Kleo Consumer Brands Vs. Jeevan Kumar

Appeal under Section 91 of the Trade Marks Act, 1999 Settles the Path for Advertisement in Exceptional Circumstances

Kleo Consumer Brands Private Limited Vs. Jeevan Kumar:03-07-2026: Commercial Miscellaneous Petition No. 39 of 2025 Neutral Citation : BombayHC: Hon'ble Judge Somasekhar Sundaresan, J.

Factual and Procedural Background 

The Petitioner filed an application for the registration of the word mark "ANAAR" under Class 25. The Senior Examiner of Trade Marks issued an examination report raising objections under Section 11(1) of the Trade Marks Act, 1999, citing a prior identical or similar registration (Application No. 3108965) for similar goods which created a likelihood of confusion. Despite three concurrent applications by the Petitioner for "ANAAR" device marks being allowed, the Senior Examiner rejected the word mark application outright without causing it to be advertised. Aggrieved by this refusal order dated September 3, 2024, the Petitioner filed a statutory appeal under Section 91 of the Trade Marks Act before the Bombay High Court. During the pendency of these proceedings, the Petitioner also initiated rectification proceedings against the cited conflicting mark.

Dispute before Court 

The primary dispute before the Court was whether the Registrar of Trade Marks was justified in completely refusing the registration of the word mark "ANAAR" under Section 11(1) without advertising the application to test the credibility of the confusion market apprehensions, especially when concurrent device marks for the same name were allowed and rectification proceedings had been initiated against the cited mark.

Reasoning of Judge 

The Court observed that while the Registrar had refused the word mark due to similarity with a prior footwear registration, the absolute rejection without advertisement was premature under the specific facts. The Judge highlighted the proviso to Section 20(1) of the Trade Marks Act, 1999, which gives the Registrar discretion to advertise an application before acceptance if it falls under Section 9(1) or Section 11(1), or due to exceptional circumstances. The Court emphasized that advertising the application would serve as an effective mechanism to ascertain whether the commercial apprehensions of confusion are genuinely credible, particularly since the registrant of the cited mark failed to even file a counterstatement in the parallel rectification proceedings.

Decision 

The Bombay High Court allowed the commercial miscellaneous petition and set aside the impugned refusal order. The Court directed the Registrar to publish an advertisement of the Petitioner's trademark application in exercise of powers under the proviso to Section 20(1) of the Trade Marks Act, 1999, enabling the consideration of any legitimate objections that might arise from the public or the rival proprietor.

One Important legal principle held in the case 

When a trademark application faces relative grounds of refusal under Section 11, it is expedient for the registry to utilize the discretion provided under the proviso to Section 20(1) to advertise the application before absolute rejection, ensuring that market realities and genuine third-party apprehensions are thoroughly tested.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Pre Advertisement Rejections by Trademark Registry

Introduction:

The registration of a word mark forms the bedrock of brand protection, granting the owner exclusive statutory rights over the linguistic identity of a product. However, trademark registries frequently reject word marks while concurrently allowing stylized device marks containing the exact same word. The High Court of Judicature at Bombay recently addressed this regulatory discrepancy in a significant statutory appeal concerning the trademark "ANAAR". The ruling elucidates the proper invocation of statutory discretion regarding the advertisement of trademark applications before absolute rejection, striking a balanced path between defensive registry policing and practical market testing.

Factual and Procedural Background:

The dispute arose when a corporate entity sought statutory protection for its footwear brand by filing an application for the registration of the word mark "ANAAR" in Class 25 under the Trade Marks Act, 1999. During the examination process, the trademark registry issued an examination report citing statutory objections under Section 11(1) of the Act. The report highlighted that the applied mark was identical or similar to an earlier registered trademark, specifically Application Number 3108965, which covered similar goods and consequently created a severe likelihood of public confusion.

The applicant responded to the examination report, and subsequent administrative hearings were conducted by the Senior Examiner of Trade Marks. Paradoxically, during the same period, the registry permitted the progression of three concurrent applications filed by the same applicant where the word "ANAAR" was represented in a stylized device form. However, when it came to the plain word mark, the Senior Examiner issued a final refusal order, rejecting the application outright without letting it proceed to the public advertisement stage.

Faced with the absolute rejection of its core word mark, the applicant filed a statutory appeal under Section 91 of the Trade Marks Act, 1999, before the Bombay High Court, which was registered as a commercial miscellaneous petition. Moving proactively to clear its path, the applicant also initiated independent rectification proceedings against the conflicting cited trademark registration. Notably, the registered proprietor of the cited mark failed to file any counterstatement in those rectification proceedings, signaling a potential abandonment or lack of commercial interest in defending their registered mark.

Dispute Before the Court:

The core legal question before the Court was whether the trademark registry was legally justified in completely refusing the registration of the word mark at the pre-advertisement stage under the relative grounds of Section 11(1).

The applicant contended that an outright rejection without advertisement bypassed a critical exploratory phase provided by the statute. They argued that if the application had been advertised in the official journal, it would have become evident that the prior registration was not even actively being used in the market. The lack of a counterstatement in the rectification proceedings further proved that the registry's apprehensions of commercial confusion were visually overstated and lacked a real-world foundation.

On the other side, the representation for the trademark registry defended the refusal order, stating that a prior valid registration existed in the exact same business sector of footwear. The registry argued that while device marks offer distinct visual components that mitigate confusion, a plain word mark captures the entire phonetic and structural identity, making it highly conflicting with the existing registration. Therefore, the registry asserted that its proactive refusal was valid and that the applicant should wait for the rectification proceedings to conclude naturally before seeking registration.

Reasoning and Analysis of the Court:

The Court undertook a focused statutory analysis of the procedural routes available to the trademark registry when dealing with conflicting marks. The judgment centered entirely on the interpretation of Section 20(1) of the Trade Marks Act, 1999, which governs the advertisement of trademark applications.

The main text of Section 20(1) mandates that once an application is accepted, the Registrar must cause it to be advertised to invite public opposition. Crucially, the Court highlighted the proviso attached to Section 20(1), which vests a special discretionary power in the Registrar. This proviso explicitly states that the Registrar may cause an application to be advertised before formal acceptance if it relates to a trademark where absolute grounds for refusal under Section 9(1) or relative grounds for refusal under Section 11(1) apply, or in any other exceptional circumstances where such a course appears expedient.

The Court observed that the Senior Examiner's refusal order relied heavily on theoretical factors, such as the nature of the goods, the category of buyers, and the methods of purchasing, to conclude that public confusion was inevitable. The Court reasoned that under the peculiar facts of this case, an outright rejection based on these assumptions was unwarranted. Since the registry had already allowed three parallel device marks featuring the word "ANAAR", and because the owner of the cited conflicting mark chose not to contest the rectification proceedings, the market realities were clearly different from the registry's rigid initial assessment.

The Court interpreted the proviso to Section 20(1) as a statutory safety valve designed precisely for such ambiguous scenarios. By directing a pre-acceptance advertisement, the registry does not automatically grant the trademark; rather, it opens the floor to see if the theoretical apprehensions translate into actual commercial objections from the existing proprietor or the public. The Court concluded that using this discretion to advertise the mark was the most expedient and legally sound method to determine if the reasons for refusal were credible or merely hypothetical.

Final Decision of the Court:

The Court exercised its appellate jurisdiction to make a limited but vital intervention in the matter. The Court set aside the impugned refusal order passed by the Senior Examiner of Trade Marks. Instead of ordering an outright registration, the Court directed the trademark registry to publish the application as an advertisement in the official journal by exercising its powers under the proviso to Section 20(1) of the Act. This direction ensures that the application will undergo a transparent public notice phase, enabling the Registrar to evaluate any legitimate third-party objections that may be filed in response to the advertisement before making a final decision on registration. The commercial miscellaneous petition was thus formally disposed of with these operative directions.

Point of Law Settled:

This judgment firmly establishes that where relative grounds for refusal under Section 11(1) are invoked against a trademark application, the registry should not routinely resort to absolute, pre-advertisement rejections if there are mitigating factors or parallel device approvals. The ruling clarifies that the proviso to Section 20(1) serves as an essential procedural mechanism to test the validity of market confusion. By utilizing pre-acceptance advertisements in exceptional circumstances, the registry can transition from making speculative assumptions about consumer confusion to evaluating real-world market responses, thereby preventing legitimate businesses from being unfairly blocked at the entry gate of intellectual property protection.

Title of the Case: Kleo Consumer Brands Private Limited v. Jeevan Kumar, Senior Examiner of Trade Marks and Anr.

Date of Judgment: July 3, 2026

Case Number: Commercial Miscellaneous Petition No. 39 of 2025

Neutral Citation: 2026:BHC:902

Name of Court: High Court of Judicature at Bombay

Name of Hon'ble Judge: Somasekhar Sundaresan, J.

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In Kleo Consumer Brands Private Limited v. Jeevan Kumar, Senior Examiner of Trade Marks and Anr. [Commercial Miscellaneous Petition No. 39 of 2025], the Bombay High Court dealt with a statutory appeal under Section 91 of the Trade Marks Act, 1999, challenging the outright refusal of the word mark "ANAAR" in Class 25. The registry had rejected the application under Section 11(1) due to a prior footwear registration, despite allowing three parallel device marks for the same word. The Court held that absolute rejection at the initial stage was improper given that parallel rectification proceedings were uncontested by the prior registrant. Utilizing the proviso to Section 20(1), the Court set aside the refusal order and directed the registry to advertise the application, enabling a real-world assessment of potential public confusion through public notice.

Suggested SEO Tags:

Kleo Consumer Brands, Bombay High Court judgment, Trade Marks Act 1999, Section 91 appeal, Section 20 Trade Marks Act, trademark advertisement, word mark refusal, device mark registration, Section 11 trademark objection, footwear trademark dispute, ANAAR trademark, Senior Examiner of Trade Marks, trademark rectification, commercial miscellaneous petition, public confusion trademark, relative grounds for refusal, intellectual property litigation, pre acceptance advertisement, trademark journal publication, brand protection India, trademark registration process, Bombay High Court commercial division, statutory discretion Registrar, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles:

1. Trademark Rejection Reversed: Bombay HC Orders Advertisement of ANAAR Word Mark

2. Section 20 Proviso Explained: Bombay High Court Mandates Pre Acceptance Advertisement

3. Kleo Consumer Brands v. Registrar: Deceptive Similarity and the Power to Advertise

4. Why the Bombay HC Set Aside the Refusal of the ANAAR Trademark

5. Word Mark vs Device Mark: Understanding the Bombay High Court's Latest IP Ruling

6. Statutory Discretion under Section 20(1): Testing Market Confusion via Advertisement

7. Bombay High Court Rules on Pre Advertisement Rejections by Trademark Registry

8. Trademark Rectification and Prior Registration: Insights from 2026:BHC:902

9. Navigating Section 11 Objections: The Path from Refusal to Journal Publication

10. The Power of Public Notice: How the Bombay HC Rescued a Refused Trademark Application

New Balance Athletics Inc. Vs Astormueller AG

Legal News Update: New Balance Athletics Inc. Vs Astormueller AG and Ors.

​​New Balance Athletics Inc. Vs. Astormueller AG and Ors.:​13-07-2026:​CS(COMM) 962/2025:​2026:DHC:5573:​Hon'ble Ms. Justice Jyoti Singh

​Factual and Procedural Background

​The Plaintiff, New Balance Athletics Inc., is a globally renowned footwear and sportswear manufacturer that has utilized its registered "N" and "N-device" trademarks ("N-marks") on footwear since the 1970s. In India, its registrations date back to 1987. The Defendants, Swiss footwear manufacturer Astormueller AG and its Indian subsidiaries, launched a sneaker line under the brand "NUBEAT" in April 2024. The Defendants used "n:" (lowercase 'n' with a colon) and "nu:beat" logo marks on their footwear, having secured registrations for the same in late 2021 and 2022. The Plaintiff filed the present suit seeking an ad-interim injunction against the Defendants, alleging trademark infringement and passing off, along with rectification petitions challenging the Defendants' registrations.

​Dispute before Court

​The primary dispute before the Court was whether the Defendants' use of the "n:" and "nu:beat" logo marks on footwear was deceptively similar to the Plaintiff's registered and well-known "N" trademarks. Additionally, the Court evaluated whether the registration of the Defendants' marks acted as a statutory bar to the Plaintiff's passing off action and if the elements of passing off were established.

​Reasoning of Judge

​The Judge held that registration of a trademark is not a defense against an action for passing off under common law. Applying the doctrine of prior user, the Court observed that the Plaintiff was the prior user of the "N" marks in India by several decades, establishing massive international and domestic goodwill. Further, the Court applied the "initial interest confusion" test, holding that the lowercase "n" was the dominant part of the Defendants' logo marks, making them deceptively similar to the Plaintiff's upper-case "N". The addition of a colon was deemed insufficient to distinguish the rival marks. Since the parties operate in identical trade channels and target the same consumer base, confusion was highly probable.

​Decision

​The Court allowed the Plaintiff's application for ad-interim injunction. The Defendants, their subsidiaries, and agents were temporarily restrained from manufacturing, selling, importing, or advertising footwear bearing the standalone "n:" logo, the "nu:beat" logo mark, or any other mark deceptively similar to the Plaintiff's registered "N" marks during the pendency of the suit.

​One Important legal principle held in the case

​The right to bring a common law action for passing off remains unaffected by statutory registrations, and a registered proprietor can be successfully restrained from using their registered trademark if a prior user establishes superior goodwill and deceptive similarity under common law principles.

​[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

​Analytical Legal Article on the Judgment

Protection of single-letter trademarks

​Introduction

​The protectability of single-letter trademarks has consistently sparked intense litigation in intellectual property law. In a major development for branding and trademark jurisprudence, the High Court of Delhi addressed this issue in a trademark dispute between two international footwear giants. The case involved New Balance Athletics Inc., an American global sportswear brand, and Astormueller AG, a prominent Swiss footwear company. The dispute centered around the use of stylized single-letter logo marks on athletic footwear. Through this decision, the Court clarified the relationship between registered trademarks and common law remedies, while establishing crucial markers for evaluating deceptive similarity in athletic apparel.

​Factual and Procedural Background

​The Plaintiff, a Massachusetts-headquartered company, commenced its business in 1906. Over the decades, it expanded its footprint globally, designing and selling footwear, clothing, and accessories across more than 120 countries. The Plaintiff adopted the iconic capital letter "N" logo on its athletic footwear in the 1970s. In India, the Plaintiff secured its first trademark registration for the "N" mark in Class 25 on May 18, 1987, and subsequently registered several variations of its shaded "N" device marks. The Delhi High Court had previously declared the Plaintiff's shaded "N" logo, "NEW BALANCE", and "NB" marks as well-known trademarks.

​The Defendants, consisting of a Swiss corporation and its two Indian subsidiaries, trace their footwear manufacturing heritage back to 1928 in Germany. The Defendants launched a new sneaker line under the brand name "NUBEAT" in April 2024. In late 2021 and 2022, the Defendants obtained trademark registrations in India for the word mark "NU:BEAT" as well as device marks featuring a lower-case letter "n" followed by a colon, represented as "n:".

​Upon discovering the Defendants' sneaker listings on e-commerce platforms, the Plaintiff issued cease-and-desist notices and ultimately filed a commercial suit seeking an ad-interim injunction for trademark infringement and passing off. The Plaintiff also initiated cancellation petitions against the Defendants' registrations.

​Dispute Before the Court

​The core legal question was whether the Defendants' stylized "n:" and "nu:beat" logo marks were deceptively similar to the Plaintiff's registered "N" marks, thereby causing public confusion and leading to passing off.

​The Defendants contended that because both parties held valid trademark registrations, an action for infringement under statutory law could not be maintained by one registered owner against another. They argued that their lower-case "n" combined with a stylized colon was visually, structurally, and phonetically distinct from the Plaintiff's sharp, angled capital "N". Furthermore, the Defendants argued that no single entity should be allowed to monopolize a single alphabet of the English language, as it would stifle fair market competition.

​The Plaintiff countered that statutory registration offers no defense to a common law action of passing off. They argued that the lowercase "n" remained the dominant component of the Defendants' mark and that consumers, due to imperfect recollection, would likely perceive the Defendants' shoes as a variant, collaboration, or sub-brand of the Plaintiff's famous sneakers.

​Reasoning and Analysis of the Court

​The Court engaged in a comprehensive evaluation of trademark principles, focusing heavily on the interplay between statutory rights and common law remedies.

​First, the Court addressed the maintainability of the action against a registered trademark holder. Relying on the landmark Supreme Court ruling in S. Syed Mohideen v. P. Sulochana Bai, the Court reaffirmed that common law rights of prior user are superior to registration. The statutory rights granted under trademark law are always subject to the rights of a prior user. Therefore, the registration of the "n:" mark in favor of the Defendants did not bar the Plaintiff from seeking an injunction under the common law tort of passing off.

​Second, the Court analyzed the issue of prior use. The factual matrix clearly demonstrated that the Plaintiff was the prior user of the "N" marks in India, having built immense global and domestic reputation long before the Defendants launched their "NUBEAT" line in April 2024. The Plaintiff's long-standing promotional campaigns, celebrity endorsements, and sports sponsorships had created an exclusive association between the "N" logo and their footwear in the minds of the public.

​Third, the Court addressed the deceptive similarity of the marks using the "initial interest confusion" doctrine, as highlighted in Western Digital Technologies Inc. v. Geonix International Private Limited. Under this doctrine, likelihood of confusion is assessed at the point when a consumer first encounters the goods. The Court found that since both brands sell identical products—sneakers—through the same e-commerce platforms and retail channels to the same class of buyers, the risk of confusion was substantial.

​The Court rejected the Defendants' argument that the addition of a colon suffix distinguished their mark. It was noted that the lowercase letter "n" remained the dominant visual element. If the Defendants' own explanation to the Trademark Registry—that the colon represented the letter "B" to make the mark read as "NB"—was accepted, the deceptive similarity became even more glaring, as "NB" is also a well-known registered mark of the Plaintiff. The Court concluded that the minor typographical differences would not prevent an ordinary purchaser with imperfect recollection from believing there was an association between the two brands.

​Final Decision of the Court

​The Court allowed the Plaintiff's application for temporary injunction. While the Court found the word mark "NUBEAT" itself to be sufficiently distinct, it temporarily restrained the Defendants, their directors, partners, and distributors from manufacturing, marketing, selling, or advertising any footwear bearing the standalone "n:" logo, the "nu:beat" logo mark, or any other trademark deceptively similar to the Plaintiff's registered "N" marks during the pendency of the suit.

​Point of Law Settled

​This judgment reaffirms that trademark registration does not act as an absolute shield against a common law action of passing off. A prior user who has cultivated extensive public goodwill can successfully enjoin a subsequent registered proprietor if the subsequent mark is found to be deceptively similar. Additionally, the ruling highlights that the dominant portion of a composite or stylized single-letter mark will be the primary benchmark for assessing deceptive similarity, and minor structural additions, such as punctuation marks, will not escape the application of the initial interest confusion doctrine.

​Case Details

​Title of the Case: New Balance Athletics Inc. Vs. Astormueller AG and Ors.

Date of Judgment: 13-07-2026

Case Number: CS(COMM) 962/2025

Neutral Citation: 2026:DHC:5573

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

​Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

​Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.

​Headnote of the Judgment

​In New Balance Athletics Inc. v. Astormueller AG and Ors. [CS(COMM) 962/2025], the Delhi High Court addressed a trademark dispute concerning single-letter logo marks on footwear. The Plaintiff, a prior user of the famous "N" and "N-device" trademarks, sought an ad-interim injunction against the Defendants' use of the "n:" and "nu:beat" logo marks. The Defendants argued that their statutory registrations and structural differences barred the action. Resolving the interim application, the Court held that registration is not a defense to a common law passing off action. Applying the prior user doctrine and the initial interest confusion test, the Court determined that the lowercase "n" was the dominant part of the Defendants' logos, creating deceptive similarity. Consequently, the Court granted an ad-interim injunction restraining the Defendants from using the impugned logo marks during the pendency of the suit.

​Suggested SEO Tags

​New Balance trademark case, Astormueller AG, Delhi High Court judgment, trademark infringement, passing off under common law, single letter trademark, footwear brand dispute, initial interest confusion, prior user trademark doctrine, well-known trademark India, commercial suit Delhi HC, intellectual property rights, footwear branding litigation, N logo sneakers, NUBEAT brand, brand confusion, deceptive similarity, trademark registration defense, Section 27 Trade Marks Act, Section 28 Trade Marks Act, ad-interim injunction, trademark law India, Delhi High Court IPR, AdvocateAjayAmitabhSuman, IPAdjutor

​Suggested SEO Titles

1. ​Prior User Beats Registration: Delhi HC Restrains Astormueller in New Balance Trademark Dispute
2. ​Single-Letter Trademark Battle: Delhi High Court Protects Iconic New Balance 'N' Logo
3. ​Passing Off Wins Over Registered Mark: Analyzing New Balance v. Astormueller AG
4. ​Initial Interest Confusion: How the Delhi HC Evaluated Deceptive Similarity in Footwear Marks
5. ​New Balance v. Astormueller: Delhi High Court Restrains Use of Deceptive 'n:' Logo
6. ​Can Trademark Registration Shield Against Passing Off? Delhi HC Says No
7. ​The Battle of the 'N' Logos: Intellectual Property Lessons from Delhi High Court's Latest Ruling
8. ​Trademark Injunction Granted: New Balance Successfully Defends Its Well-Known Logo in India
9. ​Deceptive Similarity in Sneaker Brands: Legal Analysis of 2026:DHC:5573
10. ​Single Alphabet Monopolization or Brand Protection? Behind the New Balance Trademark Judgment

B.L and Company Vs. Registrar of Trade Marks

 B.L and Company Vs. Registrar of Trade Marks:13.07.2026 : C.A.(COMM.IPD-TM) 69/2025: Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

Factual and Procedural Background

The appellant filed an appeal under Section 91 of the Trade Marks Act, 1999 read with Rule 125 of the Trade Marks Rules, 2017. This appeal challenged an order dated 28.07.2025 passed by the respondent refusing the registration of the trademark B.I.A. under Application No. 6082938 in Class 06. The registration was refused by invoking Section 11(1) of the Act on the grounds that a similar valid mark blac with a similar classification of goods under Application No. 5763264 already existed on the register, and the deceptive similarity would lead to a likelihood of public confusion. During the pendency of the proceedings, the appellant filed an amendment application dated 16.04.2025 for a correction in the description of goods.

Dispute before Court

The dispute before the court concerned whether the respondent erred in refusing the registration of the trademark by ignoring the appellant's amendment application for correcting the description of goods. The appellant contended that the goods in the original application were not identical, similar, allied, or cognate, and that the amendment application ought to have been considered.

The respondent countered that a comparison of the rival goods revealed an overlap, making them allied and cognate. The respondent further argued that the proviso to Rule 37 of the Trade Marks Rules, 2017 prohibits any amendment in an application that has the effect of substantially altering the trademark or substituting a new specification of goods not included in the original filing, relying on the Division Bench precedent in Landmark Crafts Limited v. Romil Gupta.

Reasoning and discussion of Judge

The judge examined the application filed by the appellant for amendment or correction in the description of goods. The court observed that there was no doubt that the proposed changes constituted a substantial alteration and the goods described in the second application fell into a completely different class. Consequently, by virtue of Rule 37 of the Trade Marks Rules, 2017 and the legal principles established by the Division Bench in Landmark Crafts Limited v. Romil Gupta, the court found no fault in the respondent's decision to disallow the correction or amendment.

Decision

Following the court's observation regarding the impermissibility of the amendment, the counsel for the appellant sought permission to withdraw the appeal with liberty to file a fresh application for registration of the mark B.I.A. for a different description of goods falling under a different class. The court, without entering into the merits of the case, disposed of the appeal as withdrawn, granting the requested liberty in accordance with the law.

Important legal priciple held

Under the proviso to Rule 37 of the Trade Marks Rules, 2017, an applicant is prohibited from making any amendment to a trademark application that has the effect of substantially altering the trademark applied for or substituting a new specification of goods or services that was not included in the original application as filed.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Trademark Class Amendment and Refusals under Section 11 of Trademarks Act 1999

Introduction

The legal framework governing intellectual property rights plays a pivotal role in maintaining market fairness and preventing consumer confusion. In the realm of trademark law, conflicts often arise when an applicant seeks to register a mark that closely resembles an existing registered trademark. A significant aspect of this administrative process is the limitation placed on amending an application once it has been filed. This article explores a recent decision by the High Court of Delhi that underscores the strict boundaries governing amendments to trademark specifications and highlights the procedural recourse available to applicants when their applications conflict with pre-existing marks.

Factual and Procedural Background

The controversy originated from an application filed by an appellant seeking the registration of the trademark B.I.A. under application number 6082938 in class 06. The statutory framework involved primarily includes Section 91 of the Trade Marks Act, 1999, which provides the right to appeal against decisions of the registrar, and Rule 125 of the Trade Marks Rules, 2017. The respondent, acting as the trademark registry, rejected this application through an order dated July 28, 2025. The refusal was grounded in Section 11(1) of the Trade Marks Act, 1999, which prohibits the registration of marks that are deceptively similar to earlier registered marks for identical or similar goods, thereby posing a likelihood of public confusion. The registry cited a pre-existing valid registered mark, blac, under application number 5763264, which also covered similar goods. Seeking to overcome this rejection, the appellant filed an interim application on April 16, 2025, attempting to correct and amend the description of its goods. When the registry refused the registration, the appellant approached the High Court of Delhi to challenge the refusal order.

Dispute Before the Court

The core legal question requiring adjudication was whether the trademark registry erred in refusing the registration of the appellant's mark by failing to consider the amendment application for correcting the description of goods. The appellant contended that the goods in its original application were entirely distinct from those covered by the cited registered mark, arguing they were neither identical nor allied. The appellant further argued that its application to amend the description of goods should have been factored into the registry's decision-making process. 

On the other hand, the respondent argued that a direct comparison of the rival goods revealed a substantial overlap, making them allied and cognate in nature. The respondent strongly maintained that the proposed amendment could not be permitted under the law because it sought to substantially alter the original application by moving the goods into a different classification, which is explicitly barred by the prevailing statutory rules.

Reasoning and Analysis of the Court

In analyzing the conflict, the court focused heavily on the statutory boundaries governing the amendment of trademark applications. The primary focus turned toward Rule 37 of the Trade Marks Rules, 2017. The proviso to this rule explicitly proscribes any amendment to a trademark application if it has the effect of substantially altering the trademark or substituting a new specification of goods or services that was not part of the initial filing. Upon examining the appellant's amendment application, the court found that the proposed changes did indeed constitute a substantial alteration, effectively attempting to shift the goods into a completely different class. 

To fortify this reasoning, the court relied on an authoritative precedent established by its own Division Bench in the case of Landmark Crafts Limited versus Romil Gupta trading as Sohan Lal Gupta and Another, 2026 SCC OnLine Del 762. In that precedent, the Division Bench firmly ruled against allowing amendments that fundamentally change the scope or classification of the goods specified in the original application. Applying this legal principle, the court concluded that the trademark registry committed no legal error in ignoring or disallowing the amendment, as accepting it would violate the statutory mandate of Rule 37.

Final Decision of the Court

Faced with the court's clear analysis regarding the impermissibility of the amendment, the legal counsel for the appellant chose not to pursue the merits of the appeal further. Instead, the appellant sought permission to withdraw the appeal while requesting the liberty to file a brand-new application for the registration of the trademark B.I.A. specifying a different set of goods falling under a different classification. The court accepted this request. Without making any final observations on the ultimate merits of the trademark's eligibility, the court officially disposed of the appeal as withdrawn and granted the appellant the liberty to file a fresh application in accordance with the law.

Point of Law Settled

This judgment reaffirms an essential procedural rule in intellectual property practice: applicants cannot use the amendment mechanism to bypass objections by substantially altering their classification of goods after an application is filed. The legal principle reaffirmed is that the proviso to Rule 37 of the Trade Marks Rules, 2017 operates as a strict statutory bar against amendments that substitute or fundamentally change the specification of goods or services beyond what was originally requested. This ensures that the integrity of the trademark register is maintained and prevents applicants from retroactively modifying their claims to defeat valid objections raised under Section 11 of the Trade Marks Act, 1999.

Title of the Case:  B.L and Company Vs Registrar of Trade Marks

Date of Judgment: 13.07.2026

Case Number: C.A.(COMM.IPD-TM) 69/2025

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In the case of  B.L and Company Vs. Registrar of Trade Marks, before the High Court of Delhi, the appellant challenged an order refusing the registration of its mark B.I.A. due to deceptive similarity with the registered mark blac under Class 06. The appellant sought to rely on an amendment application altering its description of goods. The Court observed that Rule 37 of the Trade Marks Rules, 2017 strictly prohibits amendments causing substantial alterations or introducing new specifications of goods outside the original application. Consequently, the appellant chose to withdraw the appeal, and the Court disposed of the matter as withdrawn, granting liberty to file a fresh application under a different class.

Suggested SEO Tags:

Delhi High Court, Trademark Law, Section 91 Trade Marks Act, Rule 37 Trade Marks Rules, B.L and Company, Registrar of Trade Marks, Trademark Refusal, Deceptive Similarity, Likelihood of Confusion, Class 06 Trademarks, Specification of Goods, Amendment of Trademark Application, Allied and Cognate Goods, Intellectual Property Rights, Landmark Crafts Limited v Romil Gupta, Trade Marks Act 1999, Trade Marks Rules 2017, Trademark Registration Process, Withdrawal of Appeal, Liberty to File Fresh Application, IP Litigation Delhi, Trademark Classification, Judicial Review Trademarks, Indian Trademark Jurisprudence, Commercial Appellate Jurisdiction, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles:

Delhi High Court Clarifies Limits on Amending Trademark Applications, Understanding Rule 37 of Trade Marks Rules 2017 Delhi High Court Ruling, Can You Amend Product Descriptions in a Pending Trademark Application, M/S B.L and Company v Registrar of Trade Marks Case Analysis, High Court Rules on Substantial Alterations in Trademark Specifications, The Legal Boundaries of Trademark Amendments in India, Deceptive Similarity and Specification Changes in Trademark Law, Delhi High Court Precedent on Shifting Trademark Goods Classification, When Can a Trademark Appeal Be Withdrawn with Liberty to Refile, A Guide to Trademark Class Changes and Refusals under Section 11

Loreal SA Vs. Vekariya Nikunj

Delhi High Court Allows Amendment of Plaint to Include Trademark Infringement Post Registration

Loreal SA Vs. Vekariya Nikunj Arvindbhai: 13.07.2026:CM(M)-IPD 21/2026: 2026:DHC:5627: Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

Factual and Procedural Background

The petitioner adopted the trademark Garnier Bright Complete and its unique trade dress in September 2020 for facial and cosmetic products. Discovering that the respondents were manufacturing and selling identical cosmetic items under confusingly similar marks like Garuda Bright Complete 30x and 6 Drops Bright Complete 3x, the petitioner filed a commercial suit seeking a permanent injunction based on passing off and dilution. The Trial Court granted an ex parte ad interim injunction on 16.05.2024. 

While the litigation was ongoing, the petitioner trademark application was granted registration on 20.04.2025. The petitioner then moved an application under Order VI Rule 17 of the Code of Civil Procedure on 01.07.2025 to add the factum of registration and the statutory relief of infringement. The Trial Court dismissed this application on 10.02.2026 on the ground that the original plaint lacked assertions about the pending application and that registration formed a completely separate cause of action. This prompted the petitioner to approach the High Court.

Dipute before Court

The central issue before the Court was whether a plaintiff who initially filed a suit for passing off can be allowed to amend the plaint to add a claim for trademark infringement when the underlying trademark gets registered during the pendency of the legal proceedings.

Reasoning and discussion of Judge

The Judge observed that procedural rules exist to secure the ends of justice rather than entrap litigants in technicalities. Under Order VI Rule 17 of the Code of Civil Procedure, amendments necessary for determining the real question in controversy should be allowed at any stage of the proceedings. 

The Court noted that the action for trademark infringement arose out of the exact same set of facts, competing marks, and cosmetic products as the initial passing off claim. Rejecting the amendment would force the petitioner to launch separate proceedings, leading to an unnecessary multiplicity of suits. The subsequent event of registration directly enhanced the petitioner's rights, and the omission of any mention of the pending application in the initial plaint did not alter the core structure of the original grievance.

Decision

The High Court quashed and set aside the impugned order dated 10.02.2026. The application under Order VI Rule 17 of the Code of Civil Procedure was allowed, and the Trial Court was directed to take the amended plaint on record and proceed in accordance with the law.

Important legal priciple held

An action for passing off can be effectively telescoped into an action for trademark infringement via a plaint amendment if the registration of the trademark is obtained during the pendency of the suit, provided the basic factual matrix, rival marks, and products remain identical.

[Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation ]

Incorporation of Infringement Relief on the basis Trademark Registration which was filed post filing of Passing off Suit

Introduction:

The integration of subsequent statutory rights into an ongoing common law lawsuit forms an essential aspect of efficient intellectual property litigation. The High Court of Delhi recently dealt with this interface, evaluating whether a plaintiff can transition a passing off lawsuit into a trademark infringement action midway through the litigation. The ruling reaffirms a strong judicial preference for substantive justice over rigid technicalities, clearing the path for litigants to consolidate their evolving statutory claims without facing the burden of multiple parallel lawsuits.

Factual and Procedural Background:

The case originated when the petitioner adopted the mark Garnier Bright Complete along with its distinctive trade dress in September 2020 for a variety of cosmetic and skincare products. Over years of promotion, the petitioner asserted the establishment of substantial goodwill. 

The dispute arose when the respondents entered the market with identical skincare products bearing the marks Garuda Bright Complete 30x and 6 Drops Bright Complete 3x, causing market confusion. To protect its common law rights, the petitioner filed a commercial suit in 2024 for passing off and dilution, securing an ex parte ad interim injunction on 16.05.2024. 

During the pendency of this litigation, the petitioner trademark application number 6405978 in Class 03, which had been filed on 26.04.2024, was formally registered on 20.04.2025. 

Seeking to update the litigation with this statutory development, the petitioner filed an amendment application under Order VI Rule 17 of the Code of Civil Procedure on 01.07.2025 to introduce claims and reliefs for trademark infringement. The Trial Court, however, dismissed the application on 10.02.2026, stating that the original plaint did not mention the pendency of the application and that the registration introduced an entirely new cause of action with distinct legal parameters.

Dispute Before the Court

The core legal question required the determination of whether a pending passing off suit can be amended to incorporate a new claim for trademark infringement after the statutory registration is granted during the lifespan of the suit. 

The petitioner argued that the competing marks, products, and operational facts remained exactly the same, meaning that denying the amendment would merely create an avoidable multiplicity of proceedings. 

Conversely, the responding parties contended that because the original plaint contained no reference to the pending registration, the grant of registration constituted a separate and distinct cause of action that could not automatically merge into the ongoing litigation.

Reasoning and Analysis of the Court

The Court focused its analysis on the cardinal real controversy test governing amendments under the Code of Civil Procedure. It emphasized that procedural frameworks are designed to facilitate the administration of justice and should not be applied in a hyper-technical manner to defeat legitimate claims. The Court observed that when a cause of action or an enhancement of rights arises from events occurring during the pendency of a suit, amendments ought to be granted liberally, provided the basic structure and complexion of the case remain unaltered. 

The analysis heavily relied on the landmark Supreme Court decision in Rajesh Kumar Aggarwal and Others v. K.K. Modi and Others, (2006) 4 SCC 385, which ruled that courts must take notice of subsequent events to shorten litigation, preserve the rights of the parties, and subserve the ends of justice. 

Additionally, the Court invoked the ruling in Pravesh Narula Trading as M/s. Capital Enterprises v. Raj Kumar Jain Trading as M/s. Bholaram Puranmall and Another, 2024 SCC OnLine Del 7537, alongside the Division Bench precedent in Usha International and Another v. Usha Television Limited, 2002 SCC OnLine Del 306. 

These precedents collectively establish that the fundamental principles of passing off and trademark infringement are inherently similar, allowing a passing off action to be easily telescoped into an infringement action. Since both claims in this dispute rested upon the exact same marks and products, refusing the amendment would run counter to the objectives of judicial economy, forced the plaintiff to file an entirely fresh suit, and needlessly prolonged the resolution of the conflict.

Final Decision of the Court

The High Court set aside and quashed the impugned order dated 10.02.2026 passed by the learned District Judge. The petitioner's application under Order VI Rule 17 of the Code of Civil Procedure was fully allowed. The Court directed the Trial Court to take the amended plaint on record and proceed with the matter, effectively combining the passing off and trademark infringement claims into a single trial. The petition and all associated miscellaneous applications were formally disposed of.

Point of Law Settled

The judgment confirms that the acquisition of a trademark registration during the pendency of a passing off suit constitutes a significant subsequent event that justifies an amendment of the plaint. It settles the rule that an action for passing off can be legally telescoped into an action for trademark infringement under Order VI Rule 17 of the Code of Civil Procedure if the underlying factual matrix, rival marks, and products remain the same. This approach curtails the multiplicity of proceedings, ensures judicial economy, and allows intellectual property owners to seamlessly upgrade their pleadings from common law remedies to statutory protections.

Title of the Case: Loreal SA Vs. Vekariya Nikunj Arvindbhai & Ors.

Date of Judgment: 13th July, 2026

Case Number: CM(M)-IPD 21/2026 

Neutral Citation: 2026:DHC:5627

Name of Court: High Court of Delhi

Name of Hon'ble Judge: Hon'ble Ms. Justice Jyoti Singh

Written By:Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi

Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation .

Headnote of the Judgment:

In Loreal SA v. Vekariya Nikunj Arvindbhai & Ors., the High Court of Delhi reviewed a Trial Court order that had rejected the petitioner's application to amend its passing off plaint to incorporate a trademark infringement claim after its mark matured into registration during the pendency of the suit. The High Court held that because passing off and infringement claims share an identical factual matrix, rival marks, and products, the subsequent registration is a material supervening event. Allowing the amendment under Order VI Rule 17 of the Code of Civil Procedure serves the interest of justice by preventing a multiplicity of suits. The High Court set aside the impugned order and allowed the amendment.

Suggested SEO Tags:

Delhi High Court, Trademark Infringement, Passing Off, Order VI Rule 17, Code of Civil Procedure, Plaint Amendment, Loreal SA, Garnier Bright Complete, Intellectual Property Rights, Trademark Registration, Commercial Suit, High Court of Delhi Judgment, Civil Procedure India, Subsequent Events Amendment, Judicial Economy, Multiplicity of Suits, Trade Dress Protection, Intellectual Property Litigation, Deceptively Similar Marks, Legal News India, Commercial Courts Act, Law of Trademarks, Indian Judiciary, Pravesh Narula Case, Rajesh Kumar Aggarwal Case, AdvocateAjayAmitabhSuman, IPAdjutor

Suggested SEO Titles:

 1. Delhi High Court on Amending Passing Off Plaint to Trademark Infringement

 2. Scope of Order VI Rule 17 CPC in Trademark Suits: A Comprehensive Analysis

 3. Loreal SA v Vekariya Nikunj: Delhi High Court Allows Plaint Amendment Post Registration

 4. Telescoping Passing Off into Trademark Infringement Actions: Delhi HC Jurisprudence

 5. Understanding Plaint Amendments for Subsequent Trademark Registration in India

 6. Delhi High Court Minimizes Procedural Hurdles in Trademark Amendments

 7. Judicial Economy and Plaint Amendments: The Loreal SA Judgment Explained

 8. How Subsequent Trademark Registration Affects Pending Passing Off Lawsuits

 9. Order 6 Rule 17 CPC and Intellectual Property Rights: Recent Trends

 10. Delhi High Court Jurisprudence on Multiplicity of Suits in Trademark Law