Introduction:This case explores the critical intersection of trademark law, procedural fairness, and corporate liquidation under Indian jurisprudence. The matter involved the contentious registration of the trademark “DUNLOP” by Glorious Investment Limited, a successor to Dunlop India Ltd., which was undergoing liquidation. The core contention revolved around the legitimacy of assignments executed during liquidation and whether the Registrar of Trademarks complied with the principles of natural justice. The decision of the Calcutta High Court provides crucial judicial interpretation concerning the rights of opponents in trademark opposition proceedings and the procedural conduct expected from administrative authorities.
Factual Background:Dunlop International Limited initiated opposition proceedings against the applications filed by Glorious Investment Limited for the registration of the trademark “DUNLOP” across eight different classes. The applications were filed on a “proposed to be used” basis. Glorious Investment claimed ownership through a series of name changes and alleged assignment deeds originating from Dunlop India Limited, a company that was already ordered to be wound up in related proceedings. The opponents challenged the authenticity and legality of these assignments, asserting that they were executed fraudulently during the liquidation process and that the Registrar erred in recognizing them without adequate scrutiny.
Procedural Background:The trademark applications in question were filed as early as 2008. Oppositions were filed by Dunlop International Limited, and the opposition proceedings remained pending for over a decade. Eventually, in 2024, the Registrar issued orders dismissing the oppositions and allowing registration of the mark “DUNLOP” in favor of Glorious Investment Ltd. The Registrar’s orders claimed to have heard both sides and provided a summary reasoning favoring the applicant. However, the opponents contended that the matter was disposed of arbitrarily, their prayer for adjournment was unfairly denied, and the Registrar failed to engage with serious legal and factual objections, especially those concerning the questionable assignments and the pending liquidation status of Dunlop India Ltd.
Legal Issue:The central legal issues before the Court were whether the Registrar of Trademarks violated principles of natural justice in rejecting adjournments and proceeding with the hearing, whether the orders lacked adequate reasoning to justify the registration of the mark, and whether the alleged assignments executed during the pendency of liquidation were valid and capable of conferring trademark rights to Glorious Investment Limited.
Discussion on Judgments:The appellant relied on Kranti Associates Pvt. Ltd. v. Masood Ahmed Khan, (2010) 9 SCC 496, to argue that a quasi-judicial authority is bound to record proper reasons in its order, and a lack thereof constitutes a violation of natural justice. The Supreme Court had emphasized the necessity for reasoned orders as a fundamental tenet of administrative fairness.
In UCO Bank v. Spanco Ltd., 2014 SCC OnLine Bom 1232, the Bombay High Court observed that procedural justice and fairness are essential, especially when public interest and third-party rights are involved. This was relied upon to assert that the Registrar had failed to consider the wider public implications of improperly granting trademark rights to a possibly unauthorized party.
IDBI Bank v. Official Liquidator, (2020) 15 SCC 517, and Dunlop India Ltd. v. E.V. Mathai & Sons, 2013 SCC OnLine Cal 1591, were cited to highlight the ongoing liquidation proceedings involving Dunlop India Ltd. and the legal consequences of assigning assets during such proceedings without the sanction of the Company Court.
In Kia Wang v. Registrar of Trademarks, 2023 SCC OnLine Del 5844, the Delhi High Court had held that fraudulent registration or misuse of procedure in trademark assignments would invalidate the resultant rights. This decision was particularly pertinent given the argument that the assignments were executed by parties with shared interests and lacked genuine arm’s length conduct.
The respondent relied on Armasuisse v. Trade Mark Registry, 2023 SCC OnLine Del 4, to suggest that assignments recorded by the Registrar should not be questioned unless a civil court has declared them invalid. They also cited Cinni Foundation v. Raj Kumar Sah & Sons, ILR (2010) I Delhi 754, to argue that mere procedural defects in forms cannot invalidate a registration.
In addition, Tata Sons Ltd. v. Manoj Dodia, 2011 (40) PTC 244 (Del), and Daimler Benz Aktiengesellschaft v. Hybo Hindustan, AIR 1994 Del 239, were referred to in the context of distinctiveness and well-known trademarks. However, the Court noted that “DUNLOP” was not registered as a well-known mark under Rule 124 and the finding of distinctiveness lacked statutory analysis under Sections 11(6)–(9) of the Trademarks Act, 1999.
Reasoning and Analysis of the Judge:The scrutinized the entire procedural history and highlighted the unusual delay in disposal, stretching over more than a decade. The Court found that the Registrar's denial of adjournment was not in conformity with the rules in place at the time of initiation of proceedings (Trademark Rules, 2002), which did not cap the number of adjournments. The Registrar failed to exercise discretion judiciously, especially when one adjournment was sought due to illness of counsel.
The Judge further found that the orders passed were devoid of proper reasoning. Merely stating that the evidence and documents were considered did not fulfill the obligation to provide a reasoned conclusion. The order lacked any analysis of the evidence submitted or rationale for finding in favor of the applicant.
The Court placed strong emphasis on the questionable nature of the assignments executed while Dunlop India Ltd. was in liquidation. These transactions, executed by the same advocates for both assignor and assignee, cast serious doubt on the genuineness and validity of the documents. The absence of notice to the Official Liquidator or affected parties further invalidated the process under Section 45 of the Trademarks Act, 1999.
The Judge also underscored that administrative discretion must not result in procedural unfairness and that failure to deal with allegations of fraud, even if raised late, vitiates the entire proceedings. The Deputy Registrar’s attempt to create a facade of procedural compliance, despite effectively denying the opponent a meaningful hearing, was severely criticized.
Final Decision:The Calcutta High Court set aside all the impugned orders passed by the Registrar in IPDTMA No. 14 of 2024 to IPDTMA No. 21 of 2024. The matters were remanded for fresh consideration, with directions to provide a fair opportunity of hearing to all parties. The Registrar was instructed to conclude the rehearing process within three months from the date of communication of the order. The Court clarified that its observations were tentative and did not prejudice the merits of the case, which were left open for adjudication in accordance with law.
Law Settled in This Case:The judgment affirms that trademark opposition proceedings must strictly comply with the principles of natural justice, including granting reasonable adjournments and issuing well-reasoned orders. It reiterates that procedural fairness cannot be sacrificed for the sake of formal compliance. Where allegations of fraud, improper assignment, or procedural abuse are raised, even at a late stage, administrative authorities must give such concerns due consideration. The case also highlights the limited jurisdiction of the Registrar under Section 45 of the Trademarks Act, especially where the validity of assignments executed during liquidation is challenged.
Case Details: Dunlop International Limited Vs. Glorious Investment Limited & Anr.:Date of Order: 11 June 2025:Case Number: IPDTMA/14/2024 (with connected appeals: IPDTMA/15/2024 to IPDTMA/21/2024):Name of Court: High Court at Calcutta, Original Side (Intellectual Property Rights Division):Name of Judge: Hon’ble Justice Ravi Krishan Kapur
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
