Parveen Kumar Jain Vs. Rajan Seth-CHUR CHUR NAN

The Street Delicacies of Delhi and the Battle Over "Chur Chur Naan": A Legal Analysis

Can You Register a Common Food Name as a Trademark

Introduction

The bustling streets of Delhi are globally celebrated for their culinary heritage, where iconic eateries draw both gourmands and everyday consumers. However, when popular street food terminologies transition from local menus to the trademark registry, they often spark intense legal battles over brand monopoly. The High Court of Delhi addressed this intersection of culinary culture and intellectual property law in a significant trademark dispute involving the famous street food delicacy, "Chur Chur Naan". The ruling carefully defines the boundaries of trademark enforcement by addressing whether common conversational descriptors of food can be monopolized by a single registered proprietor.

Factual and Procedural Background

The Plaintiff, Parveen Kumar Jain, operates a food outlet in the Paharganj area of Delhi, specializing in traditional Indian flatbreads. The Plaintiff secured statutory trademark registrations for the marks "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" under the Trade Marks Act, 1999. Additionally, the Plaintiff claimed proprietary rights over the expression "PAHARGANJ KE MASHOOR AMRITSARI NAAN". Seeking to enforce these registered rights, the Plaintiff filed a commercial suit in the High Court of Delhi seeking a permanent injunction, copyright protection, damages for passing off, and a rendition of accounts against the Defendants, Rajan Seth and others, who operated a competing outlet in the same locality.

The Defendants utilized the expressions "PAHARGANJ KE CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" for their culinary business. The Plaintiff moved an interlocutory application under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908, seeking an ad-interim temporary injunction to restrain the Defendants from using these names. At the initial stage of the proceedings, on April 25, 2019, the Court appointed a Local Commissioner to investigate and submit a report regarding the market usage of the disputed terms by the Defendants as well as other third-party food vendors. The Defendants actively opposed the application, seeking rectification of the Plaintiff's registrations on the ground that the terms lacked basic distinctiveness.

Dispute Before the Court

The core legal and factual question before the Court was whether the Plaintiff, by virtue of holding statutory trademark registrations, could claim an exclusive monopoly over the terms "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" and restrain competing local food outlets from using them.

The Plaintiff contended that because his trademarks were registered, he enjoyed an absolute, exclusive statutory right to use and protect them under Sections 28 and 29 of the Trade Marks Act, 1999. The Plaintiff further argued that the Defendants were legally estopped from claiming that the term "CHUR CHUR NAAN" was generic or descriptive because the Defendants themselves had applied to register a device mark containing the phrase "PAHARGANJ KE MASHOOR CHUR CHUR NAAN". To support this plea of estoppel, the Plaintiff relied on established judicial precedents, arguing that once a party applies for the registration of a mark, they cannot claim that the same mark is generic or incapable of protection.

The Defendants countered that the terms in question were completely generic and descriptive of the food product itself. They pointed out that there were dozens of outlets across Delhi using the term "CHUR CHUR NAAN" on various public food-delivery and listing platforms such as Zomato, Justdial, and EatTreat. The Defendants argued that "Chur Chur" simply translates to "crushed," and "Chur Chur Naan" merely describes a crushed flatbread. They maintained that such terms are common to the food trade and are completely incapable of acquiring secondary trademark significance, meaning no single business should be granted a commercial monopoly over them.

Reasoning and Analysis of the Court

The Court began its analysis by balancing the statutory rights of a registered trademark holder against the legislative limitations built into the Trade Marks Act, 1999. While Section 28 of the Act vests exclusive rights in a registered proprietor, these rights are explicitly subject to other provisions of the Act. Specifically, the Court invoked Section 35 of the Act, which acts as a statutory saving clause. Under Section 35, a registered trademark holder cannot interfere with any third party's bona fide use of a term that describes the character or quality of their goods or services.

The Court drew a parallel between "Chur Chur Naan" and other regional food terms used in everyday language across India, such as "Amritsari Kulcha," "Malabar Parantha," "Hyderabadi Biryani," "Kashmiri Dum Aloo," "Chettinad Chicken," "Murthal ke Paranthe," and "Mangalore idli". The Court observed that the term "Chur Chur" literally translates to "crushed" in normal conversational language. Therefore, "Chur Chur Naan" is simply a "crushed naan" and nothing more, serving as a direct description of the physical state and character of the bread. The Court ruled that such generic descriptive terms are entirely incapable of acquiring distinctiveness or trademark significance.

The Court distinguished the precedents of Automatic Electric Limited v. R.K. Dhawan & Anr. and The Indian Hotels Company Ltd and Ors. v. Jiva Institute of Vedic Science and Culture, which the Plaintiff had cited to support his plea of estoppel. The Court observed that the Defendants had not applied for a registration of the word mark "CHUR CHUR NAAN" itself, but rather for a composite device logo featuring a circular design of a chef. In such composite device registrations, generic phrases are merely descriptive elements of a larger logo and are eventually subject to disclaimers.

Crucially, the Court emphasized that even if the trademark registry mistakenly grants registrations for entirely generic or descriptive words, a court of law cannot ignore the public interest. The judiciary must prevent the creation of monopolies over common linguistic terms, as doing so would unfairly restrict fair market competition.

To prevent consumer confusion and passing off in the same locality, the Court observed that most food vendors naturally distinguish themselves by adding distinctive prefixes, such as "Sanjay Chur Chur Naan" or "Vijay Chur Chur Naan". Thus, while the Defendants had every right to sell crushed naans, they were required to adopt a name that clearly distinguished their business from the Plaintiff's business to avoid any initial customer deception.

Final Decision of the Court

The Court disposed of the interim injunction application with practical, balancing directions. It declined to grant the Plaintiff an absolute injunction against the words "CHUR CHUR NAAN" or "AMRITSARI CHUR CHUR NAAN". Instead, to prevent local business confusion, the Court accepted a mutual arrangement where the Defendants agreed to modify their trade names to "PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN" and "PAHARGANJ SETH KE MASHOOR AMRITSARI NAAN".

The Court directed that the revised name must be displayed in a uniform font, color, and style, ensuring that the generic phrases "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" are not given any undue visual prominence. The Defendants were granted a period of thirty days to execute this transition. Additionally, the online food-delivery platform Swiggy (Defendant Number 4) was directed to file an affidavit listing the names of all outlets using similar "Chur Chur Naan" terms on its platform, after which it would be removed from the lawsuit.

Point of Law Settled

This judgment establishes that entirely generic or descriptive expressions used in common language to describe the physical characteristics or preparation of food are legally incapable of acquiring exclusive trademark status. The ruling confirms that even if a party successfully registers such a generic term, Section 35 of the Trade Marks Act, 1999, protects competitors who use the term in a bona fide, descriptive manner. Furthermore, the decision clarifies that the principle of estoppel (from Automatic Electric) does not apply where a party has merely applied for a composite device mark containing generic descriptive text, and it empowers courts to ignore wrongful or overbroad registrations in the interest of maintaining a free and competitive market.

Case Details

Title of the Case: Parveen Kumar Jain Vs. Rajan Seth & Ors.

Date of Judgment: May 8, 2019

Case Number: CS(COMM) 213/2019

Neutral Citation: 2019:DHC:2540

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Justice Prathiba M. Singh

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In Parveen Kumar Jain v. Rajan Seth & Ors. [CS(COMM) 213/2019], the Delhi High Court resolved an interim injunction application in a trademark dispute concerning the terms "CHUR CHUR NAAN" and "AMRITSARI CHUR CHUR NAAN" for local food outlets in Paharganj. The Plaintiff sought to restrain the Defendants based on registered trademarks, while the Defendants argued the terms were entirely generic. The Court held that "Chur Chur" (meaning crushed) is a common, conversational descriptor of the food's physical character and is legally incapable of acquiring exclusive trademark distinctiveness. Protecting the bona fide descriptive rights of traders under Section 35 of the Trade Marks Act, 1999, the Court refused an absolute injunction but directed the Defendants to add a distinguishing prefix, renaming their outlets to "PAHARGANJ SETH KE MASHOOR CHUR CHUR NAAN" to prevent local consumer confusion.

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Sant Kumar Mehra Vs. Ram Lakhan

Dismissal of Injunction in Trademark Dispute: Delhi HC Holds MATKEWALA to be Descriptive for Roasted Grams and Groundnuts

[Case Title] : Sant Kumar Mehra Vs. Ram Lakhan Date of Judgment: 19-03-1999 Case No.: I.A. No. 9321 of 1998 in Suit No. 2255 of 1998 Neutral Citation : 1999 SCC OnLine Del 219 [Court Name] : High Court of Delhi Name of Hon'ble Judge: Dr. M.K. Sharma, J.

Factual and Procedural Background The plaintiff engaged in processing and selling roasted gram, roasted groundnut, Gajak, Rewari, Patti, and allied human consumption items. The plaintiff claimed to have used the trademark MATKEWALA along with the device of an earthen pot (Matka) since 1958, packing and selling goods in bags displaying this mark. The plaintiff applied for trademark registration on March 13, 1995, which was accepted but pending final registration. In October 1998, the defendant began selling roasted gram and groundnut under the same mark. The plaintiff filed a suit for permanent injunction to restrain the defendant from passing off, along with an application for a temporary injunction.

Dispute before Court The central issue was whether the plaintiff was entitled to a temporary injunction against the defendant to restrain them from using the mark MATKEWALA. The core conflict lay in whether MATKEWALA was an arbitrary or distinctive trademark indicating the plaintiff's trade source, or a descriptive term indicating the method of processing the goods (roasting in an earthen pot with sand), thereby precluding any single party from claiming an exclusive right under passing off.

Reasoning of Judge The Court observed that since the plaintiff's trademark was unregistered, the suit was strictly one for passing off rather than infringement. While the plaintiff was the prior user, the Court analyzed the character of the mark MATKEWALA. Applying the test of descriptiveness, the Court examined the plaintiff's own invoices, which differentiated between "yellow grams," "matkewala grams," and "matka groundnuts." This indicated that the word was being used descriptively to convey the specific quality, character, and preparation method of the goods (roasting via an earthen pot). Under Section 34 of the Trade and Merchandise Marks Act, 1958, a proprietor cannot interfere with another's bona fide use of a descriptive term. The interchangeable use of "MATKA" and "MATKEWALA" by the plaintiff also indicated a lack of exclusive trademark intent.

Decision The Court found that the plaintiff failed to establish a prima facie case for the grant of a temporary injunction, as the mark MATKEWALA was descriptive of the character and quality of the goods. Consequently, the application for a temporary injunction (I.A. No. 9321 of 1998) was dismissed.

One Important legal principle held in the case A term that describes the method of preparation, character, or quality of goods cannot be claimed as an exclusive trademark, and its bona fide descriptive use by another trader does not constitute passing off.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Descriptive words cannot be monopolized under the guise of trademark protection

Introduction

The protection of marks that contain descriptive elements of a product's preparation or composition is one of the most litigated areas of trademark law. While businesses strive to secure exclusive rights over terms that consumers easily associate with their products, trademark law aims to keep descriptive terms free for all traders to use. The High Court of Delhi addressed this delicate balance in a passing off dispute concerning the term MATKEWALA used on roasted grams and groundnuts. The ruling offers clear guidance on when a commercial term crosses the line from a distinctive source-identifier to a generic or descriptive description of the preparation process.

Factual and Procedural Background

The plaintiff, Sant Kumar Mehra, was engaged in the business of processing and selling roasted grams, roasted groundnuts, Gajak, Rewari, Patti, and allied food items. According to the plaintiff, these products were packaged and sold in paper bags and wraps bearing the trademark MATKEWALA, often accompanied by the visual device of an earthen pot or Matka. The plaintiff claimed continuous and extensive use of this mark starting from the year 1958. To secure statutory protection, the plaintiff filed an application for the registration of the trademark MATKEWALA along with the earthen pot device on March 13, 1995. Although the application was accepted by the trademark registry, the registration certificate had not yet been formally issued.

In the second week of October 1998, the defendant, Ram Lakhan, entered the market, selling and offering for sale roasted grams and groundnuts under the mark MATKEWALA. In response, the plaintiff filed a civil suit in the High Court of Delhi seeking a permanent injunction to restrain the defendant from passing off his products under the MATKEWALA mark. Along with the main suit, the plaintiff filed an interlocutory application under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908, praying for an ad-interim temporary injunction to immediately halt the defendant's sales during the pendency of the litigation. The defendant contested the application, filing a formal reply that challenged the distinctiveness of the mark.

Dispute Before the Court

The primary legal and factual question before the Court was whether the plaintiff could establish a prima facie case of passing off against the defendant to warrant a temporary injunction.

The plaintiff contended that by virtue of prior, long-standing, and extensive commercial use since 1958, the mark MATKEWALA had acquired a secondary meaning. The plaintiff argued that the mark was exclusively associated with his food products in the minds of the consuming public, representing a highly valuable business reputation and goodwill. Therefore, the defendant's subsequent use of the identical mark on identical goods was a classic case of passing off, designed to deceive buyers and trade on the plaintiff's established reputation.

The defendant countered that the term MATKEWALA was entirely descriptive of the character, nature, and processing method of the goods. He explained that roasted grams and groundnuts are traditionally prepared by heating them in an earthen pot (Matka) filled with hot sand. The term MATKEWALA and the associated image of an earthen pot were widely used by multiple traders to inform consumers that the items were processed in this traditional manner. Relying on Section 34 of the Trade and Merchandise Marks Act, 1958, the defendant argued that no single trader could monopolize a descriptive term that reflects the quality or preparation of the product, and that his own use was bona fide.

Reasoning and Analysis of the Court

Because the plaintiff's trademark application was still pending registration, the Court treated the suit strictly as an action for passing off under common law. In such cases, the key factors for a temporary injunction are prior user, the establishing of goodwill, and the likelihood of deception. The Court acknowledged that the evidence on record prima facie pointed to the plaintiff being the prior user of the mark. However, the Court observed that prior use alone does not justify an injunction if the mark itself is descriptive of the character or quality of the goods.

To evaluate this, the Court turned to the statutory protection afforded to descriptive terms. Under Section 34 of the Trade and Merchandise Marks Act, 1958, a registered trademark owner cannot interfere with any person's bona fide use of a description of the character or quality of their goods. The Court extended this principle to passing off actions, noting that if a term is prima facie descriptive, a plaintiff cannot prevent another trader from using it in a descriptive manner.

For guidance on determining descriptiveness, the Court relied on the precedent of Kala Niketan v. Kala Niketan (AIR 1983 Delhi 161). In that case, the Delhi High Court adopted the test of descriptiveness from Corpus Juris Secundum, stating that the true test is whether a name or phrase is commonly used or is reasonably indicative and descriptive of the thing intended. A mark is considered descriptive if it provides information regarding the general nature, preparation, or character of the articles, looking at the mark as a whole and considering the impression it conveys to the ordinary public.

Applying this test, the Court closely examined the bills and sales receipts submitted by the plaintiff. The documents showed that the plaintiff sold various items under names like "yellow grams," "matkewala grams," and "matka groundnuts." The Court reasoned that by using these terms side-by-side, the plaintiff himself was using MATKEWALA descriptively to distinguish a specific style of processed gram from other varieties like yellow gram.

The term MATKEWALA directly signaled to the public that the groundnuts or grams were prepared using the traditional earthen pot and sand method. Thus, the word described the nature, preparation method, and quality of the product rather than pointing to the plaintiff as the unique source of origin.

Additionally, the Court looked at a prior litigation, Suit Number 30 of 1996 (Sant Kumar Mehra v. Mehra Sons), where the plaintiff had sued a third party for using the mark "MATKA." In that proceeding, the Court had held that the marks "MATKA" and "MATKEWALA" were distinct. The fact that the plaintiff used "MATKA" and "MATKEWALA" interchangeably on his receipts showed that there was no consistent intent to project MATKEWALA as an exclusive, proprietary trademark. Because the term was inherently descriptive of the traditional roasting process, the defendant's use of the term was protected as a bona fide description of his own goods.

Final Decision of the Court

The Court concluded that the plaintiff had failed to satisfy the essential requirements for the grant of an interim injunction. Specifically, the plaintiff failed to establish a prima facie case, as the word MATKEWALA was a descriptive term rather than a distinctive trademark. Consequently, the Court dismissed the plaintiff's temporary injunction application, I.A. No. 9321 of 1998. The Court specified that the observations made in the order were prime facie in nature and would not prejudice the final trial of the suit.

Point of Law Settled

This judgment reaffirms that descriptive words cannot be monopolized by a single trader under the guise of trademark protection, even in common law passing off actions. The ruling clarifies that a term is descriptive if it indicates the preparation process, character, or quality of the product to the general public. Additionally, the decision illustrates that if a prior user employs a term interchangeably with other descriptive words or uses it on sales receipts to differentiate product types, it undermines their claim of exclusive trademark significance. The case serves as a vital precedent for protecting the rights of public traders to use common, industry-standard descriptive terms to accurately represent their processing methods.

Title of the Case: Sant Kumar Mehra v. Ram Lakhan 

Date of Judgment: March 19, 1999 

Case Number: Suit No. 2255 of 1998 

Citation: 1999 SCC OnLine Del 219 

Name of Court: High Court of Delhi 

Name of Hon'ble Judge: Dr. M.K. Sharma, J.

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment: In Sant Kumar Mehra v. Ram Lakhan [I.A. No. 9321 of 1998 in Suit No. 2255 of 1998], the Delhi High Court decided on a temporary injunction application in a passing off suit concerning the mark MATKEWALA for roasted grams and groundnuts. The plaintiff claimed exclusive rights based on prior use since 1958 and a pending registration. The defendant argued that the term was descriptive of the traditional earthen pot (Matka) processing method. The Court held that MATKEWALA was descriptive of the preparation and character of the goods, a fact supported by the plaintiff's own invoices differentiating product varieties. Since descriptive terms cannot be monopolized under passing off, and bona fide descriptive use is protected under Section 34 of the Trade and Merchandise Marks Act, 1958, the Court dismissed the injunction application.

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5. Can Prior Use Protect a Descriptive Term? The Delhi High Court Explains

6. The Traditional Roasting Battle: Inside the MATKEWALA Trademark Litigation

7. Understanding Section 34 of the Trade and Merchandise Marks Act, 1958

8. How Invoices and Receipts Can Defeat Your Own Trademark Claim

9. Distinction vs Description: The Legal Standard Set in Kala Niketan Applied

10. Delhi High Court Rejects Injunction for Unregistered MATKEWALA Mark

Kleo Consumer Brands Vs. Jeevan Kumar

Appeal under Section 91 of the Trade Marks Act, 1999 Settles the Path for Advertisement in Exceptional Circumstances

Kleo Consumer Brands Private Limited Vs. Jeevan Kumar:03-07-2026: Commercial Miscellaneous Petition No. 39 of 2025 Neutral Citation : BombayHC: Hon'ble Judge Somasekhar Sundaresan, J.

Factual and Procedural Background 

The Petitioner filed an application for the registration of the word mark "ANAAR" under Class 25. The Senior Examiner of Trade Marks issued an examination report raising objections under Section 11(1) of the Trade Marks Act, 1999, citing a prior identical or similar registration (Application No. 3108965) for similar goods which created a likelihood of confusion. Despite three concurrent applications by the Petitioner for "ANAAR" device marks being allowed, the Senior Examiner rejected the word mark application outright without causing it to be advertised. Aggrieved by this refusal order dated September 3, 2024, the Petitioner filed a statutory appeal under Section 91 of the Trade Marks Act before the Bombay High Court. During the pendency of these proceedings, the Petitioner also initiated rectification proceedings against the cited conflicting mark.

Dispute before Court 

The primary dispute before the Court was whether the Registrar of Trade Marks was justified in completely refusing the registration of the word mark "ANAAR" under Section 11(1) without advertising the application to test the credibility of the confusion market apprehensions, especially when concurrent device marks for the same name were allowed and rectification proceedings had been initiated against the cited mark.

Reasoning of Judge 

The Court observed that while the Registrar had refused the word mark due to similarity with a prior footwear registration, the absolute rejection without advertisement was premature under the specific facts. The Judge highlighted the proviso to Section 20(1) of the Trade Marks Act, 1999, which gives the Registrar discretion to advertise an application before acceptance if it falls under Section 9(1) or Section 11(1), or due to exceptional circumstances. The Court emphasized that advertising the application would serve as an effective mechanism to ascertain whether the commercial apprehensions of confusion are genuinely credible, particularly since the registrant of the cited mark failed to even file a counterstatement in the parallel rectification proceedings.

Decision 

The Bombay High Court allowed the commercial miscellaneous petition and set aside the impugned refusal order. The Court directed the Registrar to publish an advertisement of the Petitioner's trademark application in exercise of powers under the proviso to Section 20(1) of the Trade Marks Act, 1999, enabling the consideration of any legitimate objections that might arise from the public or the rival proprietor.

One Important legal principle held in the case 

When a trademark application faces relative grounds of refusal under Section 11, it is expedient for the registry to utilize the discretion provided under the proviso to Section 20(1) to advertise the application before absolute rejection, ensuring that market realities and genuine third-party apprehensions are thoroughly tested.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Pre Advertisement Rejections by Trademark Registry

Introduction:

The registration of a word mark forms the bedrock of brand protection, granting the owner exclusive statutory rights over the linguistic identity of a product. However, trademark registries frequently reject word marks while concurrently allowing stylized device marks containing the exact same word. The High Court of Judicature at Bombay recently addressed this regulatory discrepancy in a significant statutory appeal concerning the trademark "ANAAR". The ruling elucidates the proper invocation of statutory discretion regarding the advertisement of trademark applications before absolute rejection, striking a balanced path between defensive registry policing and practical market testing.

Factual and Procedural Background:

The dispute arose when a corporate entity sought statutory protection for its footwear brand by filing an application for the registration of the word mark "ANAAR" in Class 25 under the Trade Marks Act, 1999. During the examination process, the trademark registry issued an examination report citing statutory objections under Section 11(1) of the Act. The report highlighted that the applied mark was identical or similar to an earlier registered trademark, specifically Application Number 3108965, which covered similar goods and consequently created a severe likelihood of public confusion.

The applicant responded to the examination report, and subsequent administrative hearings were conducted by the Senior Examiner of Trade Marks. Paradoxically, during the same period, the registry permitted the progression of three concurrent applications filed by the same applicant where the word "ANAAR" was represented in a stylized device form. However, when it came to the plain word mark, the Senior Examiner issued a final refusal order, rejecting the application outright without letting it proceed to the public advertisement stage.

Faced with the absolute rejection of its core word mark, the applicant filed a statutory appeal under Section 91 of the Trade Marks Act, 1999, before the Bombay High Court, which was registered as a commercial miscellaneous petition. Moving proactively to clear its path, the applicant also initiated independent rectification proceedings against the conflicting cited trademark registration. Notably, the registered proprietor of the cited mark failed to file any counterstatement in those rectification proceedings, signaling a potential abandonment or lack of commercial interest in defending their registered mark.

Dispute Before the Court:

The core legal question before the Court was whether the trademark registry was legally justified in completely refusing the registration of the word mark at the pre-advertisement stage under the relative grounds of Section 11(1).

The applicant contended that an outright rejection without advertisement bypassed a critical exploratory phase provided by the statute. They argued that if the application had been advertised in the official journal, it would have become evident that the prior registration was not even actively being used in the market. The lack of a counterstatement in the rectification proceedings further proved that the registry's apprehensions of commercial confusion were visually overstated and lacked a real-world foundation.

On the other side, the representation for the trademark registry defended the refusal order, stating that a prior valid registration existed in the exact same business sector of footwear. The registry argued that while device marks offer distinct visual components that mitigate confusion, a plain word mark captures the entire phonetic and structural identity, making it highly conflicting with the existing registration. Therefore, the registry asserted that its proactive refusal was valid and that the applicant should wait for the rectification proceedings to conclude naturally before seeking registration.

Reasoning and Analysis of the Court:

The Court undertook a focused statutory analysis of the procedural routes available to the trademark registry when dealing with conflicting marks. The judgment centered entirely on the interpretation of Section 20(1) of the Trade Marks Act, 1999, which governs the advertisement of trademark applications.

The main text of Section 20(1) mandates that once an application is accepted, the Registrar must cause it to be advertised to invite public opposition. Crucially, the Court highlighted the proviso attached to Section 20(1), which vests a special discretionary power in the Registrar. This proviso explicitly states that the Registrar may cause an application to be advertised before formal acceptance if it relates to a trademark where absolute grounds for refusal under Section 9(1) or relative grounds for refusal under Section 11(1) apply, or in any other exceptional circumstances where such a course appears expedient.

The Court observed that the Senior Examiner's refusal order relied heavily on theoretical factors, such as the nature of the goods, the category of buyers, and the methods of purchasing, to conclude that public confusion was inevitable. The Court reasoned that under the peculiar facts of this case, an outright rejection based on these assumptions was unwarranted. Since the registry had already allowed three parallel device marks featuring the word "ANAAR", and because the owner of the cited conflicting mark chose not to contest the rectification proceedings, the market realities were clearly different from the registry's rigid initial assessment.

The Court interpreted the proviso to Section 20(1) as a statutory safety valve designed precisely for such ambiguous scenarios. By directing a pre-acceptance advertisement, the registry does not automatically grant the trademark; rather, it opens the floor to see if the theoretical apprehensions translate into actual commercial objections from the existing proprietor or the public. The Court concluded that using this discretion to advertise the mark was the most expedient and legally sound method to determine if the reasons for refusal were credible or merely hypothetical.

Final Decision of the Court:

The Court exercised its appellate jurisdiction to make a limited but vital intervention in the matter. The Court set aside the impugned refusal order passed by the Senior Examiner of Trade Marks. Instead of ordering an outright registration, the Court directed the trademark registry to publish the application as an advertisement in the official journal by exercising its powers under the proviso to Section 20(1) of the Act. This direction ensures that the application will undergo a transparent public notice phase, enabling the Registrar to evaluate any legitimate third-party objections that may be filed in response to the advertisement before making a final decision on registration. The commercial miscellaneous petition was thus formally disposed of with these operative directions.

Point of Law Settled:

This judgment firmly establishes that where relative grounds for refusal under Section 11(1) are invoked against a trademark application, the registry should not routinely resort to absolute, pre-advertisement rejections if there are mitigating factors or parallel device approvals. The ruling clarifies that the proviso to Section 20(1) serves as an essential procedural mechanism to test the validity of market confusion. By utilizing pre-acceptance advertisements in exceptional circumstances, the registry can transition from making speculative assumptions about consumer confusion to evaluating real-world market responses, thereby preventing legitimate businesses from being unfairly blocked at the entry gate of intellectual property protection.

Title of the Case: Kleo Consumer Brands Private Limited v. Jeevan Kumar, Senior Examiner of Trade Marks and Anr.

Date of Judgment: July 3, 2026

Case Number: Commercial Miscellaneous Petition No. 39 of 2025

Neutral Citation: 2026:BHC:902

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Somasekhar Sundaresan, J.

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In Kleo Consumer Brands Private Limited v. Jeevan Kumar, Senior Examiner of Trade Marks and Anr. [Commercial Miscellaneous Petition No. 39 of 2025], the Bombay High Court dealt with a statutory appeal under Section 91 of the Trade Marks Act, 1999, challenging the outright refusal of the word mark "ANAAR" in Class 25. The registry had rejected the application under Section 11(1) due to a prior footwear registration, despite allowing three parallel device marks for the same word. The Court held that absolute rejection at the initial stage was improper given that parallel rectification proceedings were uncontested by the prior registrant. Utilizing the proviso to Section 20(1), the Court set aside the refusal order and directed the registry to advertise the application, enabling a real-world assessment of potential public confusion through public notice.

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