The Madras High Court has reaffirmed that trademark rights cannot be established on the basis of fabricated evidence, even when prior use is claimed. In a significant ruling, the Court remanded a trademark opposition matter after finding serious doubts about the authenticity of tax invoices submitted to prove prior use, emphasizing that procedural fairness and evidentiary integrity are non-negotiable in intellectual property disputes.
Background & Facts
The Dispute
The appellant, Kailash Chand Surana, sole proprietor of M/s Kalptaru Enterprises, holds a registered trademark for "SNE NAKODA". The second respondent, Chanchal Kumar of M/s Balaji and Co, filed an application for registration of the same mark, prompting the appellant to file an opposition. The Registrar of Trademarks, however, allowed the second respondent’s application, holding that the latter was the prior user of the mark, relying on a series of tax invoices as proof.
Procedural History
- 2023: Appellant filed opposition (Opp. No. 1268958) against Application No. 6165513
- 22.07.2025: Registrar allowed the application, accepting tax invoices as proof of prior use
- 2026: Appellant filed appeal under Section 91 of the Trade Marks Act, 1999, challenging the Registrar’s order
- 08.01.2026: Court heard arguments and permitted production of original documents
- 05.02.2026: Appellant produced original tax invoices contradicting those submitted to the Registrar
Relief Sought
The appellant sought to set aside the Registrar’s order and reject the second respondent’s application outright, arguing that the invoices were forged and that the Registrar failed to address this critical issue.
The Legal Issue
The central question was whether the Registrar of Trademarks can rely on tax invoices to establish prior user rights when there is credible evidence suggesting forgery, and whether such allegations must be investigated before granting registration.
Arguments Presented
For the Appellant
The appellant’s counsel contended that the tax invoices relied upon by the second respondent were materially altered, with entries such as "SNE NAKODA" interpolated into genuine bills. The original invoices produced in court showed no such entries. The appellant argued that the Registrar erred in dismissing these allegations as frivolous without conducting any inquiry, violating principles of natural justice and the duty to examine evidence critically under Section 11 of the Trade Marks Act, 1999.
For the Respondent
The Registrar and the second respondent argued that the appellant had not initiated criminal proceedings under Section 340 of the Cr.P.C. for forgery, and therefore, the allegations were speculative and insufficient to invalidate the evidence. The Registrar maintained that the burden of proving forgery lay with the appellant and that the absence of a criminal complaint rendered the claim legally untenable.
The Court's Analysis
The Court rejected the Registrar’s reasoning that the absence of a Section 340 Cr.P.C. proceeding absolved it of the duty to examine document authenticity. It held that trademark adjudication is an administrative quasi-judicial function where the Registrar must act as a gatekeeper of truth, not a passive recipient of documents.
"A little from a lot tells the whole story or a sample is representative of the whole. Hence, such a serious allegation cannot be brushed aside."
The Court emphasized that the production of a single forged invoice raised a reasonable doubt about the entire set of documents. It noted that prior user rights under Section 29(4) and Section 11 of the Trade Marks Act are not absolute and must be grounded in genuine, verifiable use. The Registrar’s failure to scrutinize the documents, even in the face of palpable inconsistencies, amounted to a failure in adjudicative duty.
The Court further clarified that while criminal prosecution under Section 340 Cr.P.C. is one remedy, it is not a precondition for administrative authorities to assess the credibility of evidence. The Registrar, as a tribunal of first instance, has an independent obligation to evaluate the authenticity of documents submitted before it.
The Verdict
The appellant succeeded. The Madras High Court set aside the Registrar’s order and remanded the matter for a fresh inquiry. The Court directed the Registrar to conduct a detailed examination of all disputed tax invoices, summon the issuing parties, and determine their genuineness before passing final orders.
What This Means For Similar Cases
Document Authenticity Is Central to Prior Use Claims
- Practitioners must now rigorously verify and challenge the authenticity of invoices, bills, or advertisements submitted as proof of prior use
- Allegations of forgery cannot be dismissed merely because no criminal complaint has been filed
- Trademark authorities must conduct evidentiary hearings when document tampering is plausibly alleged
Registrar Has Independent Duty to Scrutinize Evidence
- The Registrar is not a mere registry but a quasi-judicial body bound by principles of natural justice
- Failure to investigate credible allegations of fraud renders orders unsustainable
- Courts will intervene where administrative bodies abdicate their duty to verify foundational evidence
Remand Is the Appropriate Remedy, Not Dismissal
- Courts will not outright reject applications based on unproven allegations of forgery
- The correct course is remand for proper inquiry, giving the accused party an opportunity to respond
- This ensures procedural fairness while safeguarding against fraudulent claims
