Madras High Court Quashes 'ELITE' Trademark Rejection, Directs Advertisement In Trade Marks Journal

On 30 October, the Madras High Court allowed an appeal filed by Chennai-based businessman Ramesh Bishnoi against the Registrar of Trade Marks' order dated 2 March 2026, refusing registration of his 'ELITE' device mark in Class 11, covering electrical and lighting-related goods.

Justice P.B. Balaji held that the Trade Marks Registry must consider the possibility of registration based on honest and concurrent use under Section 12 of the Trade Marks Act, 1999, before rejecting a mark on the grounds of similarity with earlier registrations.

The Bench observed that “the impugned order does not even address the possibility of registration of the appellant's mark under Section 12”, adding that the provision could be considered after the mark was advertised and objections, if any, were received.

Bishnoi claimed that he had been using the mark 'ELITE', along with the tagline “Light Up Your Life”, since 2009. His earlier application had been refused after the Registry cited a registration obtained by Saroj Sharma. He subsequently filed the application in question in February 2021.

Challenging the rejection, Bishnoi's counsel argued that the Registry had passed a summary, unreasoned order without properly considering the documents establishing prior use. She submitted that Section 12 permits registration in cases of honest concurrent use and that Sharma could oppose the mark after its advertisement.

The Registrar maintained that the mark was identical or similar to earlier registered marks for similar goods, creating a likelihood of confusion under Section 11(1). It also relied on the absence of a user affidavit.

The Court noted that the material on record showed Bishnoi had been using the mark since 2009. It also considered WhatsApp exchanges dating back to 2019 between Bishnoi and Sharma's husband, observing that Sharma could not claim ignorance of his use of the mark.

It further noted that although the parties exchanged legal notices in 2021, Sharma had not initiated proceedings for over five years. A suit had been filed recently but remained at the pre-suit mediation stage, with no interim injunction operating in her favour.

Further, Justice Balaji held that the Registry had prematurely invoked Section 11(1) without considering the applicability of Section 12, which permits registration in cases of honest concurrent use or other special circumstances.

The Bench also rejected the Registry's reliance on Sections 48 and 49, which deal with registered users, noting that Bishnoi claimed an independent right over the mark rather than seeking registration as a licensee.

Finding the rejection order “clearly perverse”, it set it aside and directed the Registry to advertise the mark in the Trade Marks Journal and decide the application in accordance with law after considering any objections.

Accordingly, the High Court allowed the appeal and remitted the application for fresh consideration.