of material facts solely by taking advantage of a material procedural lapse. Therefore, the registration obtained in bad faith was liable to be set aside under Section 11(10)(ii), Trade Mark Act.
“An applicant cannot be permitted to reap the benefit of an illegality, as any such registration would be nothing but the fruits of a poisonous tree.”
Rejection of Defences under Sections 12 and 34
The Court rejected the respondent’s reliance on prior use, holding that its use was derivative and cannot confer independent rights. It held the “first in the market” principle to be inapplicable where adoption was not bona fide. It also rejected the defence of honest concurrent use, the same was absent in the present case. In light of the respondent’s own admission of knowledge of the mark, it held the challenge to petitioner’s trans-border reputation as immaterial.
Procedural Lapses and Non-Examination
The Court noted that the respondent’s application was not properly examined and that the statutory obligation under Rule 33, Trade Mark Rules, 2017 (Rules) in respect of Class 10 was not followed. This allowed the Respondent to evade detection of the Petitioner’s prior mark.
The Court relied on Ashiana Ispat Ltd. v. Kamdhenu Ltd., 2025 SCC OnLine Del 7788, where it was held that “the examination under Rule 33 is a substantive and mandatory exercise, and that failure on the part of the Registrar to cite prior identical or deceptively similar marks confers a valuable right upon the aggrieved proprietor to challenge such omission.”
The Court asserted that the Registrar’s failure, coupled with suppression of facts, resulted in registration of an identical mark for identical goods, in clear contravention of Section 11(1), Trade Mark Act. The Court held that the respondent cannot be benefited from such procedural lapses, particularly when it had knowledge of the defect.
The Court further held that the Registrar’s failure to exercise power of withdrawal despite notice of error and prior rights constituted its failure to exercise jurisdiction vested under Section 19, Trade Mark Act read with Rule 38 of the Rules and reflected a breach of the statutory duty to safeguard the purity of the register.
Strongly deprecating the Registrar’s failure of following mandatory procedure while granting the registration to the respondent, the Court emphasised that, though the present case was fit for imposing costs on the concerned Registrar for overreaching the judicial process and abdicating its obligation under the statute, however, since a long time had elapsed, it was refraining from imposing costs.
Decision
The Court held that the petitioner was the prior and rightful proprietor of the mark “S.S. WHITE”; the respondent’s adoption was dishonest, unauthorised, and in bad faith; and the registration was obtained through suppression and procedural manipulation.
The Court held that respondent’s impugned registration squarely falls within the meaning of an ‘entry made without sufficient cause’ as well as an ‘entry wrongly remaining on the register’ within the meaning of Section 57(2), Trade Mark Act. Accordingly, the same was liable to be set aside and removed from the register.
In view of Court’s finding, the counter-rectification petition filed by the respondent did not survive and was dismissed.
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[S.S. White Burs Inc. v. Registrar of Trade Marks, C.O. (COMM.IPD-TM) 448/2022, decided on 25-4-2026]
*Judgment by Justice Manmeet Pritam Singh Arora
Advocates who appeared in this case:
Mr. Balaji Subramanian and Mr. Akash Kundu, Counsel for the Petitioner
Mr. Balendu Shekhar, CGSC with Mr. Krishna Chaitanya, Mr. Rajkumar Maurya and Mr. Divyansh, Counsel for the Respondent 1
Mr. Roopansh Purohit, Mr. Aritra Das and Ms. Narayani Das, Counsel for the Respondent 2