Mr. Chander M. Lall, Sr. Adv. with Mr. Ankur Sudan, Mr. Achuthan Sreekumar, Ms v. KAMDHENU LIMITED & ORS

Judgment

1. In view of the nature of the dispute, we deem it appropriate to commence this judgment by recounting the procedure for registration LPA 407/2025 of a trade mark, under the Trade Marks Act, 19991 read with the Trade Marks Rules, 20172.

2. Procedure for registration of a trade mark

2.1 Any application, seeking registration of a trade mark, is required to be submitted under Section 18(1)3 of the TMA, to the Registrar of Trade Marks. Section 18(4)4 empowers the Registrar to either refuse the application, or accept it, absolutely or conditionally. Section 195 further empowers the Registrar, if he feels that the application ought not to have been accepted, or that it should have been accepted subject to conditions other than those subject to which it was accepted, to withdraw the acceptance. If the application is accepted, Section 20(1)6 requires the Registrar to advertise the application, along with the conditions, if any, subject to which it was 1 “the TMA” hereinafter 2 “the TMR” hereinafter 3 18. Application for registration. – Any person claiming to be the proprietor of a trade mark used or proposed to be used by (1) him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. 4 (4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. 5 19. Withdrawal of acceptance. – Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied— that the application has been accepted in error; or (a) (b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted. 6 20. Advertisement of application. – When an application for registration of a trade mark has been accepted, whether (1) absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner: Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (1) of Section 9 and sub-sections (1) and (2) of Section 11 apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do. LPA 407/2025 accepted.7 Any person who seeks to oppose the registration of the trade mark may then, under Section 21(1)8, submit a notice of opposition, with the Registrar. The Registrar would, under Section 21(2)9, then serve a copy of the notice of opposition to the applicant seeking registration of the trade mark. The applicant is required, under the same sub-section, to submit a counter-statement, justifying the application and meeting the opposition. Failure, on the part of the applicant, to do so, would amount to abandonment of the application. Counter-statement, if filed, is required, by Section 21(3)10, to be served by the Registrar on the opponent. Section 21(5)11 then empowers the Registrar to hear the parties, if required, consider the evidence cited by them and decide whether to register the mark and, if so, whether the registration should be conditional or unconditional. Section 2312 finally requires the Registrar to register the mark, if it has 7 The proviso to Section 20(1) permits the Registrar to advertise the application before acceptance in certain exceptional cases. We are not concerned with a situation in which the proviso applies. 8 21.

Opposition to registration. – (1) Any person may, within four months from the date of the advertisement or re- advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration. 9 (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application. 10 (3) giving notice of opposition. 11 (5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not. 12 23. Registration. – (1) mark has been accepted and either— If the applicant sends such counter statement, the Registrar shall serve a copy thereof on the person Subject to the provisions of Section 19, when an application for registration of a trade the application has not been opposed and the time for notice of opposition has the application has been opposed and the opposition has been decided in favour the Registrar shall, unless the Central Government otherwise directs, register the said trade mark within eighteen months of the filing of the application and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of Section 154, be deemed to be the date of registration. (2) in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry. On the registration of a trade mark, the Registrar shall issue to the applicant a certificate LPA 407/2025 (a) expired; or (b) of the applicant, not been opposed within the time permissible, or if any opposition, so raised, has been decided in favour of the applicant.

2.2 The manner in which an application, seeking registration of a trade mark is required to be examined, is set out in Rule 33 of the TMR. Rule 33(1)13 requires the Registrar to cause the conducting of a search amongst earlier trademarks, which are either registered or in respect of which applications for registration are pending, to ascertain whether any such mark, or marks, are identical or deceptively similar to the trade mark of which registration is sought by the applicant. Rule 33(2)14 requires the Registrar, in the event of his having any objection to the application, or if he intends to accept the application subject to any conditions or limitations, to communicate the objection or proposal to the applicant in the form of a First Examination Report15. Rule 33(4)16 requires the applicant to respond to the FER within one month from the date of its receipt, failing which the Registrar is entitled to treat the application as abandoned. If the response is received within one month and found acceptable, the Registrar shall advertise the application under Section 20(1) of the TMA. If the 13 33. Examination, Objection to acceptance, hearing. – (1) The Registrar shall cause the application to be examined as per provisions of the Act, wherein a search shall also be conducted amongst the earlier trade marks, registered or applied for registration, for the purpose of ascertaining whether there are on record in respect of the same goods or services or similar goods or services any trade mark identical with or deceptively similar to the trade mark applied for. The Registrar may cause the re-examination of the application including research of earlier trade marks at any time before the acceptance of the application but shall not be bound to do so. 14 (2) If, on consideration of the application for registration of a trade mark and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think fit to impose under sub-section (4) of Section 18, the Registrar shall communicate such objection or proposal in writing to the applicant in the form of an examination report. 15 "FER" hereinafter 16 (4) respond to the communication, the Registrar may treat the application as abandoned. If, within one month from the date of receipt of the examination report, the applicant fails to LPA 407/2025 response is not satisfactory, the Registrar is required, by Rule 33(5)17, to provide an opportunity of hearing to the applicant and, under Rule 33(8)18, to pass an appropriate order after hearing the applicant.

2.3 This is the statutorily envisaged protocol, contained in Chapter III of the TMA and Chapter II of the TMR, for registration of a trademark. The lis

3. Clearly, the TMA envisages any person, who desires to oppose the proposed registration of the trademark, to submit a notice of opposition, under Section 21(1), after the application is advertised under Section 20. In the present case, however, the respondent has, instead of submitting such an opposition, chosen to challenge the very advertisement of the appellant’s application for registration of the trademark AL KAMDHENU GOLD, fundamentally on the ground that there are several registered trademarks of the respondent, to which the proposed AL KAMDHENU GOLD mark of the appellant would be confusingly similar, which have not been cited by the Registrar while advertising the mark.

4. The dispute relates to five applications submitted by the appellant with the Registrar, under Section 18(1), for registration of 17 (5) In case the response to the examination report is received within the aforesaid time, the same shall be duly considered and if the Registrar accepts the application for registration, he shall communicate such acceptance to the applicant and cause the application to be advertised as accepted under sub-section (1) of Section 20. 18 (8) Where the applicant has submitted his reply to the examination report within the aforesaid period or has appeared in the hearing and made his submissions, the Registrar shall pass an appropriate order. LPA 407/2025 trademark AL KAMDHENU GOLD. Three of the five applications were advertised by the Registrar, without any conditions. In respect of the remaining two applications, the Registrar issued a FER in which some of the marks of the respondent were cited but certain other marks which, according to Mr. J. Sai Deepak, learned Senior Counsel for the respondent, were also rival marks to which the proposed AL KAMDHENU GOLD mark was confusingly similar, were not cited. The appellant filed its response to the FER in the cases in which the FER had been issued. Among the objections that the appellant took was the plea that the respondent could not oppose the registration of the appellant’s mark because of a contractual relationship between them.

5. The respondent instituted five writ petitions, from which the present appeal emanates, challenging the decision of the Registrar to advertise the applications of the appellant for registration of the trademark AL KAMDHENU GOLD without, in the FER, citing the allegedly confusingly similar trademarks of the respondent, which already stand registered with the Registrar prior in point of time. By the impugned judgment, the learned Single Judge has allowed all five writ petitions, without issuing formal notice to the appellant and without calling upon the appellant to file any counter-affidavit by way of response to the writ petitions. Notice was issued only to the Union of India, through the office of the Registrar and, on the basis of the counter-affidavit filed by the Registrar, the learned Single Judge has remanded all five applications filed by the appellant for de novo adjudication by the Registrar in accordance with law. LPA 407/2025

6. Aggrieved thereby, the appellant, who was Respondent 4 in each of the writ petitions, has filed the present Letters Patent Appeal. The Impugned Judgment

7. We deem it appropriate to reproduce the impugned judgment of the learned Single Judge in its entirety: “It is the duty of a High Court to set the 'wrong' right and to not let the same perpetrate any further. That is the reason that the Legislature has provided for the provision qua invocation of extra- ordinary jurisdiction by a High Court under Article 22619 of the Constitution of India. Tough situations demand exercising of tough measures and sometimes recourse to appropriate remedies under Article 226 of the Constitution of India is the only way out. Present proceedings (a batch of five writ petitions) is/ are one such glaring example of a peculiar situation regarding the manner of working by the Trade Marks Registry in general which also included the five trademark applications involved herein. The preface thereof is already laid out in the earlier order 2. dated 09.05.2025, when the proceedings were listed before this Court for the first time. Relevant extract thereof is reproduced as under:- "4. Learned counsel appearing for the respondent nos.2 and 3 despite repeated queries, have failed to revert with any answers since they are yet to receive instructions.

5. Prima facie, this Court finds something not in order, more so, since it is but strange that the part of the records maintained and available with the respondents are not being shown. There is something amiss. 19 226. Power of High Courts to issue certain writs. – (1) Notwithstanding anything in Article 32, every High Court shall have power, throughout the territories in relation to which it exercises jurisdiction, to issue to any person or authority, including in appropriate cases, any Government, within those territories directions, orders or writs, mandamus, prohibition, quo of habeas including writs warranto and certiorari, or any of them, for the enforcement of any of the rights conferred by Part III and for any other purpose. corpus, nature LPA 407/2025 Accordingly,

6. factual matrix considering involved, particularly, since as many as 16 trademarks duly registered and subsisting in the name of the petitioner are (not) finding mention in the accompanying Search Report sent along with the ER, it is deemed appropriate to call either of the Examination Officer, namely, Mr. Nehul Kumar or Mr. Rahul Kumar, who have issued the respective ER involved in the writ petitions, to remain physically present in this Court alongwith the appropriate hand held device in the form a laptop, I-pad or any other similar instrument on 15.05.2025 at 02:30 P.M. for assisting this Court for getting a clear picture qua the software being used by the respondent nos.1 and 2 at the time of preparing the Search Report.

7. This Court also deems it appropriate to also call upon the Registrar of Trademarks to join virtually on 15.05.2025 at 02:30 P.M. as well." The same is also evident from the order dated 15.05.2025, 3. when the proceedings were listed before this Court again on 15.05.2025. Relevant extract thereof is reproduced as under:- "1. Mr. Unnat Pandit, Controller General of Patents, Design and Trademark, has through video conferencing and Mr. Mehul Kumar, Examiner, is also present in person in compliance of the last order. joined

2. The office the Trade Mark Registry has shared the screen with this Court, wherein the whole process of issuance of examination report as also the search conducted thereafter for issuance of the search report has been demonstrated. This Court appreciates the co-operation extended by 3. both Mr. Unnat Pandit, Controller General of Patents, Design and Trademark as also Mr. Mehul Kumar, Examiner.

4. After some time, learned counsel for the respondent nos.1, 2 and 3 seek, and are granted, one week for obtaining instructions qua the trademark applications in issue in the present petitions(s). Further, if they so desire, they shall be free to file an affidavit qua the issue at hand within the aforesaid period of one week as well."

4. Both the aforesaid orders dated 09.05.2025 and 15.05.2025 LPA 407/2025 reflect that there were indeed some omissions on the part of the respondent nos.1 to 3 in these petitions. In fact, in response thereto, though there was no specific order for the respondent nos.1 to 3 for filing an affidavit, however, they filed a short affidavit wherein they have themselves categorically stated as under:- THAT respectfully submitted "5. Respondent No.3 (Trademark Registry) is willing to withdraw acceptance of the trademark Application number 6845025 in exercise of the powers conferred under section 19 of the Trademark Act, 1999, and shall examine the application afresh, on merits, in accordance with the provisions of the Trade Marks Act and rules framed thereunder. ***** THAT

6. (Registrar of the Respondent No.3 Trademark) had appeared before the Hon’ble Court on 15.05.2025 pursuant to the Order dt. 09.05.2025 wherein the Hon’ble Court Observed that" Prima facie, this Court finds something not in order, more so, since it is but strange that the part of the records maintained and available with the respondents are not being shown. There is something amiss" Hence pursuant to the hearing dated 15.05.2025 the Registrar of Trademarks has initiated appropriate administrative action against Mr. Mehul Kumar, Examiner of Trade Marks, and Mr. Rahul Kumar, Senior Examiner of Trade Marks in accordance with the applicable service rules and procedures. THAT in light of the foregoing, Respondent Nos. 1 7. to 3 most respectfully submit that the aforementioned submissions may kindly be considered by this Hon’ble Court while adjudicating the present Petition."

5. Before proceeding further, at the outset, this Court applauds the alacrity shown by the respondent nos.1 to 3 in initiating timely action at their end to put their house back in order at the earliest and in the best possible manner. But, at the same time, for conserving the multiplicity of litigation, it is felt appropriate, fit and proper if this Court suo moto in exercise of its power under Article 226 of the Constitution of India take steps which are in overall interest of the general public including that of the petitioner and the respondent no.4 herein.

6. Though, no doubt it was open to the petitioner to have LPA 407/2025 availed any of the other statutory remedies as available to it in accordance in law instead of filing the present writ petitions, however, without adverting to the same and considering the factual matrix involved, the nature of the grievances raised and the type of reliefs sought by the petitioner in the present proceedings and in furtherance of the earlier two orders dated 09.05.2025 and 15.05.2025 passed by this Court as also taking into consideration the averments made by the respondent nos.1 to 3 in the short affidavit filed on their behalf, wherein it is specifically stated that appropriate action has been initiated against the Examiners involved, this Court felt it appropriate, fit and proper to proceed with passing appropriate orders without adverting to the merits involved herein or even issuing notice therein by suo moto exercising its extra-ordinary, inherent jurisdiction under Article 226 of the Constitution of India. This was, more so, since the facts of these proceedings 7. were relating to petitioner having raised questions qua the entire Examination followed by the Registrar and its officers and also the acceptance of the five trademark applications i.e. application no.6890699 in W.P.(C)-IPD 29/2025, application no.6845025 in W.P.(C)-IPD 30/2025, application no.6845771 in W.P.(C)-IPD 31/2025, application no.6890704 in W.P.(C)- IPD 32/2025 and application no.6742246 in W.P.(C)-IPD 33/2025; and that the Registrar having conducted the proceedings in dereliction of his statutory duties in complete disregard of law specifically, Rule 33 of the Trademark Rules and Section 1120 of the Trademarks Act, 1999 as also various dictums of this Court.

8. In view of the aforesaid, since there is an apparent gross abuse of jurisdiction by the Trade Marks Registry, which is subordinate to this Court, in the considered opinion of this Court, these are fit cases for this Court to suo moto invoke the extra- ordinary jurisdiction of this Court under Article 226 of the Constitution of India. Furthermore, it is a settled law that entertainment of such writ petitions under Article 226 of the Constitution of India, even when an efficacious alternative remedy is available, is a self-imposed limitation, a rule of policy, convenience and discretion than a rule of law and there is no statutory absolute bar for this Court to proceed with the hearing 20 11. Relative grounds for refusal of registration. – (1) its identity with an earlier trade mark and similarity of goods or services Save as provided in Section 12, a trade mark shall not be registered if, because of— (a) covered by the trade mark; or (b) or services covered by the trade mark, its similarity to an earlier trade mark and the identity or similarity of the goods there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. LPA 407/2025 thereof. Reliance is placed upon the dictum of the Hon’ble Supreme Court in Commissioner of Income Tax & Ors. v Chhabil Das Agarwal21, wherein it has been held as under:- "11. Before discussing the fact proposition, we would notice the principle of law as laid down by this Court. It is settled law that non- entertainment of petitions under writ jurisdiction by the High Court when an efficacious alternative remedy is available is a rule of self- imposed limitation. It is essentially a rule of policy, convenience and discretion rather than a rule of law. Undoubtedly, it is within the discretion of the High Court to grant relief under Article 226 despite the existence of an alternative remedy. However, the High Court must not interfere if there is an adequate efficacious alternative remedy available to the petitioner and he has approached the High Court without availing the same unless he has made out an exceptional case warranting such interference or there exist sufficient grounds to invoke the extraordinary jurisdiction under Article 226. (See State of U.P. v Mohd. Nooh22, Titaghur Paper Mills Co. Ltd. v State of Orissa23, Harbanslal Sahnia v Indian Oil Corpn. Ltd.24 and State of H.P. v Gujarat Ambuja Cement Ltd.25)"

9. Reliance is also placed upon State of H.P. & Ors. v Gujarat Ambuja Cement Ltd. & Anr, wherein it has been held as under:- "17. We shall first deal with the plea regarding alternative remedy as raised by the appellant State. Except for a period when Article 226 was amended by the Constitution (Forty-second Amendment) Act, 1976, the power relating to alternative remedy has been considered to be a rule of self-imposed limitation. It is essentially a rule of policy, convenience and discretion and never a rule of law. Despite the existence of an alternative remedy it is within the jurisdiction of discretion of the High Court to grant relief under Article 226 of the Constitution. At the same time, it cannot be lost sight of that though the matter relating to an alternative remedy has nothing to do with the jurisdiction of the case, normally the High Court should not interfere if there is an adequate efficacious alternative