One-Month Notice Before Suo Motu Trademark Cancellation Is Mandatory: Delhi High Court

The Delhi High Court on Wednesday made it clear that if the Registrar decides to cancel or rectify a trademark registration on his own initiative, the registered owner must first be given at least one month's notice under Rule 100(1) of the Trade Marks Rules, 2017.

The Court emphasised that this is not a mere formality. The one-month notice requirement is mandatory and cannot be brushed aside by invoking principles such as estoppel.

A Division Bench of Justice C. Hari Shankar and Justice Om Prakash Shukla affirmed the Single Judge's ruling that had set aside the Deputy Registrar's order dated 15 December 2022. The Deputy Registrar had cancelled the respondent's trademark registration without granting the statutory one-month notice period to the proprietor

Landmark Crafts Limited had filed a Letters Patent Appeal against Romil Gupta, trading as Sohan Lal Gupta, after the Single Judge quashed the cancellation.

The dispute concerned a device mark made up of the letters “S”, “D”, “H” and “P”. The change in question involved repositioning the letters “S” and “D”, without altering the lettering itself.

The Single Judge had held that the reorientation of the letters “S” and “D” in the respondent's device mark did not amount to a “substantial alteration” under Rule 37 of the Rules and that the cancellation order was passed in violation of the mandatory statutory notice requirement under Rule 100(1).

Before the Division Bench, Landmark Crafts argued that the one-month period stipulated in Rule 100(1) should be treated as directory unless failure to comply resulted in prejudice. It also contended that, having not objected before the Deputy Registrar, the respondent was estopped from raising the issue.

Rejecting the prejudice-based argument, the Court held that the requirement of one month's notice under Rule 100(1) is clearly mandatory. Addressing the submission that absence of prejudice rendered the provision directory, the Bench observed:

“The plea that the stipulation of one month's notice, as stipulated in Rule 100(1), has, to our mind, necessarily to be regarded as mandatory. Mr. Sai Deepak submits that such a provision can be regarded as mandatory only if failure to comply with it results in prejudice. We fail to understand what greater prejudice could result than cancellation of the registration of the trade mark registered in favour of the respondent.”

The court further held that compliance with a mandatory statutory requirement cannot be defeated by estoppel. It added that the plea that the provision was not mandatory absent prejudice “has, to our mind, no legs to stand on.”

Relying on settled Supreme Court precedent that when a statute requires an act to be done in a particular manner, it must be done in that manner alone or not at all, the bench upheld the single judge's decision. It also agreed that the visual modification in the mark did not constitute a prohibited substantial alteration.

Accordingly, the appeal was dismissed, with the Court reiterating that its observations would not affect the pending rectification proceedings between the parties.