Pathkind Diagnostics Private Limited Vs. Registrar of Trade Marks

Trademark Right Justice Over Technicality

Facts:  Pathkind Diagnostics Private Limited, a well-known diagnostics company, filed an appeal before the Delhi High Court under Section 91 of the Trade Marks Act, 1999 read with Section 13 of the Commercial Courts Act, 2015. The appeal challenged the order dated 23 April 2024 passed by the Registrar of Trade Marks, rejecting the company’s application for registration of the device mark “PATHKIND LABS” under Class 44, which relates to medical and diagnostic services.

The application was originally refused by the Registrar on the ground that there already existed two similar trademark registrations — the word mark “PATHKIND” and the device mark “Path Kind Labs” — bearing application numbers 3365298 and 3507524, both registered under Class 44. The Registrar held that the mark applied for was identical or deceptively similar to these existing marks and thus hit by the provisions of Section 11(1) of the Trade Marks Act, 1999, which prohibits registration of identical or similar marks likely to cause confusion.

The appellant contended that the cited marks belonged to Mr. Arjun Juneja, who also happened to be the Director of Pathkind Diagnostics Private Limited. It was submitted that there was no real conflict of ownership since both marks were effectively under the same corporate control.

Procedural Details: The appellant’s mark had been rejected at the examination stage itself by the Registrar of Trade Marks, who considered that the existence of two earlier identical marks constituted a legal bar to registration. Instead of filing a request for review or rectification before the Registrar, the appellant preferred to challenge the refusal order directly by filing an appeal under Section 91 before the High Court of Delhi.

During the pendency of the appeal, the appellant placed on record a No Objection Certificate (NOC) dated 8 July 2024 issued by Mr. Arjun Juneja, the proprietor of the cited marks. Furthermore, the appellant produced an Assignment Deed dated 5 May 2022 executed by Mr. Juneja in favour of the appellant, assigning all rights in trademarks numbered 3365298 and 3507524 and other associated marks to Pathkind Diagnostics Private Limited.

The appellant’s counsel submitted that a Form TM-P had also been filed on 13 May 2022 before the Registrar to record the assignment in official records. However, the Registrar had not yet passed any formal order recording the assignment. The appellant admitted that the fact of assignment was not brought to the Registrar’s attention at the time of refusal, which led to the mistaken rejection of the mark.On the date of hearing before the High Court, the appellant submitted all relevant documents, including the NOC and the Assignment Deed, both in original and through e-filing. The Court took them on record for consideration.

Core Dispute:  The central dispute before the Court was whether the order of the Registrar rejecting the trademark application was justified when the cited marks, though appearing to be identical, were in fact owned by the same corporate group or by a director who had already assigned the marks to the appellant company.The question arose whether, in the presence of an assignment deed and a no-objection from the original owner of the cited marks, the rejection of the appellant’s mark could be sustained, or whether it amounted to a mere technical oversight that ought to be cured in the interest of justice and fair trade practices.Another connected issue was whether the Court should condone the appellant’s failure to inform the Registrar about the assignment before the passing of the impugned order and whether the subsequent filing of documents could rectify that procedural lapse.

Judicial Reasoning and Analysis:  The Court noted that the rejection by the Registrar was based solely on the existence of the two earlier registrations under the same class. The Registrar was unaware that the owner of the cited marks, Mr. Arjun Juneja, had already executed an assignment transferring ownership of those very marks to the appellant company in May 2022.The Court observed that the Assignment Deed dated 5 May 2022 and the NOC dated 8 July 2024 sufficiently established that there was no conflict of interest or confusion between two distinct proprietors. The marks in question effectively belonged to the same business entity, making the Registrar’s objection legally redundant.

The Court, however, noted a lapse on the appellant’s part for not disclosing the existence of the assignment to the Registrar during the initial proceedings. The learned Judge observed that while the appellant was remiss in not presenting complete information, this procedural defect should not lead to forfeiture of substantive rights over a valid trademark, especially when documentary evidence proved that the earlier cited marks were under the appellant’s control.

The Court took a balanced approach, acknowledging that intellectual property rights must be protected against technical injustices. The court cited the principle that procedural lapses should not defeat legitimate rights where the underlying ownership is clear and lawful. The Court emphasized that since the appellant had already executed a proper assignment and filed Form TM-P for recordal, the delay or omission to inform the Registrar could be condoned in the larger interest of justice.

Accordingly, the Court decided to set aside the impugned order but imposed a nominal cost of ₹10,000 on the appellant to be deposited with the Delhi High Court Legal Services Committee (DHCLSC) as a condition for condonation of the lapse. This imposition served as a reminder that diligence is expected from applicants while pursuing trademark proceedings, even when internal ownership is common.

Decision:  The Delhi High Court allowed the appeal and set aside the impugned order dated 23 April 2024. The Court directed the Registrar of Trade Marks to accept and advertise the appellant’s Trademark Application No. 5347179 for “PATHKIND LABS” in Class 44 in the Trademarks Journal preferably within four weeks from the date of the order, in accordance with the Trade Marks Rules.

Furthermore, the Court directed the Registrar to process the pending Form TM-P filed on 13 May 2022 (bearing Reference No. A-3365298 Form No. 337081) for recordal of the assignment deed within four weeks, provided the documents are complete in all respects.With these directions, the appeal and all pending applications were disposed of. The Court reiterated that a digitally signed copy of the order available on the Delhi High Court’s website would be treated as a certified copy for compliance purposes.

Analytical Discussion:  This case illustrates how the Delhi High Court continues to balance procedural rigor with substantive justice in matters concerning trademark registration. The decision underscores the principle that while the Trade Marks Registry operates under strict procedural rules, the ultimate goal of trademark law is to prevent public confusion and protect legitimate proprietary rights, not to penalize applicants for internal corporate documentation delays.

The judgment reaffirms that when the ownership of conflicting marks rests with the same proprietor, objections under Section 11(1) are not maintainable. The Court recognized the inherent fairness in allowing the same entity to consolidate its trademark portfolio when supported by lawful assignments and no-objection certificates.From a broader perspective, this decision strengthens the principle that the Trade Marks Act, 1999 must be interpreted not as a rigid technical code but as a commercial statute designed to facilitate legitimate trade and business continuity.

Conclusion:  The Delhi High Court’s decision in Pathkind Diagnostics Pvt. Ltd. v. Registrar of Trade Marks is an important precedent in the field of intellectual property law, particularly concerning internal ownership conflicts and procedural errors in assignment recordals. It demonstrates that the judiciary prioritizes substance over form when ownership is clearly established and no confusion can arise in the marketplace.The ruling brings clarity to the treatment of trademark applications where the cited conflicting marks belong to the same business group, promoting a pragmatic approach consistent with commercial realities.

Case Title: Pathkind Diagnostics Private Limited Vs. Registrar of Trade Marks

Case Number: C.A. (COMM.IPD-TM) 65/2024

Date of Order: 27 October 2025

Court: High Court of Delhi at New Delhi

Hon’ble Judge: Ms. Justice Manmeet Pritam Singh Arora

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