The Madras High Court has delivered a decisive affirmation of procedural fairness in trademark law, holding that once a registration certificate is granted, it cannot be revoked without affording the proprietor a fair hearing. This judgment reinforces the foundational principle that administrative action affecting vested rights must comply with the dictates of natural justice.
Background & Facts
The Dispute
The appellant, trading as Sakthi Trading Company, has been using the trademark "SAKTHI" for food products since 1977. In 1999, it applied for registration under Class 30 for rice and other goods. After due process, including advertisement in the Trademark Journal and no successful opposition, the Registrar granted registration under Certificate No.400179 on 15.07.2005. This registration was renewed periodically over nearly two decades.
Procedural History
- 15.07.2005: Registration granted under Certificate No.400179
- 09.02.2018: Respondent No.2 filed an opposition to the application
- 06.02.2023: Controller General issued a public notice listing applications for abandonment, including the appellant’s
- 20.02.2023 & 27.02.2023: Appellant filed representations seeking restoration
- 13.04.2023: Delhi High Court disposed of a writ petition after the Controller undertook to withdraw the public notices
- 09.05.2025: Registrar issued order abandoning the application for failure to file counter-statement
- 16.01.2026: Appeal filed under Section 91 of the Trade Marks Act
Relief Sought
The appellant sought restoration of its registration under Certificate No.400179, arguing that the cancellation was illegal, arbitrary, and conducted without notice or opportunity to be heard.
The Legal Issue
The central question was whether the Registrar could unilaterally cancel a previously granted trademark registration, restore the application to pending status, and then declare it abandoned for non-filing of a counter-statement - without ever notifying the registered proprietor.
Arguments Presented
For the Appellant
The appellant contended that the registration under Certificate No.400179 was a vested right, and its cancellation without notice violated Section 21(2) and the principles of natural justice. It argued that once a registration is granted, the only remedy available to an opponent is a petition for rectification under Section 57, not a revival of the application and initiation of opposition proceedings. The appellant relied on Bajaj Auto Ltd. v. TVS Motor Co. Ltd. to assert that procedural irregularities cannot validate substantive rights violations.
For the Respondent
The Registrar and the opponent contended that the opposition filed on 09.02.2018 was valid and that the appellant’s failure to file a counter-statement rendered the application abandoned under Section 21(2). They argued that the registration was erroneously granted and that the public notice merely corrected an administrative oversight. They further claimed a compromise existed, allowing the appellant to sell only in southern states, and suggested a fresh application as a remedy.
The Court's Analysis
The Court conducted a meticulous review of the statutory framework under the Trade Marks Act, 1999, and the sequence of administrative actions. It emphasized that registration under Section 20 confers a statutory right that cannot be extinguished by administrative fiat.
"The registration certificate issued on 15.07.2005 was not a mere administrative formality - it was a legal right acquired by the appellant after due process. To cancel it without notice is to treat a right as if it were a provisional status."
The Court rejected the Respondent’s argument that the opposition preceded registration. It noted that the opposition was filed in 2018, thirteen years after registration, and only after the Registrar had already issued the certificate and renewed it multiple times. The Court held that the Registrar’s act of cancelling the registration and reviving the application was a procedural nullity, as no provision in the Act permits such a reversal.
The Court further observed that the Delhi High Court’s order, wherein the Controller undertook to withdraw the public notices, rendered the entire abandonment process legally untenable. To proceed with the abandonment order after that undertaking was to act in bad faith and in violation of estoppel.
The Court concluded that the procedure adopted was arbitrary, violated Article 14 and Article 21, and contravened the doctrine of legitimate expectation. The Registrar’s conduct amounted to an abuse of power.
The Verdict
The appellant won. The Court held that once a trademark registration is granted and renewed, it cannot be unilaterally cancelled without notice or opportunity of hearing. The Registrar’s order abandoning the application was set aside, and the Court directed the Registrar to reinstate the registration under Certificate No.400179 within four weeks.
What This Means For Similar Cases
Registration Is Final Unless Set Aside by Statutory Process
- Practitioners must now treat a registered trademark as a vested right, not a provisional status
- Any challenge to registration must proceed via Section 57 rectification petition, not through revival of opposition
- Administrative bodies cannot circumvent statutory remedies by declaring registrations "abandoned"
Natural Justice Is Non-Negotiable in IP Administration
- Failure to serve notice before cancellation renders the action void ab initio
- Courts will not uphold administrative actions that violate audi alteram partem, even if the underlying opposition has merit
- Public notices listing registrations for cancellation without prior notice are legally defective
Estoppel Bars Contradictory Administrative Conduct
- When a government body undertakes to withdraw a notice before a court, it cannot later act contrary to that undertaking
- Practitioners should cite such undertakings as evidence of bad faith in administrative appeals
- This principle applies equally to patent, trademark, and design registries
