Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 28/02/2026
+ W.P.(C)-IPD 66/2021 & CM APPL. 3710/2017
RAKESH KUMAR AGGARWAL .....Petitioner
Versus
INTELLECTUAL PROERTY APPLELLATE BOARD
AND ANR .....Respondents
AND
+ W.P.(C)-IPD 69/2021 & CM APPL. 3712/2017
RAKESH KUMAR AGGARWAL .....Petitioner
Versus
INTELLECTUAL PROPERTY APPELLATE BOARD
AND ANR .....Respondents
Advocates who appeared in this case
For the Petitioner : Mr. Varun Dhingra & Ms. Khushi
Gupta, Advocates.
For the Respondents : Mr. Amit Jain & Mr. Bhavesh,
Advocates for Respondent No.2.
JUDGMENT
TEJAS KARIA, J
INTRODUCTION:
1. The present Petitions have been filed challenging the order dated
10.05.2016 (“ Impugned Order ”) passed by the Registrar of Trade Marks
(“ Registrar ”) in Rectification Application bearing No.
ORA/30/2013/TM/DEL filed by Respondent No. 2 in in W.P.(C)-IPD
66/2021 and Rectification Application bearing No. ORA/31/2013/TM/DEL
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 1 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
filed by Respondent No. 2 in W.P.(C)-IPD 69/2021 for rectification /
cancellation of the Mark ‘THUKRAL’ adopted by the Petitioner in respect of
brooms of all types included in Class 21 under Registration No. 1223066
from the Trade Marks Register (“ Rectification Applications ”).
SUBMISSIONS ON BEHALF OF THE PETITIONER:
2. The learned Counsel for the Petitioner made the following
submissions:
2.1 The Petitioner has been trading as Agarwal Enterprises, Ganesh
Ganj Kila, Bareilly, Uttar Pradesh, being sole proprietor thereof,
and a manufacturer, trader and merchant of all types brooms,
included in Class 21. The Petitioner has been carrying on his
business since 1995 using several trade marks including the Mark
‘THUKRAL’ in respect of the aforesaid goods registered under
registration certificate No. 1223066 dated 14.08.2003 in respect of
brooms of all types included in Class 21.
2.2 The Petitioner has given wide publicity to the Mark ‘THUKRAL’.
On account of superior quality of brooms and due to continuous use
of the Mark ‘THUKRAL’ for more than 17 years, the Petitioner’s
Mark ‘THUKRAL’ has acquired reputation and goodwill in public
and trade and the goods under the Mark ‘THUKRAL’ connote and
denote the goods and merchandise of the Petitioner and none else.
2.3 Respondent No. 2 has recently started the manufacturing and
marketing of brooms under the name ‘THUKRAL’ and has copied
the Mark ‘THUKRAL’ in respect of the goods namely brooms. The
Petitioner has been using the Mark ‘THUKRAL’ since 1995 while
Respondent No. 2 has allegedly started using the Mark
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 2 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
‘THUKRAL’ recently. The Petitioner is the prior user of the Mark
‘THUKRAL’ and therefore, Respondent No. 2 must be restrained
from using the Mark ‘THUKRAL’. Also, the invoices placed on
record by Respondent No. 2 clearly demonstrate that the firm name
adopted and used by Respondent No. 2 is ‘THAKRAL’ and not
‘THUKRAL’.
2.4 Respondent No. 2 is not the sole user of the Mark ‘THUKRAL’.
The name of ‘THUKRAL’ is not sole property of Respondent No.
2. There is no restriction to adopt the name ‘THUKRAL’ by
anyone. The Petitioner uses the name ‘THUKRAL’ as brand name
and applied for its registration as a trade mark in 2003. It is
Respondent No. 2’s claim that the Mark ‘THUKRAL’ was used
before 1996 by Respondent No. 2’s predecessor. However, the firm
M/s Thakral Stores of Respondent No. 2 has not claimed the Mark
‘THUKRAL’ in the survivorship and thus, the business of the firm
M/s Thakral Stores never extended under the Mark ‘THUKRAL’.
2.5 Respondent No. 2 is well aware of the Petitioner’s Mark
‘THUKRAL’ and copyright existing therein and has deliberately
with a dishonest and mala fide intention adopted the Petitioner’s
Mark ‘THUKRAL’ only to trade upon the Petitioner’s reputation
and to earn easy profits in an illegal manner for which Respondent
No. 2 is not entitled.
2.6 The Petitioner’s Mark ‘THUKRAL’ and Respondent No. 2’s Mark
‘THUKRAL’ and the artistic work therein are identical. The
Petitioner is much prior in use of the Mark ‘THUKRAL’.
Respondent No. 2 cannot be the proprietor / owner / originator of
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 3 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the artistic work in the Mark ‘THUKRAL’ since it is deceptively
similar to the Mark ‘THUKRAL’ of the Petitioner.
2.7 Respondent No. 2 applied for registration of the Mark
‘THUKRAL’ on 01.06.2012 after the application of the Petitioner
and further submitted that Respondent No. 2 was using the Mark
‘THUKRAL’ since 1983 and yet till then did not apply for
registration of the Mark ‘THUKRAL’. Respondent No. 2 failed to
show any document to prove that Respondent No. 2 was using the
Mark ‘THUKRAL’ since 1983. As per the invoices of Respondent
No. 2, the firm name of Respondent No. 2 is ‘Thukral Sons’ and not
‘THUKRAL’. As per the other bill filed by Respondent No. 2, the
brand names mentioned on it are ‘TAJ BRAND’, ‘SUN BRAND’,
‘T.S. TRADEMARK’, and ‘TB’, instead of ‘THUKRAL’.
2.8 Respondent No. 2 filed the logo as well as calendar to show use of
the Mark ‘THUKRAL’ having no evidentiary value as all the said
documents are forged and manipulated by Respondent No. 2.
Respondent No. 2 has also placed on record three bills, namely bill
No. 726 dated 20.04.1989, bill No. 797 dated 13.06.1989 and bill
No. 727 dated 21.11.1989. It is evident that these bills are forged
and manipulated, as bill No. 727 is shown to have been issued in
November 1989, whereas bill No. 797 had already been issued on
13.06.1989. On various invoices filed by Respondent No. 2, the bill
date is not mentioned. Respondent No. 2 has also filed documents
relating to assessment of Sales Tax, Income Tax, and copies of
bank passbooks, which do not show that Respondent No. 2 is using
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 4 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the Mark ‘THUKRAL’. Therefore, the documents filed by
Respondent No. 2 are not reliable.
2.9 On enquiries, it was also revealed to the Petitioner that Respondent
No. 2 has filed an application bearing No. 2341405 dated
01.06.2012 to register the Mark ‘THUKRAL’ in his name.
2.10 The Petitioner thereafter had also issued a notice dated 27.11.2012
to Respondent No. 2, inter alia , calling upon Respondent No. 2 to
desist forthwith from using the Mark ‘THUKRAL’ or any other
mark which is identical and / or deceptively similar and / or likely
to be confused with the Petitioner’s Mark ‘THUKRAL’; to
withdraw the application bearing No. 2341405 dated 01.06.2012;
and to furnish an undertaking in the draft to be approved by the
Petitioner that Respondent No. 2 will henceforth not use and / or
adopt any mark identical and / or deceptively similar to the
Petitioner’s Mark ‘THUKRAL’ with a liberty to publish the same
in two dailies at his cost within seven days from the receipt of the
notice dated 27.11.2012, which was duly served upon Respondent
No. 2. However, despite receipt of the notice dated 27.11.2012,
Respondent No. 2 did not comply with the same.
2.11 The Impugned Order is liable to be set aside on the ground that
Respondent No. 1 while passing the Impugned Order has failed to
consider the real facts of the present case wherein Respondent No.
2 had failed to show any bill prior to 2007 confirming that
Respondent No. 2 was not using the Mark ‘THUKRAL’ prior to the
year 2007.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 5 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
2.12 The registration of the Mark ‘THUKRAL’ is not against Section 9
or 11 of the Trade Marks Act, 1999 (“ Act ”). Respondent No. 2 filed
the Rectification Applications after receiving the notice in the suit
bearing No. CS 231/12 titled as Rakesh Kumar Vs. Sh. Kishan Lal
Thukral filed by the Petitioner against Respondent No. 2 before the
court of Additional District Judge, Tis Hazari Courts, Delhi
(“ Suit ”), and that this fact which was concealed by Respondent No.
2 in the Rectification Applications.
2.13 Respondent No. 2 had filed the Rectification Applications firstly
before the Intellectual Property Appellate Board Chennai
(“ Chennai Board ”) and thereafter, the Rectification Applications
were transferred to Respondent No. 1. It was only on 21.01.2016
when the counsel for the Petitioner appeared before Respondent
No. 1, that it was transpired that the Counter Statement in the
Rectification Application (“ Counter Statement ”) was not filed by
previous counsel of the Petitioner. Thereafter, Respondent No. 1
heard the arguments of counsel of Respondent No. 2 and the
Rectification Applications were reserved for orders, whereupon
Respondent No. 1 passed the Impugned Order without giving any
intimation to the Petitioner or his counsel.
2.14 The Petitioner engaged the previous counsel namely Shri M.
Madhu Prakash and also paid the legal fees to him, but he did not
file the Counter Statement before the Chennai Board and always on
the asking assured the Petitioner that he has already filed the
Counter Statement. Respondent No. 1 failed to consider that the
Petitioner should not suffer for the fault of his previous counsel.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 6 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
The counsel for the Petitioner also filed the additional affidavit
along with the additional grounds before Respondent No. 1 but the
counsel for the Petitioner was not heard by Respondent No. 1.
2.15 The Impugned Order is thus illegal, arbitrary and based on false and
baseless assumption adopted by Respondent No. 1, despite the fact
that Respondent No. 2 did not adopt the Mark ‘THUKRAL’ and are
not the prior users of the Mark ‘THUKRAL’ and Respondent No. 1
has wrongly considered the documents filed by Respondent No. 2.
2.16 Therefore, this Court may set aside the Impugned Order and direct
the Registrar to change the status of the Mark ‘THUKRAL’ to its
previous form, i.e. ‘Registered’.
SUBMISSIONS ON BEHALF OF RESPONDENT NO. 2:
3. The learned Counsel for Respondent No. 2 made the following
submissions:
3.1 Respondent No. 2 has been carrying on business of manufacturing
and marketing of brooms, dusters and other cognate and allied
goods. In the year 1957, Shri Krishan Lal Thukral and Late Shri
Darshan Lal Thukral formed a firm M/s Thukral Stores at Lahori
Gate, Delhi. The firm simultaneously adopted the Mark
‘THUKRAL’ for the goods brooms, dusters etc. The firm did
extensive business under the Mark ‘THUKRAL’. The firm M/s
Thukral Stores was dissolved in 1983 with the understanding that
both of its partners will use the trade name and / or Mark
‘THUKRAL’. In the year 1983, Shri Krishan Lal Thukral opened a
firm M/s KAMAL STORE having office at Lahori Gate, Naya
Bazar, Delhi and started using the Mark ‘THUKRAL’ for the goods
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 7 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
brooms, dusters, etc. In the year 1983, Shri Darshan Lal Thukral
opened two firms - Darshan Lal Thukral & Sons and Thukral Sons.
Shri Darshan Lal Thukral died in 1999. His son Shri Harsh Thukral
is now the sole proprietor of the firm Thukral Sons and is using the
Mark ‘THUKRAL’ for the goods brooms, dusters etc. The Mark
‘THUKRAL’ denotes and connotes the goods of Respondent No. 2.
3.2 The Petitioner has made a false averment in the Petitions that his
previous counsel assured him that the Counter statement has been
filed. As per the format of a counter statement namely Form 1-
Form of counter-statement provided under Rule 10 (1) / 23(3) of
the Intellectual Property Appellate Board Rules, 2003, a counter
statement cannot be filed by an Advocate independently but
requires verification by the client. Moreover, a counter statement is
to be accompanied with the fees of Rs. 200/- which is to be paid by
Demand Draft only. Naturally, the Petitioner would have made the
Demand Draft of Rs. 200/- in both the cases. If the Counter
Statement was filed, the Petitioner would have signed the Counter
Statement. No such averments of any kind has been made in the
Petitions.
3.3 Also, if the Counter Statement had been prepared, the Petitioner
would have retained the copy and produced the same. However, the
Petitioner never signed or verified the Counter Statement and has
made a false allegation against its previous counsel before the
Chennai Board.
3.4 The orders of the Chennai Board also mention that the Petitioner
had a non-caring attitude. The order file in the Rectification
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 8 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
Applications suggests that the Petitioner conducted the proceedings
before the Chennai Board in a casual manner. The Petitioner also
disobeyed the directions given by the Chennai Board from time to
time in the proceedings in the Rectification Applications. The
Chennai Board issued Form C on 21.02.2013. The Petitioner being
the respondent in the Rectification Applications was under an
obligation to file Counter Statement within two months of the
receipt of the Form C and copy of the Rectification Applications
i.e., till 21.04.2013. In the alternative, the Petitioner also could have
sought extension of time for filing the Counter Statement by filing
an appropriate request in Form 3 under Rule 14 of the Intellectual
Property Appellate Board (Procedure) Rules, 2003 (“ Rules ”).
3.5 The following orders were passed by the Chennai Board in the
Rectification Applications:
Order dated 24.11.2014:
“ Learned counsel for the applicant Mr. Amit Jain is present before
us today. The first respondent was already served notice. But today,
neither the first respondent nor his representative present. The
applicant has filed Miscellaneous Petitions seeking for relief of
fixing an early date of hearing particular in respect of stay
application. Considering the submission of the learned counsel for
the petitioner and also considering the relief sought for stay of
operation of the impugned trade mark, we are inclined to give early
date of hearing for stay application. Accordingly, call both the
matters on 21st January 2015. Registry shall send notice to the
parties. ”
Order dated 21.01.2015:
Mr. Ankit Bansal, in-turn and the representative of the counsel on
“
record for the respondents, on request and instructions, seeks
adjournment due to personal inconvenience of the learned counsel
on record, in respect of both the matters.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 9 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
2. Mr. Shailen Bhatia, the learned counsel for the applicants
appearing for both the matters strongly object the prayer submitting
that there is some urgency in the matter as a suit was filed by the
respondents before the Hon'ble District Court. In view of the above,
we direct the respondents that they shall undertake not to pursue the
said suit proceedings till the disposal of these applications.
Considering the said urgency we are inclined to call both the matters
February 2015. It is made clear that there will not be any
adjournment in respect of the impleaded prayer made by the learned
counsel for the applicants. ”
3.6 Thereafter, the Chennai Board passed the following order in the
Rectification Applications:
Order dated 17.02.2015
Mr. Shailen Bhatia, the learned counsel for the applicants
“
and Mr. Ankit Bansal, representative appearing on behalf of
the counsel for the respondent. The respondent seeking for the
relief of adjournment. It is pertinent to note that the respondent
is always represented by representative and not even a
counsel. It is seen that though the respondent seeking
adjournment and he has not filed any Form-5 before this
Bench. His practice is to be discouraged. It is seen that the
have know the procedure to file the application seeking for the
relief of permission to file an additional grounds but the
respondent failed to file Form-5. The fact remains that they
have informed the party during the last hearing on 21.01.2015
that no more adjournment would be granted. However,
considering the respondent is not represented by any counsel,
we are inclined to grant relief of adjournment as last chance by
imposing cost of Rs. 5000 to the applicant with a period of two
weeks, Accordingly, the matter is adjourned to the next date of
hearing on 12.05.2015. ”
The aforesaid order shows that in 2015, the Petitioner was informed
by the Chennai Board that no more adjournment will be granted
and costs were imposed on the Petitioner.
3.7 Thereafter, Respondent No. 1 further passed the following orders in
the Rectification Applications:
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 10 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
Order dated 18.11.2015
“ Mr. Shailen Bhatia, the learned counsel for the applicant is
present today in both these matters. It is seen that from the
records that the respondent was called absent on 24.11.2014
and 21.01.2015 Mr. Ankit Bansal who has not a counsel only
intern appeared representing the learned counsel on record
and sought adjournment on personal inconvenience. Again on
17.02.2015 the same intern representing the learned counsel
on record appeared and sought for adjournment. We have
granted the relief by imposing a cost of Rs. 5000 to be paid to
the applicant within a period of two weeks. Today Mr. Rupin
Singh, the learned counsel appearing without filing any
Vakalath and he would submit that he is not able to get NOC
from erstwhile counsel. Therefore, the fact remains, the
respondent is continuously not appearing either in person or
through any advocate and in these matters even counter is yet
to be filed. Added to the above said fact, it is also submitted
before us by the learned counsel for the applicant that even the
cost imposed of Rs. 5000/- by us is yet to be paid to the
applicant. Considering all these factors, we are constrained to
impose additional cost of Rs. 10,000/- to the respondent and it
is made clear the respondent to be paid cost of Rs. 15000/- in
total within a period of two weeks from today to the applicant.
It is further made clear that we are not inclined to grant any
further adjournment except granting the relief of adjournment
today as a last chance. Accordingly, call both the matter on
21/01/2016. The Registry is directed to issue notice to both the
parties along with the copy of the order. ”
Order dated 21.01.2016
“ Mr. Shailen Bhatia, the learned counsel for the applicants
and Mr. Varun Dhingra, the learned counsel for the
respondents in both the cases are present today.
2. Mr. Shailen Bhatia, the learned counsel for the applicants
would submit that the cost imposed by this Bench by the order
dated 18/11/2015 as well as imposed in the earlier order dated
17/02/2015 totaling to Rs. 15,000/- is not yet paid. It is
pertinent to note that only today the learned-counsel for the
respondent. Mr. Varun Dhingra appearing for the respondent
filed no objection letter from the erstwhile counsel for the
respondent. Though it is submitted by the learned counsel for
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 11 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the respondent that counter already filed before the Chennai
Registry of IPAB but our records reveal that there is no such
counter has been filed by the respondent till date and the
applicant also not served with any copy of the counter
statement. Considering all these factors, the respondent can
put forward his contention only after paying the cost imposed
by us. It is made very clear that the question of granting further
extension for filing counter statement not at all arises in view
of the continues conduct of the respondent, ignoring,
neglecting and disobeying the orders of this Board.
3.. It is pertinent to note that this Bench has shown so much
indulgence in granting the relief of extension of time for filing
counter statement for three times and lastly time extended upto
17/08/2013 as per order dated 11/09/2013 and thereafter the
respondent is not bothered to file any petition for further
extension of time. Such being the position, we are left with no
other alternative but to deny the right of the respondent herein
to file counter statement. As a result we have to proceed with
the matter on merits. Heard the arguments of the learned
counsel for the applicants and he undertakes to file the written
submissions. ”
Order dated 23.03.2016
“ In these matters we have heard the arguments of Mr. Shailen
Bhatia, the learned counsel for Applicant on 21.01.2016 at
New Delhi Circuit Bench Sitting. For clarification of certain
points post the matter for further hearing after issuing notice to
the Applicant’s Counsel. ”
3.8 The orders dated 24.11.2014, 21.01.2015, 17.02.2015, 18.11.2015
21.01.2016, 23.03.2016 passed by the Chennai Board and
Respondent No. 1 have been concealed by the Petitioner in the
present Petitions. In the order dated 21.01.2016, Respondent No. 1
specifically observed that ‘ records reveal that there is no such
counter has been filed by the respondent till date and the applicant
also not served with any copy of the counter statement ’. The entire
conduct of the Petitioner before the Chennai Board and Respondent
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 12 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
No. 1 ought to have been placed before this Court by the Petitioner.
Thus, it is evident that the present Petitions are based on falsehood
and that the Petitioner has no case.
3.9 The submission made by the learned Counsel for the Petitioner that
the counsel for the Petitioner filed the additional affidavit before
Respondent No. 1 is also wrong. No such additional affidavit was
filed by the Petitioner before Respondent No. 1. The first and
foremost thing that was required to be filed was the Counter
Statement which the Petitioner did not file and further never sought
any extension to file the Counter Statement from 2013 to 2016. The
Petitioner by deliberately not filing the Counter Statement cannot
have any reason to complain.
3.10 As per the settled law, a trade mark registration has to be kept alive
by user. Therefore, the Petitioner cannot presume the validity of the
registration of the Mark ‘THUKRAL’ for perpetuity. The Supreme
Court in Yishudas Trading vs. Vazier Sultan Tobacco Co. Ltd.,
Hyderabad and Another , AIR 1996 SC 2275 has observed that:
“ 45. … Looking to the Scheme of the registration of trade mark as
envisaged in the Trade Marks Act and the Rules framed
thereunder, it appears to us that registration of a trade mark
cannot be held to be absolute, perpetual and invariable under all
circumstances… ”
3.11 The Petitioner’s full name is Rakesh Kumar Aggarwal. The
Petitioner sought registration of the caste / surname ‘THUKRAL’
for goods namely brooms. Respondent No. 2 in both the Petitions
are closely related to each other and have surname Thukral and are
using their surname as Trade Mark.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 13 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
3.12 The Petitioner deliberately adopted the surname of Respondent No.
2 and sought registration of the Mark ‘THUKRAL’. The Petitioner
has not been able to provide any explanation for the adoption of the
surname Thukral before any forum. A bare perusal of the orders
passed in the Suit also shows that the Petitioner failed to lead
evidence in the Suit and after several opportunities, the right of the
Petitioner to file plaintiff’s evidence in the Suit was closed. It is a
matter of record that the Petitioner did not file a single document
showing its alleged user in the Suit. The Petitioner has no
explanation in respect of alleged adoption of the Mark
‘THUKRAL’ since he is Aggarwal by caste. The Petitioner has also
not filed any document to substantiate his alleged claim of user for
the Mark ‘THUKRAL’ from the year 1996. Section 47 of the Act
also provides for removal of a mark from register and imposition of
limitations on ground of non-use.
3.13 Reliance was placed on Indo-Pharma Pharmaceutical Works Pvt.
Ltd. vs. Farbenfabriken Bayer Aktiengesellschaft , 1976 ILR 1972
BOM, wherein it was held that:
“ What is meant by fraud in the context of Section 32(a) has
not been precisely defined. It might be a fraud for a person to
procure registration of a trade mark of which he knows he is
not entitled to claim the exclusive use, for instance, if he
knows that it is in use by another trader. If an applicant is
aware that there is another party who ought to be registered,
the assertion may be regarded as a deliberate attempt to
deceive the Registrar which would amount to fraud such as to
prevent registration in Part A from becoming conclusive after
seven years. ”
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 14 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
3.14 Therefore, the Petitioner has failed to point out any error in the
reasoning of the Impugned Order and thus, the present Petitions
merit dismissal with costs.
ANALYSIS AND FINDINGS:
4. At the outset, it is necessary to reiterate the limited scope of
interference in exercise of writ jurisdiction. This Court while exercising writ
jurisdiction under Article 226 of the Constitution of India (“ Constitution ”)
does not sit as an appellate forum over the findings of a specialised tribunal.
Interference in the present case is warranted only if the Impugned Order
suffers from perversity, violation of principles of natural justice, or is
unsupported by any material and a mere re-appreciation of evidence is
impermissible.
5. Prior to examining the merits of the present case, it would be
appropriate to consider whether the Petitioner was granted sufficient
opportunity to file the Counter Statement and present his defense in the
Rectification Applications.
6. The procedure under Rule 10(1) of the Rules (“ Rule 10 ”) provides
that:
“ 10. Filing of counter statement to the application or appeal and
other documents by the respondent. –
(1) After receipt of the application or appeal filed in the prescribed
Form 1, 2, or 3 of the Trade Marks (Applications and appeals to the
Intellectual Property Appellate Board) Rules, 2003, the respondent
may file three complete sets of counter statement in the prescribed
Form 1 under these rules containing the reply to the application or
appeal along with documents including evidences in the form of
affidavits, if any, in paper-book form before the Registry within two
months of the service of the notice on him of the filing of the
application or appeal. A copy of the counter statement shall be
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 15 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
served to the applicant or appellant by the respondent directly under
intimation to the Registry… ”
7. As per the procedure provided under Rule 10, a respondent, is required
to file a counter statement containing the reply to the application within two
months of the service of the notice on him of the filing of the application. The
order dated 24.11.2014 passed by the Chennai Board records that ‘ The first
respondent was already served, notice. But today, neither the first respondent
nor his representative present. ’ Thereafter, on 21.01.2015 and 17.02.2015,
adjournments were sought on behalf of the Petitioner in the Rectification
Applications. As regards the filing of the additional affidavit containing
additional grounds, the order dated 17.02.2015 passed by the Chennai Board
records that ‘ It is seen that the have know the procedure to file the
application seeking for the relief of permission to file an additional grounds
but the respondent failed to file Form-5. ’The order dated 18.11.2015 passed
by the Chennai Board further records that ‘ Therefore, the fact remains, the
respondent is continuously not appearing either in person or through any
advocate and in these matters even counter is yet to be filed. ’
8. Therefore, the orders passed by the Chennai Board shows that despite
service of notice and repeated opportunities, the Petitioner failed to comply
with the requirement under Rule 10 of filing the Counter Statement within
two months of the service of the notice of the Rectification Application. The
order dated 18.11.2015 passed by the Chennai Board records that no Counter
Statement had been filed as on 18.11.2015. The order dated 21.01.2016
passed by Respondent No. 1 also records that no Counter Statement had been
filed till that date and that repeated indulgence had already been granted,
showing the failure of the Petitioner to avail of opportunities granted to file
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 16 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the Counter Statement in the Rectification Applications thereby justifying
the denial of the Petitioner’s right to file the Counter Statement and the
decision taken by Respondent No. 1 to proceed on merits.
9. The explanation now offered by the Petitioner that the previous
counsel failed to file the Counter Statement is a bare assertion. No material is
placed on record to show that the Counter Statement was ever prepared,
verified, signed, or tendered. No copy of the verified and signed Counter
Statement has been produced by the Petitioner in the present Petitions to
support the explanation offered that the previous counsel failed to file the
Counter Statement after the Counter Statement was verified and signed by
the Petitioner.
10. The chronology of orders passed by the Chennai Board and
Respondent No. 1 placed on record further shows a consistent pattern of
non-appearance, adjournment requests through representatives,
non-compliance with costs imposed, and failure to seek extension to file the
Counter Statement in the manner prescribed by law. Respondent No. 1 vide
order dated 21.01.2016 has also recorded that ‘ this Bench has shown so much
indulgence in granting the relief of extension of time for filing counter
statement for three times and lastly time extended upto 17/08/2013 as per
order dated 11/09/2013 and thereafter the respondent is not bothered to file
any petition for further extension of time. ’ In these circumstances, denial of
further opportunity to the Petitioner to file the Counter Statement to the
Rectification Applications cannot be termed arbitrary or violative of natural
justice.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 17 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
11. On merits, Respondent No. 1 recorded the following findings in the
Impugned Order:
(i) The Mark ‘THUKRAL’ was adopted by the family of Respondent
No. 2 since 1954;
(ii) Respondent No. 2 before Respondent No. 1 had established prior
user; and
(iii) The Petitioner had not substantiated its own claim of user.
12. As regards the submission made by the Petitioner on the distinction
between ‘Thakral’ and ‘THUKRAL’, Respondent No. 2 has submitted that
the variation is merely a matter of transliteration of the same surname in
Hindi and English. It has further been submitted by Respondent No. 2 that
the proprietorship in the Mark ‘THUKRAL’ and its use in relation to the
business of brooms and allied goods traces back to the family concerns since
1954. Respondent No. 1 has taken note of this explanation in the Impugned
Order. Significantly, apart from drawing attention to the variation in spelling
of ‘Thakral’ and ‘THUKRAL’, the Petitioner has not placed any material to
show that the Impugned Order is vitiated by any infirmity warranting
interference under Article 226 of the Constitution.
13. It is a settled law that the scheme of the Act is such where rights of
prior user are recognised superior than that of the registration and even the
registered proprietor cannot disturb / interfere with the rights of prior user.
Section 34 of the Act provides that nothing in this Act shall entitle the
registered proprietor or registered user to interfere with the rights of prior
user. Conjoint reading of Sections 34, 27 and 28 of the Act shows that the
rights of registration are subject to Section 34 which can be seen from the
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 18 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
opening words of Section 28 of the Act which states ‘ Subject to the other
provisions of this Act, the registration of a trade mark shall, if valid, give to
the registered proprietor…. ’ and also the opening words of Section 34 which
states ‘ Nothing in this Act shall entitle the proprietor or a registered user of
registered trade mark to interfere…. ’ Thus, the statutory scheme recognises
removal on grounds of prior user and that registration is not absolute or
perpetual and remains subject to statutory conditions.
14. Respondent No. 1 in the Impugned Order has also recorded a finding
regarding non-use of the Mark ‘THUKRAL’ by the Petitioner post
registration on 14.08.2003. Under Section 47 of the Act, a registered mark is
liable to be removed if it is shown that there has been no bona fide use for the
statutory period. The finding returned by Respondent No. 1 is based on the
material placed on record in the Rectification Applications and the absence
of any rebuttal from the Petitioner, who failed to file a Counter Statement to
the Rectification Applications.
15. 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
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 19 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
Petitioner ‘ is fraud by misrepresenting to the Registrar with the full
knowledge that the representation was false ’.
16. The Rectification Applications were thus allowed on the grounds of
prior user, non-use of the Mark ‘THUKRAL’ by the Petitioner from the date
of grant of registration certificate on 14.08.2003, non-rebuttal of Respondent
No. 2’s submissions before Respondent No. 1, and the finding of dishonest
adoption. These are findings of fact within the domain of Respondent No. 1
based on the documents submitted along with the Rectification Applications
and pleadings filed by Respondent No. 2 before Respondent No. 1.
17. The Petitioner has also submitted before this Court that Respondent
No. 1 did not consider factual aspects regarding certain invoices and alleged
inconsistencies therein. However, in the absence of a Counter Statement,
despite repeated opportunities granted to the Petitioner to file the same,
Respondent No. 1 cannot be faulted for proceeding on the unrebutted
documents and pleadings on record. A party that deliberately chooses not to
contest at the appropriate stage cannot subsequently complain of
non-consideration.
18. It is a settled law that a writ jurisdiction cannot be exercised for
reappreciating the evidence and arrival of findings of facts unless the
authority which passed the impugned order does not have jurisdiction to
render the finding or has acted in excess of its jurisdiction or the finding is
patently perverse, and that unless there is any grave miscarriage of justice or
flagrant violation of law calling for intervention it is not for the High Court
under Articles 226 of the Constitution to interfere. If there is evidence on
record on which a finding can be arrived at and if the court has not
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 20 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
misdirected itself either on law or on fact, then in exercise of the power under
Article 226 of the Constitution, the High Court should refrain from
interfering with such findings made by the appropriate authorities.
19. In the present case, the Impugned Order refers to the pleadings and
documents placed on record. The conclusions arrived at by Respondent No. 1
are evidently not arbitrary. The Impugned Order does not disclose any
jurisdictional error, procedural impropriety, or perversity warranting
interference under Article 226 of the Constitution.
20. 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.
21. In view of the above, there is no ground to interfere with the Impugned
Order dated 10.05.2016 passed by Respondent No. 1. As a result the present
Petitions are hereby dismissed. Pending applications, if any, stand disposed
of. There shall be no order as to costs.
TEJAS KARIA, J
FEBRUARY 28, 2026
‘HK’
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 21 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
% Judgment delivered on: 28/02/2026
+ W.P.(C)-IPD 66/2021 & CM APPL. 3710/2017
RAKESH KUMAR AGGARWAL .....Petitioner
Versus
INTELLECTUAL PROERTY APPLELLATE BOARD
AND ANR .....Respondents
AND
+ W.P.(C)-IPD 69/2021 & CM APPL. 3712/2017
RAKESH KUMAR AGGARWAL .....Petitioner
Versus
INTELLECTUAL PROPERTY APPELLATE BOARD
AND ANR .....Respondents
Advocates who appeared in this case
For the Petitioner : Mr. Varun Dhingra & Ms. Khushi
Gupta, Advocates.
For the Respondents : Mr. Amit Jain & Mr. Bhavesh,
Advocates for Respondent No.2.
JUDGMENT
TEJAS KARIA, J
INTRODUCTION:
1. The present Petitions have been filed challenging the order dated
10.05.2016 (“ Impugned Order ”) passed by the Registrar of Trade Marks
(“ Registrar ”) in Rectification Application bearing No.
ORA/30/2013/TM/DEL filed by Respondent No. 2 in in W.P.(C)-IPD
66/2021 and Rectification Application bearing No. ORA/31/2013/TM/DEL
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 1 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
filed by Respondent No. 2 in W.P.(C)-IPD 69/2021 for rectification /
cancellation of the Mark ‘THUKRAL’ adopted by the Petitioner in respect of
brooms of all types included in Class 21 under Registration No. 1223066
from the Trade Marks Register (“ Rectification Applications ”).
SUBMISSIONS ON BEHALF OF THE PETITIONER:
2. The learned Counsel for the Petitioner made the following
submissions:
2.1 The Petitioner has been trading as Agarwal Enterprises, Ganesh
Ganj Kila, Bareilly, Uttar Pradesh, being sole proprietor thereof,
and a manufacturer, trader and merchant of all types brooms,
included in Class 21. The Petitioner has been carrying on his
business since 1995 using several trade marks including the Mark
‘THUKRAL’ in respect of the aforesaid goods registered under
registration certificate No. 1223066 dated 14.08.2003 in respect of
brooms of all types included in Class 21.
2.2 The Petitioner has given wide publicity to the Mark ‘THUKRAL’.
On account of superior quality of brooms and due to continuous use
of the Mark ‘THUKRAL’ for more than 17 years, the Petitioner’s
Mark ‘THUKRAL’ has acquired reputation and goodwill in public
and trade and the goods under the Mark ‘THUKRAL’ connote and
denote the goods and merchandise of the Petitioner and none else.
2.3 Respondent No. 2 has recently started the manufacturing and
marketing of brooms under the name ‘THUKRAL’ and has copied
the Mark ‘THUKRAL’ in respect of the goods namely brooms. The
Petitioner has been using the Mark ‘THUKRAL’ since 1995 while
Respondent No. 2 has allegedly started using the Mark
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 2 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
‘THUKRAL’ recently. The Petitioner is the prior user of the Mark
‘THUKRAL’ and therefore, Respondent No. 2 must be restrained
from using the Mark ‘THUKRAL’. Also, the invoices placed on
record by Respondent No. 2 clearly demonstrate that the firm name
adopted and used by Respondent No. 2 is ‘THAKRAL’ and not
‘THUKRAL’.
2.4 Respondent No. 2 is not the sole user of the Mark ‘THUKRAL’.
The name of ‘THUKRAL’ is not sole property of Respondent No.
2. There is no restriction to adopt the name ‘THUKRAL’ by
anyone. The Petitioner uses the name ‘THUKRAL’ as brand name
and applied for its registration as a trade mark in 2003. It is
Respondent No. 2’s claim that the Mark ‘THUKRAL’ was used
before 1996 by Respondent No. 2’s predecessor. However, the firm
M/s Thakral Stores of Respondent No. 2 has not claimed the Mark
‘THUKRAL’ in the survivorship and thus, the business of the firm
M/s Thakral Stores never extended under the Mark ‘THUKRAL’.
2.5 Respondent No. 2 is well aware of the Petitioner’s Mark
‘THUKRAL’ and copyright existing therein and has deliberately
with a dishonest and mala fide intention adopted the Petitioner’s
Mark ‘THUKRAL’ only to trade upon the Petitioner’s reputation
and to earn easy profits in an illegal manner for which Respondent
No. 2 is not entitled.
2.6 The Petitioner’s Mark ‘THUKRAL’ and Respondent No. 2’s Mark
‘THUKRAL’ and the artistic work therein are identical. The
Petitioner is much prior in use of the Mark ‘THUKRAL’.
Respondent No. 2 cannot be the proprietor / owner / originator of
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 3 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the artistic work in the Mark ‘THUKRAL’ since it is deceptively
similar to the Mark ‘THUKRAL’ of the Petitioner.
2.7 Respondent No. 2 applied for registration of the Mark
‘THUKRAL’ on 01.06.2012 after the application of the Petitioner
and further submitted that Respondent No. 2 was using the Mark
‘THUKRAL’ since 1983 and yet till then did not apply for
registration of the Mark ‘THUKRAL’. Respondent No. 2 failed to
show any document to prove that Respondent No. 2 was using the
Mark ‘THUKRAL’ since 1983. As per the invoices of Respondent
No. 2, the firm name of Respondent No. 2 is ‘Thukral Sons’ and not
‘THUKRAL’. As per the other bill filed by Respondent No. 2, the
brand names mentioned on it are ‘TAJ BRAND’, ‘SUN BRAND’,
‘T.S. TRADEMARK’, and ‘TB’, instead of ‘THUKRAL’.
2.8 Respondent No. 2 filed the logo as well as calendar to show use of
the Mark ‘THUKRAL’ having no evidentiary value as all the said
documents are forged and manipulated by Respondent No. 2.
Respondent No. 2 has also placed on record three bills, namely bill
No. 726 dated 20.04.1989, bill No. 797 dated 13.06.1989 and bill
No. 727 dated 21.11.1989. It is evident that these bills are forged
and manipulated, as bill No. 727 is shown to have been issued in
November 1989, whereas bill No. 797 had already been issued on
13.06.1989. On various invoices filed by Respondent No. 2, the bill
date is not mentioned. Respondent No. 2 has also filed documents
relating to assessment of Sales Tax, Income Tax, and copies of
bank passbooks, which do not show that Respondent No. 2 is using
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 4 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the Mark ‘THUKRAL’. Therefore, the documents filed by
Respondent No. 2 are not reliable.
2.9 On enquiries, it was also revealed to the Petitioner that Respondent
No. 2 has filed an application bearing No. 2341405 dated
01.06.2012 to register the Mark ‘THUKRAL’ in his name.
2.10 The Petitioner thereafter had also issued a notice dated 27.11.2012
to Respondent No. 2, inter alia , calling upon Respondent No. 2 to
desist forthwith from using the Mark ‘THUKRAL’ or any other
mark which is identical and / or deceptively similar and / or likely
to be confused with the Petitioner’s Mark ‘THUKRAL’; to
withdraw the application bearing No. 2341405 dated 01.06.2012;
and to furnish an undertaking in the draft to be approved by the
Petitioner that Respondent No. 2 will henceforth not use and / or
adopt any mark identical and / or deceptively similar to the
Petitioner’s Mark ‘THUKRAL’ with a liberty to publish the same
in two dailies at his cost within seven days from the receipt of the
notice dated 27.11.2012, which was duly served upon Respondent
No. 2. However, despite receipt of the notice dated 27.11.2012,
Respondent No. 2 did not comply with the same.
2.11 The Impugned Order is liable to be set aside on the ground that
Respondent No. 1 while passing the Impugned Order has failed to
consider the real facts of the present case wherein Respondent No.
2 had failed to show any bill prior to 2007 confirming that
Respondent No. 2 was not using the Mark ‘THUKRAL’ prior to the
year 2007.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 5 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
2.12 The registration of the Mark ‘THUKRAL’ is not against Section 9
or 11 of the Trade Marks Act, 1999 (“ Act ”). Respondent No. 2 filed
the Rectification Applications after receiving the notice in the suit
bearing No. CS 231/12 titled as Rakesh Kumar Vs. Sh. Kishan Lal
Thukral filed by the Petitioner against Respondent No. 2 before the
court of Additional District Judge, Tis Hazari Courts, Delhi
(“ Suit ”), and that this fact which was concealed by Respondent No.
2 in the Rectification Applications.
2.13 Respondent No. 2 had filed the Rectification Applications firstly
before the Intellectual Property Appellate Board Chennai
(“ Chennai Board ”) and thereafter, the Rectification Applications
were transferred to Respondent No. 1. It was only on 21.01.2016
when the counsel for the Petitioner appeared before Respondent
No. 1, that it was transpired that the Counter Statement in the
Rectification Application (“ Counter Statement ”) was not filed by
previous counsel of the Petitioner. Thereafter, Respondent No. 1
heard the arguments of counsel of Respondent No. 2 and the
Rectification Applications were reserved for orders, whereupon
Respondent No. 1 passed the Impugned Order without giving any
intimation to the Petitioner or his counsel.
2.14 The Petitioner engaged the previous counsel namely Shri M.
Madhu Prakash and also paid the legal fees to him, but he did not
file the Counter Statement before the Chennai Board and always on
the asking assured the Petitioner that he has already filed the
Counter Statement. Respondent No. 1 failed to consider that the
Petitioner should not suffer for the fault of his previous counsel.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 6 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
The counsel for the Petitioner also filed the additional affidavit
along with the additional grounds before Respondent No. 1 but the
counsel for the Petitioner was not heard by Respondent No. 1.
2.15 The Impugned Order is thus illegal, arbitrary and based on false and
baseless assumption adopted by Respondent No. 1, despite the fact
that Respondent No. 2 did not adopt the Mark ‘THUKRAL’ and are
not the prior users of the Mark ‘THUKRAL’ and Respondent No. 1
has wrongly considered the documents filed by Respondent No. 2.
2.16 Therefore, this Court may set aside the Impugned Order and direct
the Registrar to change the status of the Mark ‘THUKRAL’ to its
previous form, i.e. ‘Registered’.
SUBMISSIONS ON BEHALF OF RESPONDENT NO. 2:
3. The learned Counsel for Respondent No. 2 made the following
submissions:
3.1 Respondent No. 2 has been carrying on business of manufacturing
and marketing of brooms, dusters and other cognate and allied
goods. In the year 1957, Shri Krishan Lal Thukral and Late Shri
Darshan Lal Thukral formed a firm M/s Thukral Stores at Lahori
Gate, Delhi. The firm simultaneously adopted the Mark
‘THUKRAL’ for the goods brooms, dusters etc. The firm did
extensive business under the Mark ‘THUKRAL’. The firm M/s
Thukral Stores was dissolved in 1983 with the understanding that
both of its partners will use the trade name and / or Mark
‘THUKRAL’. In the year 1983, Shri Krishan Lal Thukral opened a
firm M/s KAMAL STORE having office at Lahori Gate, Naya
Bazar, Delhi and started using the Mark ‘THUKRAL’ for the goods
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 7 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
brooms, dusters, etc. In the year 1983, Shri Darshan Lal Thukral
opened two firms - Darshan Lal Thukral & Sons and Thukral Sons.
Shri Darshan Lal Thukral died in 1999. His son Shri Harsh Thukral
is now the sole proprietor of the firm Thukral Sons and is using the
Mark ‘THUKRAL’ for the goods brooms, dusters etc. The Mark
‘THUKRAL’ denotes and connotes the goods of Respondent No. 2.
3.2 The Petitioner has made a false averment in the Petitions that his
previous counsel assured him that the Counter statement has been
filed. As per the format of a counter statement namely Form 1-
Form of counter-statement provided under Rule 10 (1) / 23(3) of
the Intellectual Property Appellate Board Rules, 2003, a counter
statement cannot be filed by an Advocate independently but
requires verification by the client. Moreover, a counter statement is
to be accompanied with the fees of Rs. 200/- which is to be paid by
Demand Draft only. Naturally, the Petitioner would have made the
Demand Draft of Rs. 200/- in both the cases. If the Counter
Statement was filed, the Petitioner would have signed the Counter
Statement. No such averments of any kind has been made in the
Petitions.
3.3 Also, if the Counter Statement had been prepared, the Petitioner
would have retained the copy and produced the same. However, the
Petitioner never signed or verified the Counter Statement and has
made a false allegation against its previous counsel before the
Chennai Board.
3.4 The orders of the Chennai Board also mention that the Petitioner
had a non-caring attitude. The order file in the Rectification
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 8 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
Applications suggests that the Petitioner conducted the proceedings
before the Chennai Board in a casual manner. The Petitioner also
disobeyed the directions given by the Chennai Board from time to
time in the proceedings in the Rectification Applications. The
Chennai Board issued Form C on 21.02.2013. The Petitioner being
the respondent in the Rectification Applications was under an
obligation to file Counter Statement within two months of the
receipt of the Form C and copy of the Rectification Applications
i.e., till 21.04.2013. In the alternative, the Petitioner also could have
sought extension of time for filing the Counter Statement by filing
an appropriate request in Form 3 under Rule 14 of the Intellectual
Property Appellate Board (Procedure) Rules, 2003 (“ Rules ”).
3.5 The following orders were passed by the Chennai Board in the
Rectification Applications:
Order dated 24.11.2014:
“ Learned counsel for the applicant Mr. Amit Jain is present before
us today. The first respondent was already served notice. But today,
neither the first respondent nor his representative present. The
applicant has filed Miscellaneous Petitions seeking for relief of
fixing an early date of hearing particular in respect of stay
application. Considering the submission of the learned counsel for
the petitioner and also considering the relief sought for stay of
operation of the impugned trade mark, we are inclined to give early
date of hearing for stay application. Accordingly, call both the
matters on 21st January 2015. Registry shall send notice to the
parties. ”
Order dated 21.01.2015:
Mr. Ankit Bansal, in-turn and the representative of the counsel on
“
record for the respondents, on request and instructions, seeks
adjournment due to personal inconvenience of the learned counsel
on record, in respect of both the matters.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 9 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
2. Mr. Shailen Bhatia, the learned counsel for the applicants
appearing for both the matters strongly object the prayer submitting
that there is some urgency in the matter as a suit was filed by the
respondents before the Hon'ble District Court. In view of the above,
we direct the respondents that they shall undertake not to pursue the
said suit proceedings till the disposal of these applications.
Considering the said urgency we are inclined to call both the matters
February 2015. It is made clear that there will not be any
adjournment in respect of the impleaded prayer made by the learned
counsel for the applicants. ”
3.6 Thereafter, the Chennai Board passed the following order in the
Rectification Applications:
Order dated 17.02.2015
Mr. Shailen Bhatia, the learned counsel for the applicants
“
and Mr. Ankit Bansal, representative appearing on behalf of
the counsel for the respondent. The respondent seeking for the
relief of adjournment. It is pertinent to note that the respondent
is always represented by representative and not even a
counsel. It is seen that though the respondent seeking
adjournment and he has not filed any Form-5 before this
Bench. His practice is to be discouraged. It is seen that the
have know the procedure to file the application seeking for the
relief of permission to file an additional grounds but the
respondent failed to file Form-5. The fact remains that they
have informed the party during the last hearing on 21.01.2015
that no more adjournment would be granted. However,
considering the respondent is not represented by any counsel,
we are inclined to grant relief of adjournment as last chance by
imposing cost of Rs. 5000 to the applicant with a period of two
weeks, Accordingly, the matter is adjourned to the next date of
hearing on 12.05.2015. ”
The aforesaid order shows that in 2015, the Petitioner was informed
by the Chennai Board that no more adjournment will be granted
and costs were imposed on the Petitioner.
3.7 Thereafter, Respondent No. 1 further passed the following orders in
the Rectification Applications:
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 10 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
Order dated 18.11.2015
“ Mr. Shailen Bhatia, the learned counsel for the applicant is
present today in both these matters. It is seen that from the
records that the respondent was called absent on 24.11.2014
and 21.01.2015 Mr. Ankit Bansal who has not a counsel only
intern appeared representing the learned counsel on record
and sought adjournment on personal inconvenience. Again on
17.02.2015 the same intern representing the learned counsel
on record appeared and sought for adjournment. We have
granted the relief by imposing a cost of Rs. 5000 to be paid to
the applicant within a period of two weeks. Today Mr. Rupin
Singh, the learned counsel appearing without filing any
Vakalath and he would submit that he is not able to get NOC
from erstwhile counsel. Therefore, the fact remains, the
respondent is continuously not appearing either in person or
through any advocate and in these matters even counter is yet
to be filed. Added to the above said fact, it is also submitted
before us by the learned counsel for the applicant that even the
cost imposed of Rs. 5000/- by us is yet to be paid to the
applicant. Considering all these factors, we are constrained to
impose additional cost of Rs. 10,000/- to the respondent and it
is made clear the respondent to be paid cost of Rs. 15000/- in
total within a period of two weeks from today to the applicant.
It is further made clear that we are not inclined to grant any
further adjournment except granting the relief of adjournment
today as a last chance. Accordingly, call both the matter on
21/01/2016. The Registry is directed to issue notice to both the
parties along with the copy of the order. ”
Order dated 21.01.2016
“ Mr. Shailen Bhatia, the learned counsel for the applicants
and Mr. Varun Dhingra, the learned counsel for the
respondents in both the cases are present today.
2. Mr. Shailen Bhatia, the learned counsel for the applicants
would submit that the cost imposed by this Bench by the order
dated 18/11/2015 as well as imposed in the earlier order dated
17/02/2015 totaling to Rs. 15,000/- is not yet paid. It is
pertinent to note that only today the learned-counsel for the
respondent. Mr. Varun Dhingra appearing for the respondent
filed no objection letter from the erstwhile counsel for the
respondent. Though it is submitted by the learned counsel for
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 11 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the respondent that counter already filed before the Chennai
Registry of IPAB but our records reveal that there is no such
counter has been filed by the respondent till date and the
applicant also not served with any copy of the counter
statement. Considering all these factors, the respondent can
put forward his contention only after paying the cost imposed
by us. It is made very clear that the question of granting further
extension for filing counter statement not at all arises in view
of the continues conduct of the respondent, ignoring,
neglecting and disobeying the orders of this Board.
3.. It is pertinent to note that this Bench has shown so much
indulgence in granting the relief of extension of time for filing
counter statement for three times and lastly time extended upto
17/08/2013 as per order dated 11/09/2013 and thereafter the
respondent is not bothered to file any petition for further
extension of time. Such being the position, we are left with no
other alternative but to deny the right of the respondent herein
to file counter statement. As a result we have to proceed with
the matter on merits. Heard the arguments of the learned
counsel for the applicants and he undertakes to file the written
submissions. ”
Order dated 23.03.2016
“ In these matters we have heard the arguments of Mr. Shailen
Bhatia, the learned counsel for Applicant on 21.01.2016 at
New Delhi Circuit Bench Sitting. For clarification of certain
points post the matter for further hearing after issuing notice to
the Applicant’s Counsel. ”
3.8 The orders dated 24.11.2014, 21.01.2015, 17.02.2015, 18.11.2015
21.01.2016, 23.03.2016 passed by the Chennai Board and
Respondent No. 1 have been concealed by the Petitioner in the
present Petitions. In the order dated 21.01.2016, Respondent No. 1
specifically observed that ‘ records reveal that there is no such
counter has been filed by the respondent till date and the applicant
also not served with any copy of the counter statement ’. The entire
conduct of the Petitioner before the Chennai Board and Respondent
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 12 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
No. 1 ought to have been placed before this Court by the Petitioner.
Thus, it is evident that the present Petitions are based on falsehood
and that the Petitioner has no case.
3.9 The submission made by the learned Counsel for the Petitioner that
the counsel for the Petitioner filed the additional affidavit before
Respondent No. 1 is also wrong. No such additional affidavit was
filed by the Petitioner before Respondent No. 1. The first and
foremost thing that was required to be filed was the Counter
Statement which the Petitioner did not file and further never sought
any extension to file the Counter Statement from 2013 to 2016. The
Petitioner by deliberately not filing the Counter Statement cannot
have any reason to complain.
3.10 As per the settled law, a trade mark registration has to be kept alive
by user. Therefore, the Petitioner cannot presume the validity of the
registration of the Mark ‘THUKRAL’ for perpetuity. The Supreme
Court in Yishudas Trading vs. Vazier Sultan Tobacco Co. Ltd.,
Hyderabad and Another , AIR 1996 SC 2275 has observed that:
“ 45. … Looking to the Scheme of the registration of trade mark as
envisaged in the Trade Marks Act and the Rules framed
thereunder, it appears to us that registration of a trade mark
cannot be held to be absolute, perpetual and invariable under all
circumstances… ”
3.11 The Petitioner’s full name is Rakesh Kumar Aggarwal. The
Petitioner sought registration of the caste / surname ‘THUKRAL’
for goods namely brooms. Respondent No. 2 in both the Petitions
are closely related to each other and have surname Thukral and are
using their surname as Trade Mark.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 13 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
3.12 The Petitioner deliberately adopted the surname of Respondent No.
2 and sought registration of the Mark ‘THUKRAL’. The Petitioner
has not been able to provide any explanation for the adoption of the
surname Thukral before any forum. A bare perusal of the orders
passed in the Suit also shows that the Petitioner failed to lead
evidence in the Suit and after several opportunities, the right of the
Petitioner to file plaintiff’s evidence in the Suit was closed. It is a
matter of record that the Petitioner did not file a single document
showing its alleged user in the Suit. The Petitioner has no
explanation in respect of alleged adoption of the Mark
‘THUKRAL’ since he is Aggarwal by caste. The Petitioner has also
not filed any document to substantiate his alleged claim of user for
the Mark ‘THUKRAL’ from the year 1996. Section 47 of the Act
also provides for removal of a mark from register and imposition of
limitations on ground of non-use.
3.13 Reliance was placed on Indo-Pharma Pharmaceutical Works Pvt.
Ltd. vs. Farbenfabriken Bayer Aktiengesellschaft , 1976 ILR 1972
BOM, wherein it was held that:
“ What is meant by fraud in the context of Section 32(a) has
not been precisely defined. It might be a fraud for a person to
procure registration of a trade mark of which he knows he is
not entitled to claim the exclusive use, for instance, if he
knows that it is in use by another trader. If an applicant is
aware that there is another party who ought to be registered,
the assertion may be regarded as a deliberate attempt to
deceive the Registrar which would amount to fraud such as to
prevent registration in Part A from becoming conclusive after
seven years. ”
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 14 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
3.14 Therefore, the Petitioner has failed to point out any error in the
reasoning of the Impugned Order and thus, the present Petitions
merit dismissal with costs.
ANALYSIS AND FINDINGS:
4. At the outset, it is necessary to reiterate the limited scope of
interference in exercise of writ jurisdiction. This Court while exercising writ
jurisdiction under Article 226 of the Constitution of India (“ Constitution ”)
does not sit as an appellate forum over the findings of a specialised tribunal.
Interference in the present case is warranted only if the Impugned Order
suffers from perversity, violation of principles of natural justice, or is
unsupported by any material and a mere re-appreciation of evidence is
impermissible.
5. Prior to examining the merits of the present case, it would be
appropriate to consider whether the Petitioner was granted sufficient
opportunity to file the Counter Statement and present his defense in the
Rectification Applications.
6. The procedure under Rule 10(1) of the Rules (“ Rule 10 ”) provides
that:
“ 10. Filing of counter statement to the application or appeal and
other documents by the respondent. –
(1) After receipt of the application or appeal filed in the prescribed
Form 1, 2, or 3 of the Trade Marks (Applications and appeals to the
Intellectual Property Appellate Board) Rules, 2003, the respondent
may file three complete sets of counter statement in the prescribed
Form 1 under these rules containing the reply to the application or
appeal along with documents including evidences in the form of
affidavits, if any, in paper-book form before the Registry within two
months of the service of the notice on him of the filing of the
application or appeal. A copy of the counter statement shall be
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 15 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
served to the applicant or appellant by the respondent directly under
intimation to the Registry… ”
7. As per the procedure provided under Rule 10, a respondent, is required
to file a counter statement containing the reply to the application within two
months of the service of the notice on him of the filing of the application. The
order dated 24.11.2014 passed by the Chennai Board records that ‘ The first
respondent was already served, notice. But today, neither the first respondent
nor his representative present. ’ Thereafter, on 21.01.2015 and 17.02.2015,
adjournments were sought on behalf of the Petitioner in the Rectification
Applications. As regards the filing of the additional affidavit containing
additional grounds, the order dated 17.02.2015 passed by the Chennai Board
records that ‘ It is seen that the have know the procedure to file the
application seeking for the relief of permission to file an additional grounds
but the respondent failed to file Form-5. ’The order dated 18.11.2015 passed
by the Chennai Board further records that ‘ Therefore, the fact remains, the
respondent is continuously not appearing either in person or through any
advocate and in these matters even counter is yet to be filed. ’
8. Therefore, the orders passed by the Chennai Board shows that despite
service of notice and repeated opportunities, the Petitioner failed to comply
with the requirement under Rule 10 of filing the Counter Statement within
two months of the service of the notice of the Rectification Application. The
order dated 18.11.2015 passed by the Chennai Board records that no Counter
Statement had been filed as on 18.11.2015. The order dated 21.01.2016
passed by Respondent No. 1 also records that no Counter Statement had been
filed till that date and that repeated indulgence had already been granted,
showing the failure of the Petitioner to avail of opportunities granted to file
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 16 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
the Counter Statement in the Rectification Applications thereby justifying
the denial of the Petitioner’s right to file the Counter Statement and the
decision taken by Respondent No. 1 to proceed on merits.
9. The explanation now offered by the Petitioner that the previous
counsel failed to file the Counter Statement is a bare assertion. No material is
placed on record to show that the Counter Statement was ever prepared,
verified, signed, or tendered. No copy of the verified and signed Counter
Statement has been produced by the Petitioner in the present Petitions to
support the explanation offered that the previous counsel failed to file the
Counter Statement after the Counter Statement was verified and signed by
the Petitioner.
10. The chronology of orders passed by the Chennai Board and
Respondent No. 1 placed on record further shows a consistent pattern of
non-appearance, adjournment requests through representatives,
non-compliance with costs imposed, and failure to seek extension to file the
Counter Statement in the manner prescribed by law. Respondent No. 1 vide
order dated 21.01.2016 has also recorded that ‘ this Bench has shown so much
indulgence in granting the relief of extension of time for filing counter
statement for three times and lastly time extended upto 17/08/2013 as per
order dated 11/09/2013 and thereafter the respondent is not bothered to file
any petition for further extension of time. ’ In these circumstances, denial of
further opportunity to the Petitioner to file the Counter Statement to the
Rectification Applications cannot be termed arbitrary or violative of natural
justice.
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 17 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
11. On merits, Respondent No. 1 recorded the following findings in the
Impugned Order:
(i) The Mark ‘THUKRAL’ was adopted by the family of Respondent
No. 2 since 1954;
(ii) Respondent No. 2 before Respondent No. 1 had established prior
user; and
(iii) The Petitioner had not substantiated its own claim of user.
12. As regards the submission made by the Petitioner on the distinction
between ‘Thakral’ and ‘THUKRAL’, Respondent No. 2 has submitted that
the variation is merely a matter of transliteration of the same surname in
Hindi and English. It has further been submitted by Respondent No. 2 that
the proprietorship in the Mark ‘THUKRAL’ and its use in relation to the
business of brooms and allied goods traces back to the family concerns since
1954. Respondent No. 1 has taken note of this explanation in the Impugned
Order. Significantly, apart from drawing attention to the variation in spelling
of ‘Thakral’ and ‘THUKRAL’, the Petitioner has not placed any material to
show that the Impugned Order is vitiated by any infirmity warranting
interference under Article 226 of the Constitution.
13. It is a settled law that the scheme of the Act is such where rights of
prior user are recognised superior than that of the registration and even the
registered proprietor cannot disturb / interfere with the rights of prior user.
Section 34 of the Act provides that nothing in this Act shall entitle the
registered proprietor or registered user to interfere with the rights of prior
user. Conjoint reading of Sections 34, 27 and 28 of the Act shows that the
rights of registration are subject to Section 34 which can be seen from the
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 18 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
opening words of Section 28 of the Act which states ‘ Subject to the other
provisions of this Act, the registration of a trade mark shall, if valid, give to
the registered proprietor…. ’ and also the opening words of Section 34 which
states ‘ Nothing in this Act shall entitle the proprietor or a registered user of
registered trade mark to interfere…. ’ Thus, the statutory scheme recognises
removal on grounds of prior user and that registration is not absolute or
perpetual and remains subject to statutory conditions.
14. Respondent No. 1 in the Impugned Order has also recorded a finding
regarding non-use of the Mark ‘THUKRAL’ by the Petitioner post
registration on 14.08.2003. Under Section 47 of the Act, a registered mark is
liable to be removed if it is shown that there has been no bona fide use for the
statutory period. The finding returned by Respondent No. 1 is based on the
material placed on record in the Rectification Applications and the absence
of any rebuttal from the Petitioner, who failed to file a Counter Statement to
the Rectification Applications.
15. 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
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 19 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
Petitioner ‘ is fraud by misrepresenting to the Registrar with the full
knowledge that the representation was false ’.
16. The Rectification Applications were thus allowed on the grounds of
prior user, non-use of the Mark ‘THUKRAL’ by the Petitioner from the date
of grant of registration certificate on 14.08.2003, non-rebuttal of Respondent
No. 2’s submissions before Respondent No. 1, and the finding of dishonest
adoption. These are findings of fact within the domain of Respondent No. 1
based on the documents submitted along with the Rectification Applications
and pleadings filed by Respondent No. 2 before Respondent No. 1.
17. The Petitioner has also submitted before this Court that Respondent
No. 1 did not consider factual aspects regarding certain invoices and alleged
inconsistencies therein. However, in the absence of a Counter Statement,
despite repeated opportunities granted to the Petitioner to file the same,
Respondent No. 1 cannot be faulted for proceeding on the unrebutted
documents and pleadings on record. A party that deliberately chooses not to
contest at the appropriate stage cannot subsequently complain of
non-consideration.
18. It is a settled law that a writ jurisdiction cannot be exercised for
reappreciating the evidence and arrival of findings of facts unless the
authority which passed the impugned order does not have jurisdiction to
render the finding or has acted in excess of its jurisdiction or the finding is
patently perverse, and that unless there is any grave miscarriage of justice or
flagrant violation of law calling for intervention it is not for the High Court
under Articles 226 of the Constitution to interfere. If there is evidence on
record on which a finding can be arrived at and if the court has not
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 20 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06
misdirected itself either on law or on fact, then in exercise of the power under
Article 226 of the Constitution, the High Court should refrain from
interfering with such findings made by the appropriate authorities.
19. In the present case, the Impugned Order refers to the pleadings and
documents placed on record. The conclusions arrived at by Respondent No. 1
are evidently not arbitrary. The Impugned Order does not disclose any
jurisdictional error, procedural impropriety, or perversity warranting
interference under Article 226 of the Constitution.
20. 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.
21. In view of the above, there is no ground to interfere with the Impugned
Order dated 10.05.2016 passed by Respondent No. 1. As a result the present
Petitions are hereby dismissed. Pending applications, if any, stand disposed
of. There shall be no order as to costs.
TEJAS KARIA, J
FEBRUARY 28, 2026
‘HK’
W.P.(C)-IPD 66/2021&W.P.(C)-IPD 69/2021 Page 21 of 21
Signature Not Verified
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
14:47:06