Prior User Prevails Over Subsequent Trademark Registration: Delhi High Court On ‘THUKRAL’ TM Dispute
In cases where procedural indulgence has already been granted multiple times, denial of further opportunity does not amount to violation of principles of natural justice
Justice Tejas Karia, Delhi High Court
The Delhi High Court has reiterated that statutory recognition of prior user under the Trade Marks Act, 1999 prevails over subsequent registration, and that the writ court, in exercise of jurisdiction under Article 226 of the Constitution of India, will not reappreciate evidence or interfere with factual findings of a specialised forum unless perversity or jurisdictional error is demonstrated.
The Bench noted that the petitioner offered no explanation for adopting the mark “THUKRAL” in 1995 despite findings that Respondent No. 2’s family had used the mark since 1954 in relation to identical goods.
The Court further held that a party who fails to file a counter statement despite repeated opportunities cannot later complain of non-consideration of its defence. Where proceedings are conducted on the basis of unrebutted pleadings and documents, and procedural indulgence has already been granted multiple times, denial of further opportunity does not amount to violation of principles of natural justice.
Justice Tejas Karia dismissed the writ petitions challenging an order passed by the Registrar of Trade Marks in rectification proceedings concerning the mark “THUKRAL” in respect of brooms falling in Class 21.
The Bench thus observed, “The Petitioner had ample opportunities to file the Counter Statement. These opportunities were not utilized responsibly. The writ jurisdiction under Article 226 of the Constitution cannot be invoked to remedy consequences arising from a party’s own procedural default. In the facts and circumstances of the present case, reopening the controversy between the Parties would defeat procedural discipline and undermine finality in proceedings concluded before Respondent No. 1 attained after due appreciation of the material placed on record and in adherence to the principles of natural justice”.
“As regards the adoption of the Mark ‘THUKRAL’, the Petitioner offered no explanation as to why the Mark ‘THUKRAL’ was adopted by the Petitioner in the year 1995. Respondent No. 1 has recorded a finding that Respondent No. 2 and their family were using the Mark ‘THUKRAL’ in relation to goods identical to that of the Petitioner since 1954. In these circumstances, and in the absence of any explanation for adoption of the Mark ‘THUKRAL’, Respondent No. 1 was justified in examining the issue of bona fides of the Petitioner and render a finding that the adoption of the Mark ‘THUKRAL’ by the Petitioner is mala fide and dishonest and that the claim of user by the Petitioner is tainted and the registration obtained by the Petitioner ‘is fraud by misrepresenting to the Registrar with the full knowledge that the representation was false’”, the Bench further noted.
Advocate Varun Dhingra appeared for the petitioner and Advocate Amit Jain appeared for the respondent.
In the matter, the petitioner, Rakesh Kumar Aggarwal, claimed adoption and use of the mark “THUKRAL” since 1995 and registration in 2003.
It was alleged that Respondent No. 2 had recently adopted an identical mark and initiated rectification proceedings only after receiving a legal notice in a civil suit. The petitioner contended that the respondent failed to establish prior use and that the impugned order was passed without affording him adequate opportunity to defend, owing to alleged lapses by his previous counsel in filing the counter statement.
The record, however, revealed that notices had been duly served and that the petitioner was granted repeated opportunities to file a counter statement under the applicable procedural rules. Orders of the Intellectual Property Appellate Board (later transferred) reflected adjournments sought, costs imposed, and extensions granted. Ultimately, the right to file a counter statement was closed, and the matter proceeded on merits.
On merits, the Registrar found that the respondent had established prior user of the mark dating back to the 1950s through family businesses, and that the petitioner had failed to substantiate continuous bona fide use post-registration.
Now, the High Court observed that Sections 27, 28, 34, and 47 of the Act collectively recognise the superiority of prior user and permit removal of a mark on grounds of non-use. The Court held that, in the absence of rebuttal evidence, the findings on prior user, non-use, and dishonest adoption could not be termed perverse.
Cause Title: Rakesh Kumar Aggarwal v. Intellectual Property Appellate Board And Anr. [Neutral Citation: 2026:DHC:1830]
Appearances:
Petitioner: Varun Dhingra & Khushi Gupta, Advocates.
Respondent: Amit Jain & Bhavesh, Advocates.