Introduction: The dispute stems from competing claims to ownership of the "LAMBRETTA" mark, tracing back to its origins in Italy and subsequent assignments involving Indian government entities. The court was tasked with resolving an appeal against the refusal of one application and two writ petitions seeking intervention in the registration process, ultimately emphasizing the structured statutory framework under the Trade Marks Act, 1999, and cautioning against bypassing opposition mechanisms through judicial writs.
Factual Background:The "LAMBRETTA" mark originated in 1932 with Innocenti Societa Generale per l'Industria Metallurgica e Meccanica SPA, an Italian company engaged in designing and selling motor scooters. The mark was registered in Italy in 1948 for vehicles in Class 12 and in India in 1949.
In 1972, through a tripartite agreement involving the Government of India, Automobile Products of India Limited, and the Italian entity (renamed Gepar SPA), the machinery, know-how, and trademark rights were acquired by India and assigned to Scooters India Limited, making it the proprietor.
Scooters India Limited faced financial difficulties, being declared sick under the Sick Industrial Companies Act in 1992 and again in 2010, but continued licensing the mark worldwide.
In 2015, Heritage Licensing SA renamed itself Innocenti SA, ostensibly to evoke association with the original Italian entity, though accused of being a habitual infringer.
In 2022, August Ventures acquired global rights to "LAMBRETTA" and related marks from Scooters India Limited via e-auction and assignment deed for over ₹6.86 crore.
Meanwhile, Innocenti filed applications in September 2022 for "LAMBRETTA" in Classes 12 and 25 on a proposed-to-be-used basis. Examination reports cited August Ventures' prior marks, but Innocenti's replies admitted the mark's origins with the Italian entity and its assignment to Scooters India Limited and then August Ventures.
Despite this, the Registrar accepted Innocenti's applications in Classes 12 and 25 but refused the one in Class 12 for "LAMBRETTA." August Ventures then filed applications under Section 19 seeking withdrawal of acceptances, which went unconsidered, leading to the writ petitions.
Procedural Background:Innocenti appealed the Registrar's May 2024 order refusing registration of "LAMBRETTA" under Application No. 5628005 in Class 12, citing errors in overlooking international registrations and pending rectifications.
August Ventures filed WP 54 in September 2025 seeking a mandamus to compel the Registrar to decide its Section 19 applications for withdrawing acceptances of Innocenti's Applications Nos. 5628002 and 5628003.
Subsequently, August Ventures filed WP 56 challenging the acceptance orders and advertisements, praying for certiorari to quash them and directions for future examinations to consider its marks.
The court framed issues in WP 54 on whether the Registrar must consider third-party applications under Section 19 and if mandamus could issue despite alternative remedies. WP 56 was tagged with WP 54, and the appeal was heard jointly with consent.
Submissions from August Ventures emphasized the Registrar's duty to rectify erroneous acceptances under Section 19 to prevent fraudulent marks and avoid burdening proprietors with oppositions or rectifications.
Innocenti countered that Section 19 is solely the Registrar's discretion without third-party involvement, advocating opposition under Section 21 as the proper remedy.
The Registrar supported this, arguing Section 19 is suo moto and writs bypassed statutory opposition, while defending the refusal in the appeal. The court analyzed the statutory scheme, rejecting third-party invocations of Section 19 and finding Registrar inconsistencies.
Reasoning and Decision of Court:The court dissected Section 19, holding it confers discretionary power on the Registrar to withdraw acceptance if satisfied of error or need for conditions, but without obligation to entertain third-party applications, as Rule 38 limits proceedings to the Registrar and applicant.
It rejected August Ventures' interpretation that the power implies a duty examinable via third-party prompts, noting the section's silence on such mechanisms and emphasizing its purpose as a corrective tool for the Registrar alone.
Drawing from precedents like Rajkumar Sabu, the court clarified that no hearing right accrues to non-applicants under Section 19, distinguishing it from opposition under Section 21, which allows any person to challenge post-advertisement.
The court dismissed arguments equating Section 19 to a mandatory review, stating remedies under Sections 21, 47, and 57 are stage-specific and not alternatives, but Section 19 remains internal to the Registry.
On mandamus, it ruled no statutory duty exists to trigger writ issuance, as discretion without imposed obligation precludes compulsion, citing S.C. Advocates-on-Record Association for limited mandamus only in reasoned non-exercise cases.
The court found WP 56 non-maintainable for duplicating WP 54's cause, amounting to forum shopping and res judicata violation, as both targeted acceptance withdrawal. Reliance on Jai Bhagwan and Kaira District was deemed inapposite, as those involved pre-acceptance advertisements or gross abuses, unlike here where procedural steps were followed.
Noting the Registrar's contradictory stands—accepting "LAMBRETTA" in some classes while refusing in others—the court allowed Innocenti's appeal, setting aside the refusal order for inconsistency, but directed consolidated adjudication of all related applications, oppositions, and rectifications after hearing both parties within three months, without opining on merits to preserve fairness.
Point of Law Settled in the Case:The judgment settles that Section 19 of the Trade Marks Act empowers the Registrar with suo moto discretion to withdraw erroneous acceptances, uninvocable by third-party applications, confining challenges to oppositions under Section 21.
It clarifies that no statutory duty mandates the Registrar to consider external prompts under Section 19, rendering writs of mandamus inappropriate absent grave jurisdictional errors, and successive petitions on identical causes are barred by res judicata. The ruling reinforces the Act's sequential framework, prioritizing statutory remedies over judicial intervention to maintain Registry efficiency and prevent bypassing opposition processes, while mandating consistency in Registry decisions across related marks to uphold procedural integrity.
Case Title: Innocenti SA Vs. Examiner of Trademarks & Anr. and Connected Matters
Date of Order: 31.01.2026
Case Number: C.A.(COMM.IPD-TM) 76/2024, W.P.(C)-IPD 54/2025, W.P.(C)-IPD 56/2025
Neutral Citation: 2026:DHC:784
Name of Court: High Court of Delhi at New Delhi
Name of Hon'ble Judge: Hon'ble Mr. Justice Tejas Karia
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
**Suggested Titles:**
Trademark Registrar's Discretion Under Section 19 of Trade Marks Act 1999
2. Navigating Trademark Acceptance Withdrawals: Insights from Innocenti SA vs. August Ventures Dispute
3. Landmark Verdict on Third-Party Challenges to Trademark Acceptances and the Primacy of Opposition Proceedings
**Suggested Tags:**
Trademark Dispute, Section 19 Trade Marks Act, Registrar of Trade Marks, Opposition Under Section 21, Writ of Mandamus, Delhi High Court Judgment, Lambretta Mark, Intellectual Property Law, Acceptance Orders, Procedural Inconsistencies,
**Headnote of Article:**
In this consolidated judgment, the Delhi High Court dismissed writ petitions seeking mandamus and certiorari against trademark acceptance orders, holding that Section 19 of the Trade Marks Act, 1999, grants the Registrar discretionary suo moto power to withdraw erroneous acceptances without provision for third-party applications, directing aggrieved parties to opposition under Section 21; allowed appeal against refusal order due to Registry inconsistencies, mandating unified adjudication of related proceedings.
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The trademark 'LAMBRETTA' was coined by Innocenti Societa Generale in Italy in 1932 for motor scooters, registered there in 1948 and in India in 1949, with rights assigned in 1972 via a tripartite agreement to the Government of India, which transferred them to Scooters India Limited (SIL); SIL, after periods of sickness, assigned global rights including goodwill to August Ventures Private Limited in 2022 for over ₹6.86 crore.
Innocenti SA, a Swiss entity renamed from Heritage Licensing SA in 2015 and accused of habitual trademark usurpation, filed applications in 2022 for 'LAMBRETTA' in classes 12 (Nos. 5628002, 5628005) and 25 (No. 5628003) on proposed use basis.
The Registrar refused 5628005 citing August Ventures' prior marks but accepted and advertised the others despite citing similar conflicts.
August Ventures filed applications under Section 19 to withdraw acceptances, then writ petitions for mandamus to decide those and certiorari to quash acceptances/advertisements, while Innocenti appealed the refusal. The court examined the interplay of Sections 9, 11, 18, 19, 20, 21, 47, and 57, holding Section 19 confers discretionary power on the Registrar without obligating consideration of third-party requests or hearings, as no such provision exists and alternative remedies like opposition under Section 21 suffice, rendering writs unmaintainable.
However, noting the Registrar's inconsistent stances on identical marks (refusing one while accepting others), it found the refusal erroneous and remanded all matters for consolidated adjudication. The writ petitions were dismissed, the appeal allowed, the impugned refusal set aside, and the Registrar directed to pass a reasoned consolidated order after hearing both parties on the applications, oppositions, and rectifications within three months, without expressing merits.
The power under Section 19 of the Trade Marks Act, 1999 to withdraw acceptance of a trademark application is discretionary and can only be invoked by the Registrar upon their own satisfaction; it is not obligatory to consider or decide applications filed by third parties requesting its exercise. [ Para 31]
Section 19 of the Trade Marks Act, 1999 and Rule 38 of the Trade Marks Rules, 2017 contemplate only the Registrar and the applicant as parties; there is no scope for third parties to file applications invoking the power under Section 19 or to be heard thereunder. [Para 32]
Parties aggrieved by acceptance and advertisement of a trademark application have an adequate alternative remedy under Section 21 of the Trade Marks Act, 1999 to file opposition, precluding writ jurisdiction under Article 226 for mandamus or certiorari regarding Section 19.
Case Title: Innocenti SA Vs. Examiner of Trade Marks:31.01.2026, (COMM.IPD-TM) 76/2024 2026:DHC:784: Hon'ble Mr. Justice Tejas Karia.
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it 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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