Non-Speaking Orders in Trademark Law
Introduction: This legal case study analyses the appeal filed by Cargill Incorporated against the Registrar of Trade Marks before the High Court of Delhi. The dispute centers around Cargill’s application to register the trademark “TOPCITHIN” in Class 1, its prior international use and adoption, and the objections raised owing to the existence of a similar mark registered by another entity. The litigation probes into the procedural fairness, consideration of prior use, sufficiency of reasoning in administrative orders, and the interplay between rectification proceedings and trademark registration.
Factual Background: The trademark “TOPCITHIN” was originally conceptualized and adopted by Cargill’s predecessor, Lucas Meyer GmbH & Co., from as early as 1969. The mark was first registered in Germany in 1973 and maintained until 2009. Through a series of corporate acquisitions and mergers, all rights in the trademark passed from Lucas Meyer GmbH & Co. to SWK Trostberg AG in 1999, later absorbed by Degussa AG in 2001, and eventually acquired by Cargill’s German operations in 2006. The mark was assigned and adopted globally throughout this period.
In India, Cargill began using the mark “TOPCITHIN” since 2011 for lecithin used in food, cosmetics, animal feed, and related emulsifier products. On 17th October 2020, Cargill filed for registration of “TOPCITHIN” in India, claiming prior use from February 2011. Importantly, an Affidavit of Prior Use and supporting evidence was submitted promptly. The subject application was examined by the Registrar of Trade Marks on 19th November 2020, but the Appellant claims never to have received the examination report directly.
The objection raised by the Registrar centered on Section 11(1) of the Trade Marks Act, noting the existence of a similar mark “TOPCITHIN” under Registration No. 896028 for “Lucas Meyer Industries Private Limited” as of January 2000. Despite the apparent similarity and potential for confusion, Cargill contested the grounds for refusal, maintaining its rights as the earlier adopter with a globally recognized trademark.
Procedural Background: Upon discovering the objection in the online records, Cargill promptly responded with a detailed reply on 7th December 2021, asserting its prior rights and referencing international registrations. It also filed a rectification petition No. 273414 seeking removal of the cited mark from the registry, arguing that the mark remained registered without sufficient cause.
In December 2023, the Registrar scheduled a pre-publication hearing, where Cargill’s counsel made oral submissions aligned with its written reply and highlighted the pending rectification petition. Despite these representations, the Registrar issued an order on 31st January 2024 refusing the application for trademark registration, holding that the mark was deceptively similar to the cited mark. Cargill filed the present appeal against this administrative order, claiming misrepresentation of submissions and an erroneous understanding by the Registrar.
Core Dispute: At the heart of the case is whether the Registrar’s order rejecting Cargill’s application for registration of the mark “TOPCITHIN” is legally sustainable. The essential questions are whether the Registrar erred in recording submissions, failed to consider material evidence of prior use, and disregarded the pending rectification petition, thus violating principles of natural justice and administrative fairness.
A secondary but significant point revolves around whether prior international adoption and registration, along with actual use in India, confer stronger trademark rights for Cargill compared to the cited mark, which was registered on a “proposed to be used” basis and allegedly lay unused.
Discussion on Judgments: During the proceedings, Cargill relied upon specific legal authorities to demonstrate that orders passed contrary to the record must be set aside. The primary precedents cited include:
Order dated 10.01.2024 of the Delhi High Court in Hyclone Laboratorie, Inc. v. Registrar of Trade Mark, C.A (COMM.IPD-TM) 73/2021. In this case, it was held that findings contrary to the underlying record invalidate orders which refuse trademark registration.
Delhi High Court judgment in Mikko Vault LLC v. Registrar of Trade Marks, Neutral Citation: 2002 DHC 004440. Here, the Court quashed an order where the respondent failed to consider essential points urged by the appellant in response to the examination report.
These citations were invoked to emphasize the necessity for reasoned and speaking orders by administrative authorities, especially when submissions or critical documentary evidence have been placed on record but not expressly addressed.
Reasoning and Analysis of the Judge: Justice Tejas Karia’s analysis centered upon whether the Registrar had properly recorded and considered Cargill's submissions and evidence of prior use. A careful examination of the reply to the examination report and the Registrar’s order revealed incongruence; the impugned order not only misrepresented Cargill’s arguments but failed to mention or analyze the substance of the documentary evidence submitted.
Despite assertions by the Registrar that “all documents on record” had been reviewed, no reference was made to the key issue of prior international adoption and the effective use of the mark in India prior to the cited mark. The Court found that the Registry overlooked Cargill’s argument that the cited mark remained on the register without sufficient cause and did not account for the pending rectification petition, which could impact the fate of the subject application.
Cargill’s counsel categorically denied making submissions attributed to them in the impugned order regarding the lack of similarity between the marks. Documentary records confirmed that Cargill’s written reply recognized the similarity but placed faith in its prior adoption and use. In line with statutory and judicial precedent, the Court held that a non-speaking and unreasoned administrative order is contrary to law.
Final Decision: The High Court of Delhi allowed the appeal, quashing the impugned order dated 31st January 2024 passed by the Registrar of Trade Marks. The Court remanded the matter, directing the Registrar to reconsider the application afresh after granting the Appellant an opportunity to file additional evidence and documents, and to be heard in accordance with law. Pending determination of Cargill’s rectification petition was also directed to be expedited and resolved prior to the subject application’s decision. The matter was disposed of in terms of these directions.
Law Settled in This Case: The judgment reaffirms a cardinal principle of trademark law and administrative justice: refusal of registration must be supported by proper reasoning, due consideration of evidence, and accurate recording of submissions made by applicants. Where prior use and international adoption are substantiated, authorities must do more than mechanically cite similarity. When rectification and cancellation proceedings are pending against a cited mark, these must be considered before finalizing the fate of the subsequent applicant’s trademark rights. The decision places a premium on procedural fairness, thorough analysis, and the necessity for administrative orders to be speaking, transparent, and reflective of the actual submissions and documents presented.
Case Title: Cargill Incorporated Vs. Registrar of Trade Marks
Date of Order: August 7, 2025
Case Number: C.A.(COMM.IPD-TM) 43/2024
Neutral Citation: 2025:DHC:7113
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice Tejas Karia
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
