Mahesh Gupta Vs. The Registrar of Trademarks

Introduction

The case of Mahesh Gupta v. The Registrar of Trademarks before the Delhi High Court deals with the cancellation of a registered trademark by the Registrar of Trademarks and the subsequent appeal filed under Section 91 of the Trade Marks Act, 1999. The appellant, Mahesh Gupta, challenged the cancellation of his trademark “SMART CHEF APPLIANCES” under Class 21 on the ground that the cancellation was arbitrary, contrary to the principles of natural justice, and inconsistent with the registration of an identical mark under Class 11. The Court was called upon to examine whether the Registrar’s action was legally sustainable and whether interim protection in favour of the appellant was warranted.

Factual Background

The appellant had filed two trademark applications on 29 October 2021 for registration of the mark “SMART CHEF APPLIANCES,” one under Class 11 and another under Class 21. On 25 November 2021, the Examiner raised objections under Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999, relating to distinctiveness and descriptiveness. The appellant filed replies to the objections and also appeared for a hearing before the Examiner. Subsequently, both applications were accepted and published in the Trade Marks Journal No. 2141-0 dated 29 January 2024.

The marks remained unopposed during the statutory period of four months, leading to their registration, and certificates of registration were issued on 17 June 2024. However, the Registrar issued notices dated 10 October 2024 under Section 57(4) of the Act, proposing rectification of the Register. The objections in these notices mirrored those initially raised in the examination reports. Following the appellant’s reply and a virtual hearing, the Registrar cancelled the registration of the mark under Class 21 by an order dated 3 June 2025, while the identical mark under Class 11 remained registered.

Procedural Background

Aggrieved by the Registrar’s cancellation order, the appellant filed an appeal under Section 91 of the Trade Marks Act, 1999, before the Delhi High Court. Alongside the appeal, the appellant moved an application for stay of the operation of the impugned order. The Court first considered whether to grant interim relief by staying the operation of the cancellation order pending the final adjudication of the appeal.

Core Dispute

The core dispute in this case concerned the validity of the Registrar’s cancellation of the appellant’s trademark under Class 21, despite the identical mark under Class 11 continuing to subsist on the Register. The appellant argued that the cancellation was arbitrary, violated the rule against dissecting composite marks, and disregarded principles of uniform application of law and natural justice. The question before the Court was whether the Registrar acted arbitrarily in treating identical applications differently and whether interim protection was justified to prevent potential prejudice to the appellant.

Discussion on Judgments

In the present proceedings, no extensive case law was cited by the parties in the recorded order. However, the appellant relied on the established principles under the Trade Marks Act, particularly the doctrine of anti-dissection, which has been affirmed in several precedents including Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, where the Supreme Court emphasized that trademarks must be considered as a whole and not dissected into components. Similarly, South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 (57) PTC 414 (Del) reiterated that a composite mark must be judged in its entirety for distinctiveness and similarity assessments.

The appellant’s plea of violation of natural justice resonates with the principles laid down in Maneka Gandhi v. Union of India, (1978) 1 SCC 248, where the Supreme Court underscored that fairness in administrative action is a constitutional requirement. The grievance was that the Registrar failed to provide cogent reasoning for adopting different approaches towards identical marks filed by the same applicant for allied and cognate goods.

Reasoning and Analysis of the Judge

The Court observed that the appellant had obtained registrations for identical marks in Classes 11 and 21 after overcoming initial objections, and both were duly advertised and remained unopposed during the statutory period. Despite this, the Registrar suo motu initiated rectification proceedings under Section 57(4). The impugned order cancelled the mark under Class 21 but left intact the mark under Class 11, without providing a cogent justification for such non-uniform treatment.

The Court noted that the appellant had raised a prima facie case by highlighting the inconsistency and arbitrariness in the Registrar’s approach. It emphasized that immediate removal of the mark under Class 21 could expose the appellant to potential third-party adoption and misuse, while no prejudice would be caused to the Registrar if interim relief were granted. The Court recognized that until the appeal is finally adjudicated, equity demanded preservation of the appellant’s rights.

Final Decision

The Delhi High Court stayed the operation of the Registrar’s cancellation order dated 3 June 2025, thereby allowing the appellant to retain protection over the trademark “SMART CHEF APPLIANCES” under Class 21 during the pendency of the appeal. The Court scheduled the matter for further hearing on 26 September 2025.

Law Settled in This Case

This case clarifies that where identical marks for allied or cognate goods have been registered under different classes and remain unopposed, the Registrar must apply the law consistently. Cancellation of one mark while retaining another without cogent reasoning amounts to arbitrariness and violation of natural justice. The decision also reinforces that interim relief may be granted where immediate cancellation of a mark would prejudice the registered proprietor by exposing the mark to third-party adoption, whereas no corresponding prejudice would result from maintaining the status quo until final adjudication.

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Case Details

Case Title: Mahesh Gupta Vs. The Registrar of Trademarks
Date of Order: 19 August 2025
Case Number: C.A. (COMM.IPD-TM) 50/2025
Neutral Citation: Not provided in order
Court: High Court of Delhi at New Delhi
Judge: Hon’ble Mr. Justice Tejas Karia

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Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

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Suggested Titles for Publication in Law Journal

1. Arbitrariness in Trademark Rectification: A Case Analysis of Mahesh Gupta v. Registrar of Trademarks

2. Delhi High Court on Consistency in Trademark Registration and Rectification

3. Natural Justice and Trademark Rectification: Lessons from SMART CHEF APPLIANCES

4. Balancing Equity in Trademark Disputes: Interim Relief in Mahesh Gupta v. Registrar of Trademarks

5. Anti-Dissection Rule and Rectification Proceedings: A Critical Analysis

6. Judicial Review of Registrar’s Power under Section 57(4) of the Trade Marks Act

7. Trademark Rectification and Administrative Fairness: Insights from the Delhi High Court

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Would you like me to also expand the “Discussion on Judgments” section with a deeper analysis of Indian case law on the anti-dissection rule and administrative fairness, so that it is more robust for journal publication?