Street One GmbH appealed against the Registrar's order dated 25.01.2024 dismissing its opposition and allowing registration of the mark “STREET9” in Class 25 applied for by Respondent No.3 on 24.11.2020 with user claim since 01.04.2014. The appellant, proprietor of prior registered marks “STREET ONE/Street One” adopted in 1983 and registered in India since 2003 including in Class 25, opposed on grounds of deceptive similarity under Section 11. The Registrar dismissed the opposition primarily on lack of evidence of reputation and spillover, treating prior use as relevant. The Delhi High Court held that the Registrar misapplied Section 11 by requiring proof of reputation when the appellant relied on prior registrations, as Section 11 read with Section 29 protects registered marks without needing proof of prior use or transborder reputation once similarity and identical goods are established, set aside the impugned order, and remanded the matter for fresh decision on relative grounds under Section 11.
- Where opposition is based on prior registered trademarks for identical goods, Section 11 of the Trade Marks Act, 1999 is attracted without requirement of proving reputation or prior use in India; the Registrar cannot dismiss opposition merely for lack of evidence of spillover reputation (Paras examining misapplication of Section 11, relying on principles that Section 11 is alter ego of Section 29).
- Proof of transborder reputation or actual use is not mandatory for invoking Section 11 when relying on prior Indian registrations; the relative grounds of refusal focus on likelihood of confusion due to similarity of marks and goods (Paras on correct application of Section 11).
Case Title: Street One GmbH Vs. The Registrar of Trade Marks Order Date: November 28, 2025 Case Number: C.A.(COMM.IPD-TM) 38/2024 Neutral Citation: Not available in document Name of Court: High Court of Delhi at New Delhi Name of Judge: Hon'ble Mr. Justice Tejas Karia
[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]
