S.S. White Burs Inc. vs The Registrar Of Trade Marks, & Anr

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Pronouncement: 25.04.2026

+ C.O. (COMM.IPD-TM) 448/2022
S.S. WHITE BURS INC. .....Petitioner
Through: Mr. Balaji Subramanian and Mr.
Akash Kundu, Advocates.
versus
THE REGISTRAR OF TRADE MARKS, & ANR .....Respondents
Through: Mr. Balendu Shekhar, CGSC with
Mr. Krishna Chaitanya, Mr. Rajkumar
Maurya and Mr. Divyansh, Advs. for
R-1
Mr. Roopansh Purohit, Mr. Aritra Das
and Ms. Narayani Das, Advocates for
R-2.

+ C.O. (COMM.IPD-TM) 299/2023
S.S. WHITE DENTAL PRIVATE LIMITED .....Petitioner
Through: Mr. Roopansh Purohit, Mr. Aritra Das
and Ms. Narayani Das, Advocates
versus
S. S. WHITE BURS INC. AND ANR .....Respondents
Through: Mr. Balaji Subramanian and Mr.
Akash Kundu, Advocates for R-1.
Mr. Balendu Shekhar, CGSC with
Mr. Krishna Chaitanya, Mr. Rajkumar
Maurya and Mr. Divyansh, Advs. for
R-2.
%



Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 1 of 52

CORAM:
HON'BLE MS. JUSTICE MANMEET PRITAM SINGH ARORA
J U D G M E N T

MANMEET PRITAM SINGH ARORA, J:
1. C.O. (COMM.IPD-TM) No. 448 of 2022 has been filed by S.S. White
Burs Inc. [‘Petitioner’] seeking cancellation/rectification of of Trade Mark
Registration No. 2147676 in Class 5 and Class 10 for the mark ‘S.S.
WHITE’, standing in the name of S.S. White Dental Private Limited
[‘Respondent’]. C.O. (COMM.IPD-TM) No. 299 of 2023 has, in turn, been
filed by the Respondent seeking cancellation/rectification of the Petitioner’s
Trade Mark Registration No. 609897 in Class 10 for the mark ‘S.S. WHITE
BURS INC’.
2. There are currently four cases pending between the parties, first the
parties filed cross suits against each other i.e., CS(COMM) 26/2015 and CS
(COMM)265/2016 and thereafter the present cross rectification petitions i.e.,
C.O.(COMM.IPD-TM) No. 448 of 2022 and C.O. (COMM.IPD-TM) No.
299 of 2023. Vide order dated 28.10.2025 judgement was reserved in the
present cross rectification petitions.
3. Learned counsel for the parties have addressed arguments in both
petitions conjointly. Accordingly, for the purpose of the present judgment
and ease of reference, C.O.(COMM.IPD-TM) No. 448 of 2022is being
treated as the lead petition.
4. This Court shall first adjudicate the rights of the rival parties in the
lead petition, as the determination therein would have a direct and decisive
bearing on C.O.(COMM.IPD-TM) No. 299 of 2023. In the event, the
Petitioner succeeds in the lead petition, the counter-rectification petition
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 2 of 52

filed by the Respondent i.e., C.O.(COMM.IPD-TM) 299 of 2023 would not
survive for consideration and shall, accordingly, be liable to be dismissed.
5. It is pertinent to mention that it is recorded in the order dated
21.08.2023, of the lead petition, that despite sufficient opportunity, the
Respondent failed to file any reply to the lead petition i.e., C.O.
(COMM.IPD-TM) No. 448 of 2022, and therefore, the Respondent’s right to
file its reply was closed. The Respondent has filed its written submissions,
and has also handed over a convenience compilation, which collated and
relied upon documents from the commercial suit pending between the
parties. Thus, for the sake of understanding the clear history and adoption of
the mark ‘S.S. WHITE’ by the Respondent, the present judgment also takes
note of and refers to the pleadings and material on record in the cross suits
instituted by the parties, being CS (COMM) 26/2015 (filed by the Petitioner)
and CS (COMM) 265/2016 (filed by the Respondent).
6. The dispute centres around the Respondent’s registered mark ‘S.S.
WHITE’ [‘impugned mark’] in Class 5 and Class 10 and the Petitioner’s
registered mark ‘S.S. WHITE BURS INC.’ in Class 10.
7. The Petitioner is the registered proprietor of the mark ‘S.S. WHITE
BURS INC.’ bearing Trademark Registration No. 609897 in Class 10, with
an application dated 19.10.1993 and was granted registration on 15.10.2001.
The Petitioner is a company incorporated in the United States of America
[‘USA’], engaged in the manufacturing and sale of dental care products and
claims longstanding and continuous global use of the mark ‘S.S. WHITE’
since 1844. It asserts that the said mark has been used in India since 1991
through its authorised distributors.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 3 of 52

8. The Respondent is the registered proprietor of the impugned mark
‘S.S. WHITE’ bearing Registration No. 2147676 in Class5 and Class 10,
with an application dated 20.05.2011 and was granted registration on
13.11.2013. The Respondent, an Indian company incorporated on
05.03.1992, claims adoption and continuous commercial use of its registered
mark ‘S.S. WHITE’ in India since 1992 in respect of dental care products.
9. The rival parties assert proprietary rights over the dominant element
of the mark ‘S.S. WHITE/ ’ in relation to dental and allied medical
products. While the Petitioner claims prior adoption, trans-border reputation,
and prior registration, the Respondent asserts prior and honest concurrent
use, in India, and independent adoption. This Court shall now proceed to
decide the lead petition.
Factual matrix
10. The facts stated by the Petitioner in the lead petition are as follows: -
10.1 It is stated thatthe Petitioner and its predecessor-in-interest are
pioneers in the field of dental care products, engaged in the manufacture and
sale of a wide range of items including dental burs, instruments, and
laboratory products since the year 1844. It is stated that the mark ‘S.S.
WHITE’ was coined in 1844 in Philadelphia, Pennsylvania by one Dr.
Samuel Stockton White, an apprentice dentist, who began his business with
the manufacture of porcelain teeth under the mark ‘S.S. WHITE’. It is stated
that the Petitioner, as successor-in-interest, has continued to use the mark in
connection with its dental care products, supported by substantial investment
in research and state-of-the-art facilities.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
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10.2 It is stated that the mark ‘S.S. WHITE’, originally coined and used by
Dr. Samuel Stockton White, came to vest in the S.S. White Company, an
entity founded by Dr. Samuel. The S.S. White Company was subsequently
acquired by Pennwalt Corporation in 1965. In 1986, pursuant to an Asset
Purchase Agreement dated 24.07.1986 [‘1986 agreement’], the S.S. White
business and corresponding trademark rights were divided territorially.
Under this arrangement, global rights in the mark ‘S.S. WHITE’, except for
the United Kingdom, France, and Brazil, were transferred to S.S. White
Burs Inc., U.S.A/Petitioner, while rights in the excluded jurisdictions were
retained or assigned to separate entities, namely S.S. White, United
Kingdom [‘U.K.’], Societe Pour L’Importation de Produits Dentaires
(France), and S.S. White Artigos Dentarios (Brazil).
10.3 It is stated that, pursuant to the 1986 agreement executed by the S.S.
White Company, a subsidiary of Pennwalt Corporation, the Petitioner
acquired rights in the mark ‘S.S. WHITE’ in respect of dental products on a
global basis, except for the territories of the United Kingdom, France and
Brazil, which stood excluded therefrom. The said arrangement was further
modified by the First Amendment to the 1986 agreement dated 15.06.1989,
whereby certain restrictive covenants, including the requirement relating to
supply of products by S.S. White U.S.A. to S.S. White, U.K., were deleted.
10.4 It is stated that this arrangement was further clarified and strengthened
by the Trademark Assignment Agreement and Second Amendment of the
1986 agreement dated 15.06.1989, whereby the S.S. White Company
expressly assigned, to the Petitioner, all its right, title, and interest in the
tradename and trademark ‘S.S. WHITE’ in respect of dental care products
globally, except for the territories of the United Kingdom, France and
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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Brazil, together with the associated goodwill and trademark registrations. It
is stated that this amendment also superseded prior licensing arrangements
and reaffirmed the Petitioner as the owner of the tradename and trademark
‘S.S. WHITE’ globally, while recognizing the rights in United Kingdom,
France and Brazil, who were only permitted to use the mark in their specific
territory. It is stated that consequently, Petitioner became the proprietor of
the mark ‘S.S. WHITE’ globally (including India), except for the expressly
excluded territories, thereby establishing a clear chain of title and territorial
allocation of trademark rights.
10.5 It is stated that the Petitioner has consistently put efforts to protect and
enforce its proprietary rights in the mark ‘S.S. WHITE’ across jurisdictions;
notably, upon discovering unauthorized use of the mark by S.S. White, U.K.
in Mexico (1990) and Japan (1994), the Petitioner promptly raised
objections, pursuant to which such unauthorized use was discontinued. It is
stated that under these facts, it is clear that S.S. White, U.K. recognises and
acknowledges the global rights of the Petitioner in the mark ‘S.S. WHITE’.
10.6 It is stated that the mark ‘S.S. WHITE’, coined in 1844, has since
1
been continuously used for dental care products and is registered in over 90
countries worldwide, including India. Sales figure of the Petitioner’s
products in India under the trademark ‘S.S. WHITE’ for the year 2015 was
recorded at $72,717. Details of the sales figures for the financial years 1998
2
to 2015 is provided at paragraph 6 of the lead petition . It is stated that
through extensive global use, including sales in India under the mark ‘S.S.
WHITE BURS INC./ ’, since at least 1991, the mark has

1
The list of Registration Certificates are provided is CS(COMM) 26/2015 at plaintiff’s documents
2
CO(COMM) 448/2015
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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acquired substantial goodwill and reputation. The said mark has been
registered by the Petitioner in a particular stylized form as ‘S.S. WHITE
BURS INC.’/ , in India. Details of the Petitioner’s trademark is
as follows: -

10.7 It is stated that the longstanding presence of the Petitioner’s mark
‘S.S. WHITE’ in the dental industry, marked by several pioneering
innovations, international awards, and patents, demonstrates the
distinctiveness and prominence of the mark. It is further stated that
consistent sales growth, increasing global demand, and sustained
promotional activities have reinforced the mark’s recognition among dental
professionals and consumers, both internationally as well as in India.
10.8 It is stated that the mark ‘S.S. WHITE’ has been extensively
advertised for several decades through print and electronic media, as well as
medical and dental literature accessible in India. It is stated that the mark has
gained recognition in India through trans-border reputation, owing to the
movement of patients and dental professionals, including Indian
professionals, who have trained abroad or attended international conferences
on dental care products, where the Plaintiff’s products are showcased. Such
exposure is stated to have led to widespread awareness and goodwill of the
Petitioner’s mark in India, with the mark being exclusively associated with
the Petitioner for many years.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 7 of 52

10.9 It is stated that the Petitioner first became aware of the Respondent’s
unauthorized use of the impugned mark ‘S.S. WHITE’, in August 2012, as
part of its corporate name and in relation to dental care products, when the
Respondent’s company name was first noticed by one of the Petitioner’s
employee; upon such knowledge, the Petitioner, through its counsel, issued a
cease-and-desist notice dated 11.09.2012 calling upon the Respondent to
discontinue use of the impugned mark. It is stated that the Respondent,
however, vide reply dated 03.10.2012, refused to comply with the said
notice and failed to disclose any bona fide basis for adoption of the mark. It
is further stated that a separate warning had been issued by S.S. White, U.K.
(vide fax dated 20.08.1993) to the Respondent; however, the Petitioner
clarifies that it neither authorized nor had prior knowledge of such
communication by S.S. White, U.K.
10.10 It is stated that Petitioner became aware of Respondent’s application
for the mark ‘S.S. WHITE/ ’ (TM No. 2147676) in Class 5 and
Class 10, on 25.07.2013 and that it had already been accepted and advertised
in the Trade Marks Journal dated 11.03.2013; by that time, the limitation
period for filing opposition had expired. It is stated that the impugned mark
was adopted dishonestly, as it was filed in the exact font and style of the
Petitioner’s prior registered trademark ‘S.S. WHITE BURS INC./
’ (TM No. 609897 in Class 10).
10.11 It is stated that upon reviewing the examination report dated
07.08.2012, the Petitioner discovered that the Respondent No. 1/Registrar of
Trademarks [‘Registrar’] had failed to examine the application in Class 10
altogether and had only conducted examination in Class 5; even in Class 5,
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
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the examination was allegedly improper, as the specified goods did not fall
within that particular Class under the Nice Classification. It is further stated
that, the search report failed to disclose the Petitioner’s identical mark or
other similar marks in Class 10, despite their existence, indicating a clear
lapse in compliance with Rule 37(2) of the Trade Marks Rules, 2002 [‘now
Rule 33 of the Trade Mark Rules, 2017’(‘Rules’)].
10.12 It is stated that the Petitioner upon conducting its own research found
its prior registered mark as well as numerous other marks with the prefix
‘S.S.’ in Class 10, reinforcing that a proper search by the Registrar would
have revealed conflicting marks.
10.13 It is stated that the Petitioner filed a protest petition on
26.07.2013before the Registrar seeking withdrawal of acceptance and re-
examination of the application filed by the Respondent for registration of the
impugned mark, followed by a reminder letter dated 06.08.2013, however,
no response was received.
10.14 It is stated that upon this apprehending inaction by the Registrar, the
Petitioner approached this Court by way of a writ petition (civil) no.
5174/2013 on 16.08.2013, seeking directions to adjudicate Petitioner’s
pending petition and restrain the Respondent’s registration. It is stated that
during the pendency of the abovementioned writ petition, the impugned
trademark was nevertheless registered on 13.11.2013. Thereafter, the Co-
ordinate Bench of this Court subsequently disposed of the writ petition vide
order dated 12.02.2015, granting liberty to the Petitioner to seek rectification
under the Trade Marks Act, 1999[‘Act’].
10.15 It is stated that the Respondent’s adoption and use of the impugned
mark ‘S.S. WHITE’, being identical to the Petitioner’s registered mark and
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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used in respect of identical goods, is dishonest and calculated to ride upon
the Petitioner’s goodwill and reputation. It is alleged that the Respondent
has imitated not only the mark but also the device mark and overall
presentation, thereby causing infringement of the Petitioner’s proprietary
rights over its mark.
10.16 It is stated that the registration is liable to be removed under Sections
57(1) and 57(2) of the Act due to wrongful registration arising from
improper classification of goods in Class 5 and failure to conduct a
mandatory search in Class 10, in violation of Rule 33 of the Rules.
Submissions by the Petitioner
11. Learned counsel for the Petitioner submitted that the impugned mark
of the Respondent is identical to Petitioner’s prior registered trademark and
was applied for nearly two decades later, i.e., on 20.05.2011. He submitted
that in view of such prior adoption, use, and registration, the mark of the
Respondent ought not to have been registered. He submitted that a proper
examination would have revealed the Petitioner’s earlier mark, thereby
barring the grant of registration to the Respondent.
11.1 He further submitted that Respondent procured registration by
adopting a deceptive method, namely, by getting the application examined
only under Class 5, while ultimately obtaining registration in both Class5
and Class 10; this deliberate misclassification enabled the Respondent to
evade detection of the Petitioner’s prior registration in Class 10 of the
identical mark ‘S.S.WHITE’. He submitted that such conduct is in clear
violation of Rule 33 of the Rules, which mandates proper examination of
applications.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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11.2 He submitted that non-compliance with the mandatory requirements
of examination process vitiates the registration itself, as settled by judicial
precedents including DCM Shri Ram Consolidated v. Sree Ram Agro
3 4
Ltd. , Auto Pins (India) Ltd. v. S.R. Springs Pvt. Ltd. , and Prajapati
5
Constructions Ltd. v. Manoj Ramanand Prajapad , and therefore, the
impugned registration is liable to be set aside on this ground alone.
11.3 He also submitted that Respondent has failed to file any reply in the
present proceedings despite repeated opportunities, and its right to do so has
been closed by order dated 21.08.2023; the only explanation offered by
Respondent, as gleaned from its written statement in connected proceedings,
is that an entity named S.S. White UK permitted it to use the name and the
mark ‘S.S. WHITE’. He submitted that even if such a claim is accepted at
face value, the same does not confer any legal right to seek or obtain
registration of an identical trademark, particularly in violation of statutory
provisions.
11.4 He further submitted that it had issued a cease-and-desist notice dated
11.09.2012 to Respondent, to which a reply was sent on 03.10.2012 and the
Respondent failed to disclose its application for registration in the said reply,
which further reflects lack of bona fides.
11.5 He submitted that even as per Respondent’s own description, its
goods pertaining to ‘surgical and scientific instruments used in the dental
industry’, falls outside the scope of Class 5; this clearly demonstrates that
the classification under Class 5 was deliberately adopted to mislead the

3
ILR (2012) IV DELHI 119, paragraph no. 27 and 30.
4
2015 SCC OnLine IPAB 148, at paragraph 9.
5
2018 SCC OnLine IPAB 313, at paragraph 18 and 21.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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Trade Marks Registry [‘Registry’] and to avoid proper examination, thereby
rendering the impugned registration illegal and liable to be rectified.
11.6 He submitted that the Respondent’s claim of rights in the impugned
mark is untenable on the grounds of lack of distinctiveness, absence of prior
user, lack of entitlement to registration in India, and alleged non-use of the
mark.
11.7 He contended that the Respondent’s mark is not distinctive and is
therefore not entitled for protection.
Submissions by the Respondent
12. Learned counsel for the Respondent submitted that around 1991, Mr.
Gerry Well, one of the Directors of the S.S. White, U.K. proposed for a
collaboration, with the then Managing Director of the Respondent Company,
to sell the products manufactured by S.S. White, UK, in India. He submitted
that Mr. Gerry Well proposed that a company in the name of S.S. White, be
incorporated in India, by the Respondent, who will manufacture, market, sell
and import surgical and scientific goods under the trademark ‘S.S. WHITE’;
accordingly, the corporate-name and trademark ‘S.S. WHITE’ was adopted
by the Respondent upon the instance of the S.S. White, UK in the year 1991-
1992.
12.1 He submitted that, thereafter in the year 1991-1992 the Respondent
started importing goods from S.S. White, U.K. under the trademark ‘S.S.
WHITE’ to be sold in India and the import of such goods through S.S.
White, U.K. was a regular affair till about 1999.
12.2 He stated that the rectification petition is not maintainable as the
Petitioner , despite having prior knowledge of the Respondent’s trademark
application and its advertisement, failed to file opposition under Section 21
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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of the Act and consequently, the Petitioner is not a ‘person aggrieved’ under
Section 57, and cannot seek rectification on grounds that ought to have been
raised earlier.
12.3 He contended that the Petitioner had, actual as well as constructive
notice, of the Respondent’s mark since 2012 and consciously chose not to
oppose within the statutory period, thereby waiving its right to raise
objections under Sections 11(1), 11(2), and 11(3) of the Act.
12.4 He argued that rectification cannot be sought merely on the basis of
alleged procedural defects in examination (including violation of Rule 33 of
Rules), particularly when the mark was duly advertised and no opposition
was filed. Reliance is placed on the judgement of Loreal India Pvt Ltd vs.
6
Rajesh Kumar Taneja Trading as Innovative Derma Care and Ors . to
submit that post-registration challenges based solely on examination errors
are impermissible. He further submitted that prioritising examination defects
over the statutory procedure of advertisement and opposition would defeat
the framework of the Act and lead to untenable consequences.
12.5 He contended that the Petitioner is estopped from challenging the
distinctiveness of the mark under Section 9(1)(a) of the Act, as it itself holds
registration for an identical mark i.e., ‘S.S. WHITE BURS INC.’.
12.6 He submitted that the Petitioner has approached this Court without
clean hands by concealing material facts, including its knowledge of the
Respondent’s application and advertisement, thereby disentitling it from
equitable relief.
12.7 He submitted that the Petitioner has failed to substantiate its claims
under Sections 11 of the Act, as no documentary evidence such as invoices,

6
2024:DHC:5150-DB
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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sales figures, or proof of reputation, in India, has been filed along with the
rectification petition.
12.8 He asserted that Petitioner’s statutory protection under Section 34 and
Section 12 of the Act and submits that it is a prior user of the mark in India
since 1993, much prior to the Petitioner’s actual commercial use in India.
12.9 He contended that the Respondent satisfies the ‘first-to-market’ test,
having commenced its use of the impugned mark in India, decades prior to
the Petitioner, and that the deeming provision of relating registration back to
the application date does not override actual prior use; alternatively, even if
such deeming provision is applied, the Respondent claims to be a prior user
based on earlier incorporation and commencement of business in India.
12.10 He also contended that the Petitioner has failed to establish any
transborder reputation in India, as required by law, and the documents relied
upon do not meet the evidentiary threshold laid down in Supreme Court
judgment of Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries
7
Ltd .
12.11 He submitted that Respondent is an honest concurrent user of the
impugned mark, having adopted it bona fide in the early 1990s, with
continuous, extensive, and pan-India use, without facing any actual or
constructive opposition from the Petitioner or notice of the Petitioner’s
alleged rights at the time of Respondent’s adoption of the impugned mark.
Findings and Analysis
13. This Court had heard the learned counsel for the parties and perused
the record.
I. History of adoption of the mark ‘S.S. WHITE’ by the Petitioner

7
AIR 2018 SC 167
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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14. The material on record unequivocally establishes that the mark ‘S.S.
WHITE’ is a coined and inherently distinctive mark for the goods sold in
Class 10, originating as early as 1844 from the name of its founder Dr.
Samuel Stockton White from U.S.A., who was in the business of selling
dental care products including burs. The documents filed on record show a
legal transfer of the proprietary rights along with goodwill in the tradename
and the trademark ‘S.S. WHITE’ from Dr. Samuel Stockton White to the
S.S. White Company, thereafter to Pennwalt Corporation, and ultimately to
the Petitioner. The documents evidencing the legal transfer were effected
through the 1986 agreement and its amendments in favour of the Petitioner
for a worldwide use, including India.
15. The second amendment to the 1986agreement, which is dated
15.06.1989 unambiguously clarifies the Petitioner’s global proprietary rights
in the mark ‘S.S. WHITE’ by expressly assigning all rights, title, and
interest in the trademark and tradename, together with the associated
goodwill, in favour of the Petitioner, save and except for specifically carved-
out territories, i.e., United Kingdom, France, and Brazil, thereby recognizing
the Petitioner as the exclusive owner of the trademark on a worldwide basis,
except for the excluded jurisdictions. Relevant extracts from the Second
Amendment dated 15.06.1989 reads as under: -
“TRADEMARK: ASSIGNMENT AGREEMENT
AND
SECOND AMENDMENT OF ASSET PDRCHASE AGREEMENT

This is a Trademark Assignment Agreement and Second Amendment of Asset
Purchase Agreement dated June 15, 1989 between THE S.S. WHITE a Delaware
corporation with Offices at Three Parkway, Philadelphia, Pennsylvania 19102
("Assignor"), and S.S. WHITE BURS, INC., an Illinois corporation with offices
at 10117 Franklin Avenue, Franklin Park, Illinois 60137 ("Assignee").

Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 15 of 52

The parties entered into two agreements both dated July 24, 1986,
entitled respectively Asset Purchase Agreement ("Asset Purchase Agreement")
and License Agreement ("License Agreement"), and subsequently entered into a
First Amendment to the Asset Purchase Agreement dated this date, which
amends Paragraph 15 of the Asset Purchase Agreement.

Pursuant to the License Agreement, the rights to the trade name and
trademark “S.S. White” (herein referred to as the “Mark”) in certain countries
were exclusively licensed to Assignee to incorporate in its corporate name and
trade name and to use in connection with its dental bur manufacturing business
and dental bur products.
………..

WHEREAS, Assignee wishes to acquire, and Assignor is willing to
assign to Assignee, all of Assignor's rights in the Mark as used in connection
with dental burs, instruments, appliances, supplies and equipment (collectively,
"Dental Products") in the countries set forth in the attached Exhibit, together
with the goodwill of the business symbolized by the Mark and the United States
and foreign registrations and applications for registration of the Mark set forth
on the attached Exhibit (the "Registrations and Applications").

NOW THEREFORE, for good and valuable consideration, receipt of
which is hereby acknowledged, the parties agree as follows:
1. Grant
Assignor does hereby assign to Assignee all of its right, title and interest,
in the countries set forth in' the attached Exhibit, in and to the Mark as
used in connection with Dental Products, together with the goodwill of
the business symbolized by the Mark and the Registrations and
Applications. This assignment does not pertain to the Mark as used with
any product or service other than Dental Products or to any registration
of the Mark other than those listed in the attached Exhibit, and any rights
in the Mark for products or services other than Dental Products and all
other registrations shall remain with Assignor or its parent Pennwalt
Corporation. Without limiting the foregoing, Assignee acknowledges
that Assignor retains all rights to the trade name "THE S.S. WHITE
COMPANY" and that certain third parties hold the rights to the Mark for
Dental Products in the United Kingdom, France and Brazil and for
industrial products in the United States and foreign countries.
…………

4. Assignments and Registrations of Trademarks
From and after the effective date of this Agreement Assignee shall
maintain all registrations of the Mark which in its sole judgment are
reasonably necessary to protect the exclusive use of said Mark. Assignor
agrees to execute and deliver to Assignee any assignments, documents,
applications, affidavits, powers of attorney and other documents and
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 16 of 52

instruments, and take such other actions, as Assignee may reasonably
request as necessary to effect the transfer of ownership of the Mark in the
foreign countries set forth in the attached Exhibit and the Registrations
and Applications, all at the Assignee's cost and expense.
…………”
[Emphasis Supplied]

16. The record evidences that the Petitioner has fortified its proprietary
rights in the mark ‘S.S. WHITE’ by securing its trademark registrations in
over 90 jurisdictions across the globe, except for United Kingdom, Brazil
and France, details of which are filed in its documents folder in CS
(COMM) 26/2015. The first registration discernible on record is of 1989 in
Australia and Mexico.
In India, the Petitioner holds a prior registration vide TM No. 609897
in Class 10 with an application date of 19.10.1993, registered on 15.10.2001.
17. As per records, the Petitioner has been vigilant and consistent in
protecting its proprietary rights in the mark ‘S.S. WHITE’. From securing
trademark registrations across more than 90 jurisdictions worldwide to
actively enforcing its rights against unauthorized use, the Petitioner has
taken timely steps to prevent dilution and misuse of its mark.
Notably, the Petitioner has objected to and successfully curtailed
unauthorized use by related entities, including instances involving S.S.
White, U.K. in foreign jurisdictions such as Mexico (in the year 1990) and
Japan (in the year 1994), evidencing its assertion of exclusive global control
over the mark.
In India as well, upon gaining knowledge of the Respondent’s use, the
Petitioner promptly issued a cease-and-desist notice dated 11.09.2012 and
pursued remedies before the Trade Marks Registry by filing a
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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[protest]petition dated 26.07.2013 and approached this Court by filing a writ
petition W.P. (C) 5174/2013 on 16.08.2013.
Such continuous enforcement efforts reflect a clear intent of the
Petitioner to preserve the distinctiveness and goodwill of its trademark and
underscore the bona fide and diligent manner in which the Petitioner has
safeguarded its proprietary rights, over time.
18. The Petitioner’s registrations of the mark ‘S.S. WHITE’ and its
formatives in around 90 countries globally, coupled with the Petitioner’s
consistent commercial presence in India since at least 1991 through its
authorized distributors, substantiates actual use of the mark within the
jurisdiction of India. The Petitioner has filed an affidavit of Mr. Matthew
Hill, Chief Financial Officer [‘CFO’] disclosing the figures of sale of the
Petitioner’s products bearing the mark ‘SS WHITE’ in India between 1998-
2012. This affidavit also provides a Note, stating that according to the
financial system of the Petitioner its first customer in India was established
in July 1991, and that the sales information prior to 1998 has been purged
from its system.
8
Infact, the letters issued by the dentists/orthodontics (in the year
2013) relied upon by the Respondent as well acknowledge the presence of
the Petitioner’s products through its distributors in the Indian market. Also,
the Respondent itself has pleaded that it has been importing the products
bearing mark S.S. WHITE from U.K. between 1992 to 1999 and selling the
same in the Indian market.
19. The Petitioner has demonstrated global reputation in the mark ‘S.S.
WHITE’ by placing on record evidence of continuous global use through

8
Letter dated 18.10.2013 filed by the Respondent in CS(COMM) 26/2015 at page 552.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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various sales invoices of international sales, promotional activities through
advertisements and visibility in dental literature, accessible to practitioners
worldwide. The spillover of such reputation into India, particularly in a
specialized field like dental products is seen from the pleadings made by the
Respondent in its plaint, i.e., CS (COMM) 265/2016.
20. The worldwide registrations show that the mark, was stylized in its
current form as and has been in use, by the Petitioner, with its
formatives like , since then.
21. In these facts, this Court is of the opinion that the mark ‘SS WHITE’
is a coined and inherently distinctive mark in which the Petitioner has
established longstanding and prior proprietary rights dating back to 1884,
with continuous global use and recognition. The facts show that the mark
‘S.S. WHITE’ had recognition in the Indian market way prior to the
Respondent’s adoption. The Petitioner’s adoption and use of the mark is
thus prior, bona fide, continuous, and ought to be legally protected.
II. Respondent’s adoption of the mark ‘S.S. WHITE’is unauthorized and
dishonest

22. Respondent has set out the circumstances in which it adopted the
tradename and trademark S.S. WHITE in its plaint filed in CS(COMM)
265/2016 at paragraphs 11 to 14. Paragraphs 11 to 14 of the plaint reads as
under:
“11. In the year 1990, the Managing Director of the Plaintiff Company,
Mr. Devender Vadehra developed a business relationship with Mr.
Gerry Well, who was then a Director of the Defendant No. 1 having all
the authority to represent and bind the Defendant No 1. Mr. Gerry
Well was a famous dentist in the United Kingdom who had a strong
inclination for India. He was also a businessman. He left dentistry because
of an accident and then started his own business. To put the record straight,
Mr. Devender Vadehra, and Mr. Gerry Well were introduced in a
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 19 of 52

networking platform somewhere around end of the year 1981.
12. Around late 1991, Mr. Gerry Well mooted the proposal to Mr. Devender
Vadehra for a collaboration to sell the products manufactured by S.S. White
Manufacturing, in India through one of the Plaintiff Company’s sister
concerns (named, Indo Universal Traders). Indo Universal was a prominent
company in the surgical and scientific dental goods segment in India.
Needless to state that the Defendants had no sale/import in India during the
relevant time, i.e. 1991. In trademark language, they were non-existent as
there were no sales under the trademark S.S. White in India, in the year
1991. There was also no advertisement of the trademark S.S. White in any
form or medium at this relevant point in time.
13. Due to restrictions in India on foreign direct investment foreign
directors' control etc. (prior to 1991), Mr. Gerry Well of S.S. White
manufacturing, mooted the proposal to Mr. Devender Vadehra
(Managing Director of the Plaintiff Company), that, a company in the
name of S.S. White, be ^ incorporated in India by the Plaintiff, which
will manufacture (by itself or on job work basis), market, sell and
import surgical and scientific goods under the trademark "S.S. White".
As the talks for economic liberalization were on, it was also mooted that
S.S. White UK will acquire majority shares upon bringing in money towards
equity, in this newly incorporated entity in India after the regulatory
control(s) were relaxed.
14. Accordingly, the corporate-name and trademark "S.S. White" was
adopted honestly and truthfully by the Plaintiff upon the instance of
Defendant No. 1, in the year 1991-1992, vide certificate of incorporation
issued by the Registrar of Companies (Delhi and Haryana) (hereinafter
"ROC") dated 05.03.1992 . It shall be pertinent to state here that at the time
of adoption of the corporate name. S.S. White, the "relevant public" was not
even remotely aware of the existence of the Defendants or any of its
predecessors in title and interest.
…..

17. After the economic liberalization in India in the year 1991 and
relaxation of export-import controls, the Plaintiff started importing goods
from Defendant No. 1 under the trademark S.S. White to be sold in India.
The import of such goods through S.S. White to be sold in India. The
import of such goods through S.S. White UK (Defendant No. 1) was a
regular affair and continued till about late 1999.”
[Emphasis Supplied]

23. Paragraphs 11 to 14 of the plaint reveals that the Respondent did not
independently conceive the mark ‘S.S. WHITE’ but rather adopted it
allegedly at the instance of S.S. White, U.K., for the purpose of furthering
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 20 of 52

the latter’s prospective business in India. Such adoption, by the
Respondent’s own showing, was neither original nor independent, but
derivative and subordinate to the rights of the S.S. WHITE, U.K in this
trademark and tradename.
24. Significantly, the Respondent has not produced any written agreement
or authorization from Mr. Gerry Well or S.S. White, UK to substantiate its
claim of permission. Respondent has not even pleaded any written
permission. The absence of any written permission assumes significance in
light of the categorical denial by S.S. White, UK [Defendant No. 1 in
CS(COMM) 265/2016] in its written statement, wherein it has expressly
refuted granting any such permission to Respondent to use the mark S.S.
WHITE as a trademark or a tradename. The relevant part of the written
statement dated 26.07.2016 filed by S.S. White, UK, read as under: -
“A perusal of the Plaint would show that Plaintiff has not disclosed any
cause of action against Defendant No. 1 for institution of the said legal
proceedings. The only basis for instituting the Suit against Defendant No.
1 is Plaintiffs alleged claim that it commenced use of the mark/name SS
WHITE in India on a 'license'/representation from SS White Group PLC -
an entity that no longer exists. At another place in the Plaint, Plaintiff
has contended that one Gerry Well, Director of SS White
Manufacturing, UK had, way back in the early 1990s, entered into a
business collaboration with Plaintiff pursuant to which it was
allowed/authorized to use SS WHITE not just as a part of its
corporate name but also a trade mark. It is pertinent to mention that
Plaintiff has not filed any license agreement to substantiate its alleged
claim of being a licensee of Defendant No. 1 which was never the
case.”

[Emphasis Supplied]

25. In the considered opinion of this Court, the absence of any written
permission granted by S.S. White U.K. in favour of the Respondent and the
denial of grant of any alleged permission by S.S. White U.K., the adoption
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 21 of 52

by Respondent of S.S. WHITE as its tradename in 1992 and its trademark in
subsequent years was unauthorized.
26. Even if, arguendo, the Respondent’s plea of oral permission from S.S.
White, U.K., was to be accepted, the same would not enure to the favour of
the Respondent, since as per the 1986 agreement and its amendments, S.S.
White U.K had no right to use the mark ‘S.S. WHITE’ in India as this was a
territory assigned to the Petitioner. Thus, S.S. White U.K. could not have
granted any permission (oral or otherwise) to the Respondent to use the
tradename and the trademark.
27. The Respondent has averred in its plaint i.e., CS(COMM) 265/2016
9
that it had been importing surgical instruments from the S.S. White, UK
during the period 1992-1999; these dental instruments bear the mark ‘S.S.
WHITE’; therefore, the goodwill earned by the mark S.S. WHITE by selling
these goods by the Respondent, in India, is attributable to the goods
manufactured by S.S. White, U.K.
The Respondent has alleged that it was also manufacturing goods
locally and selling same under the mark S.S. WHITE along with the goods
imported from S.S. White, U.K. In the considered opinion of this Court, the
sales undertaken by Respondent for its locally manufactured goods under
the trademark S.S. WHITE was clearly a case of passing off as it was
mixing its goods with the goods imported from S.S. White, U.K.
In these facts, this Court is unable to hold that Respondent earned any
independent goodwill for the mark S.S. WHITE through its own efforts.
28. The documentary evidence filed in the convenience compilation
further exposes the falsity and afterthought of the Respondent’s stand. The

9
At paragraph 17 of CS(COMM) 265/2016
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 22 of 52

cease-and-desist notices issued to the Respondent through fax transmissions
dated 20.08.1993 and 12.10.1993, by solicitors representing S.S. White
entities in England clearly asserts the proprietary rights of S.S. White Burs
Inc./Petitioner over the mark ‘S.S. WHITE’ and objects to the Respondent’s
unauthorized use of the impugned mark. Notably, the Respondent’s reply
vide fax transmission dated 09.09.1993 makes no reference whatsoever to
any alleged permission from Mr. Gerry Well, an omission that is telling and
fatal to Respondent’s present case. This contemporaneous silence directly
contradicts the Respondent’s plea of consent from Mr. Gerry Well and
demonstrates that the Respondent was fully aware of the Petitioner’s
superior rights even at the inception of its unauthorized use. The relevant
part of the notice dated 20.08.1993 is as follows:
“Our Clients: The S.S. White Group of Companies (Incorporated in England)

It has recently come to our attention that your company has recently been
incorporated under the title ‘SS White Dental Manufacturing (India) Private ltd’
and we have seen a copy of your letterhead demonstrating that the trading name
‘S.S. WHITE’ utilised by you is identical to the trading name and style which
has been utilised by our client Companies for some years now. Our client has at
all times used the name ‘SS WHITE’ (where necessary) with the knowledge and
authority of S.S. White Burs which is a Company incorporated in the United
States of America.
For some years past, our client’s products have been available throughout India
and our client enjoys considerable goodwill in the name and reputation ‘SS
WHITE’.
It now comes as a complete surprise to our client that you have taken the name
and trading style of SS WHITE without seeking any form of authority from our
client. There is every likelihood that the continuation of your trade in this
manner is likely to damage our client’s goodwill throughout India and in the
circumstances we must ask you to confirm by return that you will immediately
desist from using the name ‘SS WHITE’ both in terms of your corporate name
and trading style. The new trading name or style to be adopted by you should not
suggest any connection whether direct or indirect with our client Company and
to avoid any confusion we would suggest that this is approved by our client
Company before you effect the relevant name change.”
[Emphasis Supplied]
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 23 of 52

The Respondent’s reply dated 09.09.1993 reads as under : -

“RE: S.S. White Group of Companies.

Gentlemen,
th
This is in pursuance to our fax dated 30 August 1993. We are unable to
quote your reference in the referal hereinabove as it was not clear from your fax
th
of 28 August.

We have discussed the matter with Mr. Devender Vadehra of our clients’
Company so that we may determine the background on the tradename S.S.
White. It is in this context that our client has several pertinent enquiries. One
pertinent enquiry is with regard to your adoption or that of S.S. White Burs Inc.
in the said tradename. The information available with our client is that there was
a Company in U.K. having the tradename S.S White, but which ceased to exist
some 30 or 40 years ago. ago. Thus, it appears to our client that S.S White Burs
Inc. could not be a successor-in-title to the Company in U.K. which ceased to
exist at the aforesaid period.

The next enquiry of our client is with regard to the adoption and use of the
tradename S.S. White by your client. You have advised that your client has the
authority from S.S White Burs Inc. to use of the said tradename. We are rather
confused on your reference to such an authority.

Our client requires a clarification on the existence and scope of such an
authority.

Finally, you have stated that your client’s products have been available
throughout India for the past few years. We believe that your clients would have
readily available with them their sale figures to India for the past five years. Our
client requires that such sale figures, and more particularly so as our client is of
the strong belief that your client does not enjoy any such goodwill and reputation
in India.”

29. The response issued by the UK Solicitor dated 12.10.1993 to the
Respondent’s reply dated 09.09.1993 is also relevant and reads as under: -

“Dear Sir,

SS White Group of Companies

We thank you for your letter dated 09 September received here on 21
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 24 of 52

September.

Our clients SS White Manufacturing Ltd. and SS White Holdings Ltd.

SS White Manufacturing Ltd. is the successor to the SS White Ltd. and enjoys
the benefit of the registered trademark “S.S. White” in the United Kingdom and
(in conjunction with S.S. White Burs Inc.) the right to use the name S.S. White
throughout other parts of the world.

It is not correct to say that S.S. White Ltd. cease to exist some 30 or 40 years
ago. This company was still in existence up until some few years ago and was
liquidated as part of solvent reconstruction.

Our client’s records and knowledge demonstrate that for many years now (and
its predecessor in title) have traded throughout the Indian subcontinent using the
name SS White and sales figures are confidential to our clients who is not
prepared to release them to outsiders. The value of the goodwill vested in our
client in respect of the Indian subcontinent is well demonstrated by the fact that
your client has chosen to assume our client’s trading name and trading style.

Based upon the above facts, you will clearly have no difficulty in advising your
client of our client’s rights and we should be …… to receive the confirmation
previously requested.”

30. The contents of the reply dated 09.09.1993 issued by the Respondent
to the U.K. Solicitor are revealing. In the reply, there is no stand taken with
respect to any alleged permission from Mr. Gerry Well as alleged in the
plaint (CS(COMM) 265/2016).
The aforesaid legal notices issued by the UK Solicitor specifically
states that S.S. White Burs Inc./Petitioner is the proprietor of this trademark
and therefore the Respondent at the inception (in 1993) had notice about its
unauthorized use of a proprietary coined mark.
31. The aforesaid facts show that the stand taken by the Respondent in
CS(COMM) 265/2016 at paragraphs 11 to 14 are untrue to its knowledge.
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 25 of 52

32. The untruthfulness of the plea of alleged permission from S.S. White,
U.K. to use the tradename is also evidenced from the statement made by the
Respondent before Registrar of Companies [‘ROC’].
Before the ROC, Respondent claimed that ‘S.S. WHITE’ was an
acronym derived from ‘Surgical’, ‘Scientific’, and ‘White’ (for dental/white
metal products). This explanation stands in stark contradiction to its plea of
adoption at the instance of Mr. Gerry Well of S.S. White, UK. The relevant
10
portion reads as under:
14. Accordingly, the corporate-name and trademark "S.S.
White" was adopted honestly and truthfully by the Plaintiff
upon the instance of Defendant No. 1, in the year 1991-1992,
vide certificate of incorporation issued by the Registrar of
Companies (Delhi and Haryana) (hereinafter "ROC") dated
05.03.1992 . It shall be pertinent to state here that at the time of
adoption of the corporate name S.S. White, the "relevant public"
was not even remotely aware of the existence of the Defendants or
any of its predecessors in title and interest.
15. It shall also be pertinent to state here that, the ROC while
following the mandate of the name availability guidelines, under
Section 20 of the Companies Act 1956, raised a clarification on the
adoption of the corporate name S.S. White by the Plaintiff vide its
letter dated 04.12.1991 bearing number 24999/State/91/7273,
which was duly replied back by the Plaintiff vide its letter dated
13.12.1991, the relevant extracts of which are reproduced for an
ease of reference of this Hon'ble Court .
"... We are pleased to clarify that S stands for surgical, S stands
for scientific and White stands for dental and white metal
products.
As the Plaintiff was already dealing in surgical and scientific
instruments used in the dental industry, the corporate name S.S.
White was derived from an arbitrary combination from the initial(s)
of the word(s) surgical and scientific and white being symbolic of
dental and white metal products.
[Emphasis Supplied]

10
At paragraph 14 and 15 of the plaint filed by the Respondent in CS(COMM) 265/2016
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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33. The stand taken by the Respondent before the ROC is in stark contrast
to the explanation set out in the plaint at paragraph nos. 11 to 14 for
adopting the tradename ‘S.S. WHITE’. The stands taken are mutually
destructive, inconsistent and therefore confirm and reinforce the inference
that Respondent’s adoption of the impugned mark was dishonest.
34. In these facts, this Court is of the considered opinion that, Respondent
has not acquired any independent proprietary rights by the unauthorized use
of the ‘S.S. WHITE’ mark for the locally manufactured goods as the
Respondent at all times was aware that the proprietary rights of the ‘S.S.
WHITE’ mark vests in a third-party foreign entity. In the absence of any
legally valid assignment or authorization emanating from the rightful
proprietor of the mark for the Indian territory, Respondent’s adoption of the
impugned mark cannot be held to be honest or bona fide. Consequently, the
Respondent’s use and subsequent registration of the impugned mark ‘S.S.
WHITE’ is tainted by lack of honest adoption, in bad faith and is liable to be
set aside, being contrary to the scheme under Section 11(10) of the Act.
35. In the present case, the material on record unmistakably establishes
that the Respondent had clear knowledge of the Petitioner’s mark ‘S.S.
WHITE’ and its proprietary rights at the very inception of its adoption. More
importantly, the Respondent was expressly put to notice of the Petitioner’s
prior rights as early as 1993 through cease-and-desist communications
issued on behalf of S.S. White entities, England.
36. Notwithstanding such knowledge, the Respondent proceeded to adopt
and persist in the use of an identical mark ‘S.S. WHITE/ ’, without
any lawful assignment, licence, or authorization from the rightful proprietor
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 27 of 52

of the mark for the Indian territory. The Respondent’s own pleadings
demonstrate that its adoption was neither independent nor bona fide, but
was, at best, derivative of alleged association with S.S. White, UK. In the
absence of any legally cognizable right, such adoption is ex facie dishonest
and intended to appropriate the goodwill subsisting in the Petitioner’s mark.
III. Imitation of stylized form of the mark ‘S.S. WHITE’ by the Respondent
evidence bad faith

37. Another aspect of the matter is that Respondent has in addition to the
wordmark, slavishly copied the stylized version of the mark S.S. WHITE,
which is also referred to, in this area of law, as a device mark. A comparison
of the rival marks leaves no manner of doubt that the (device) marks are
identical and used in respect of identical goods falling within Class 10. For
ready reference, a comparison of the rival trademarks is as follows: -

It is apparent from the comparison chart that the stylisation of the
Petitioner’s mark is unique, distinctive and peculiar to the Petitioner, which
has been copied by the Respondent in its entirety.
38. As per the record, the Petitioner has been using this stylised mark and
its formatives in various countries. The earliest registrations of the said
stylised mark ‘ ’, discernible from the record, is for Republic of
Korea in 1991. In India, Petitioner has registered the mark as S.S. WHITE
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 28 of 52

11
BURS, INC./ .As can be seen the stylised device mark,
constitutes the dominant and essential feature of the mark ‘ ’.
39. The Respondent has not merely adopted the word mark ‘S.S. WHITE’
as their tradename but has gone a step further and slavishly imitated the
entire stylised representation, including the font, style, colour, size and
overall get-up of the Petitioner’s mark. This action of the Respondent is a
clear attempt to misrepresent to its customers its association as a part of the
international brand SS WHITE/ .
40. In similar facts, where again the respondent therein had copied the
device mark, a Co-ordinate Bench of this Court in case titled Kia Wang v.
12
The Registrar of Trademarks & Anr. , while allowing a rectification
petition held that such an action of the Respondent amounts to bad faith and
therefore such a mark is liable to be cancelled as per Section 11(10)(ii) of
the Act. The relevant para 18 and 19 of the judgment reads as under:
“18. There is yet another facet of the matter. A comparison of the rival trademarks
show that they are similar and Petitioner has also brought forth that Respondent
No.2 is using the impugned trademark for identical goods. For ready reference a
comparative of the rival trademarks is as follows:
……

19. The similarity in the two trademarks is writ large on a bare perusal. Two
consequences flow from this conclusion under the Trademarks regime. Firstly,
there is every likelihood of confusion amongst the public due to similarity of the
rival trademarks and identity of the goods of the competing parties and
consequent impact on the reputation and goodwill of the Petitioner. Secondly, this
makes the impugned mark vulnerable to cancellation of its registration under
Section 11(10)(ii) of the 1999 Act which requires the Registrar of Trade Marks,
while registering the mark, to take into consideration the bad faith involved, either
of the applicant or the opponent, affecting the right relating to the trade
mark.……..”

11
TM No. 609897
12
2023: DHC: 6684
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
19:41
C.O. (COMM.IPD-TM) 448/2022 & Anr. Page 29 of 52

[Emphasis Supplied]

41. In the opinion of this Court, the Respondent’s act of lifting the
complete stylised form of the Petitioner’s device mark, without any
plausible explanation and in the backdrop of its admitted knowledge of the
existence of goods bearing ‘S.S. WHITE’ mark in the Indian and
international market, clearly establishes an intention to ride upon the
goodwill and reputation of the Petitioner. The Respondent admits that it was
importing goods bearing the mark S.S. WHITE between 1992 to 1999 and
thus it is apparent that the mark was adopted by the Respondent for its goods
(in the same class) to mislead the customers. Such conduct of the
Respondent cannot, by any stretch, be characterised as honest or bona fide.
The foreseeable conclusion, therefore, is that the Respondent’s adoption of
the impugned mark is tainted with dishonesty and constitutes a clear attempt
to misappropriate the Petitioner’s proprietary rights and its reputation
associated with the said mark with the intention to mislead its customers in
India.
IV. Suppression of Material Facts and Failure to Disclose Prior Rights before the
Registrar

42. It is an admitted position that the Petitioner issued a cease-and-desist
notice dated 11.09.2012 to the Respondent, expressly asserting its prior
statutory rights in the mark ‘S.S. WHITE’, including its registration bearing
No. 609897 in Class 10. The said notice was duly replied to on 03.10.2012
by the Respondent through its trademark attorneys, L.S. Davar & Co.,
thereby establishing unequivocally that the Respondent, as well as its
counsel, had actual knowledge of the Petitioner’s prior rights and its
objection to the use of the impugned mark. This exchange of legal notices in
Signature Not Verified
Signed By:HEMANT
PRATAP SINGH
Signing Date:25.04.2026
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September-October 2012, occurred much prior to the grant of registration
and at a stage when the Respondent’s application was still under
consideration.
43. Despite such knowledge, neither the Respondent nor its trademark
attorney disclosed to the Registrar, the existence of the Petitioner’s prior
identical mark in Class 10, the factum of the receipt of cease-and-desist
notice dated 11.09.2012 and the subsisting dispute between the parties w.r.t
the impugned mark. This omission is particularly significant in light of the
fact that the Respondent and its trademark attorney were also aware that no
examination had been conducted in Class 10 in terms of Rule 33(1), and that
the Petitioner’s mark would have been cited had such examination been
properly undertaken. The failure to bring these material facts to the attention
of the Registrar amounts to suppression of material information which was
directly relevant to the issue of registrability under Section 11 of the Act.
In the considered opinion of this Court, the existence of a prior
identical registered mark on the register (since 1993) and a
contemporaneous dispute (2012) by the rival proprietor regarding its
unauthorized use constituted material facts, which go to the root of the
maintainability application.
44. The proceedings before the Trade Marks Registry are not adversarial
as between the applicant and the Registrar. However, the applicant bears a
bounden duty of candour and good faith in placing all relevant facts before
the Registrar. An applicant, as well as its authorized trademark attorney,
cannot be permitted to remain silent on material facts, including knowledge
of failure of a mandatory procedure and thereafter seek to take advantage of
procedural lapses on the part of the Registry.
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45. In these facts, admittedly the Registrar proceeded to grant registration
in ignorance of Petitioner’s registration held vide TM No. 609897 in Class
10 and the objections communicated by the Petitioner to the Respondent.
46. In these circumstances, the conduct of the Respondent reflects bad
faith and an attempt to obtain registration by suppression of material facts
solely by taking advantage of a material procedural lapse. An applicant
cannot be permitted to reap the benefit of an illegality, as any such
registration would be nothing but the fruits of a poisonous tree.

V. The registration obtained in bad faith is liable to be set aside under Section
11(10)(ii) of the Act


47. Section 11(10)(ii) of the Act mandates that, while considering an
application for registration or an opposition thereto, the Registrar shall take
into account the element of bad faith insofar as it affects the rights relating
to the trade mark. Section 11(10)(ii) of the Act reads as under: -
(10) While considering an application for registration of a trade mark and
opposition filed in respect thereof, the Registrar shall –
……..
(ii) take into consideration the bad faith involved either of the applicant
or the opponent affecting the right relating to the trade mark.
[Emphasis Supplied]

48. Where an applicant, with knowledge, actual or constructive, of a prior
mark and its proprietor’s rights, proceeds to adopt an identical or
deceptively similar mark, such adoption is prima facie tainted with bad faith
13
( BPI Sports LLC v. Saurabh Gulati & Anr. ) . The position is further
aggravated where such adoption is accompanied by suppression or non-
disclosure of material facts which would have a direct bearing on the

13
2023:DHC:2920, at paragraph nos. 38.2 to 38.8.
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question of registrability. In such circumstances, the registration, even if
granted, stands vitiated in law.
49. In view of the findings returned hereinabove, at section II, III and IV
against the Respondent, the Respondent’s adoption and registration of the
impugned mark are evidently vitiated by bad faith within the meaning of
Section 11(10)(ii) of the Act, and the dishonesty in adoption is by itself
sufficient to disentitle a party from claiming registration. The circumstances
clearly establish a mala fide intent to usurp the Petitioner’s goodwill. The
impugned registration, having been procured in such circumstances, is liable
to be refused and/or removed from the register.
VI. Respondent’s defence under Sections 12 and 34 of the Act are not sustainable

50. Pertinently, the Respondent does not, in substance, dispute the
historical origin, chain of title, or global adoption of the mark ‘S.S. WHITE’
by the Petitioner, nor does it effectively challenge the Petitioner’s global
reputation. Instead, the Respondent’s defence is primarily premised on its
honest and bona fide adoption of the impugned mark, and prior use in India.
Thus, rather than controverting the Petitioner’s proprietary rights in the
mark, the Respondent seeks to justify its own registration and continued use
by raising statutory defences and questioning the evidence of the Petitioner’s
claims in the Indian market.
51. As discussed in detail hereinabove, the Respondent’s defences are
devoid of merit, both on facts and in law. The Respondent has failed to
establish any independent, bona fide adoption of the impugned mark, or any
legally sustainable basis to justify its registration.
52. The Respondent’s plea of prior use under Section 34 of the Act and
the defence of ‘first in the market’ is misconceived and legally
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unsustainable. This Court has already held that the Respondent’s own case is
that it adopted the mark ‘SS WHITE’ at the instance of S.S. White, U.K. and
was engaged in import and sale of goods bearing the said mark. Such use,
being permissive or derivative, cannot confer independent proprietary rights.
The reliance on Neon Laboratories (supra) for the ‘first-to-market’
test is similarly misplaced. The said principle operates in a contest between
competing bona fide users. It cannot be invoked to legitimise use that is
admittedly derived from, and referable to, another proprietor’s mark. A
permissive or unauthorised user cannot, by mere passage of time, convert
such use into an independent right enforceable against the true proprietor.
53. The Respondent’s plea of honest concurrent use under Section 12 of
the Act is equally unsustainable. The requirement of honesty is foundational
to the invocation of Section 12. In the present case, the Respondent had
knowledge, actual, if not constructive, of the mark ‘S.S. WHITE’, adopted
the identical mark in conjunction with its association with S.S. White, U.K.,
and further copied the Petitioner’s stylised device in its entirety. Such
conduct is irreconcilable with the standard of honesty required under the
Act.
54. The Respondent’s challenge to the Petitioner’s transborder reputation
is also without merit. The Petitioner has placed on record evidence of its
global registrations, longstanding use, and commercial presence in India
through authorised distributors since 1991, supported by affidavit evidence
of sales. More significantly , in the facts of the present case, the issue of
transborder reputation pales into insignificance in light of the Respondent’s
own admission of adoption at the instance of S.S. White, U.K., which itself
establishes knowledge of the mark and its provenance.
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PRATAP SINGH
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55. The reliance on Toyota Jidosha Kabushiki Kaisha v. Prius Auto
Industries Ltd. (supra) is misplaced. That decision turned on the absence of
India-specific reputation at the relevant time. In the present case, the
Petitioner has demonstrated both actual use and presence in India, and, in
any event, the Respondent’s knowledge and derivative adoption render the
ratio of the said judgment inapplicable.
56. In light of the above, this Court holds that the mark ‘S.S. WHITE’,
being a coined and inherently distinctive mark with an established lineage
and goodwill, vests exclusively with the Petitioner. The Respondent has no
legal entitlement to adopt, use, or retain registration of the said mark.
VII. Non-examination of the Respondent’s application by the Trademark
Registry in Class 10 as per the statutory requirement of Rule 33(1) of Rules and
consequent illegal registration in contravention of Section 11(1) of the Act.


57. It is a matter of record that on 20.05.2011, the Respondent filed
trademark application No. 2147676 seeking registration of the impugned
logo mark ‘S.S. WHITE/ ’ in both Class 5 and Class 10. In Class 5,
the application covered goods such as cements, composite materials, etchant
gel, bond, filling materials, and bone grafting materials; whereas in Class 10,
it covered burs of all kinds, dental and surgical instruments, and allied
equipment. The application further contained a user claim dating back to
01.04.2000.
58. However, it has been admitted during the arguments, that the
Respondent, in fact, carries on business only in goods falling under Class 10
and not in respect of any goods under Class 5. It is further admitted that as
on the date of the application, i.e., 20.05.2011, the Respondent had not
commenced use in relation to Class 5 goods. Consequently, the declaration
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of use since 01.04.2000 in respect of Class 5 goods is demonstrably false
and misleading. Such a misstatement in the application is not a mere
irregularity but evidences lack of bona fides, particularly when the
registration itself is sought to be justified on the basis of alleged prior use.
59. Under Rule 33 of the Rules, the Registrar is mandated to examine
every application with reference to earlier registered marks and pending
applications in the relevant class, so as to ascertain whether the applied mark
is identical with or deceptively similar to existing marks in respect of same
or similar goods. This examination is intrinsically linked to the grounds of
refusal under Sections 9 and 11 of the Act. As clarified by the Division
14
Bench in L’Oréal India Pvt. Ltd. v. Rajesh Kumar Taneja (supra), the
examination process is not an empty formality, but a substantive safeguard
intended to prevent wrongful registrations and to preserve the purity of the
register. Therefore, in the present case, the Registrar was duty-bound to
conduct an independent and comprehensive examination of the
Respondent’s application in both Class 5 and Class 10.
60. It is, however, an undisputed position on record that the Examination
Report dated 07.08.2012 issued by the Trade Marks Registry, for TM no.
2147676, pertains only to Class 5 and does not reflect any examination
whatsoever in respect of Class 10. No material has been placed on record by
either the Registrar or the Respondent to demonstrate that any separate or
subsequent examination was conducted for Class 10. It is clear that there is a
lapse on the part of the Registrar in examiner report. This Court failed to
understand why the Registrar did not search for the earlier registered
trademarks in Class 10, which is the most relevant class. Despite the grave

14
At paragraph 29.
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lapse on the part of Registrar, the application of the Respondent was
proceeded further and the same was registered.
61. Petitioner contends that the Registrar’s failure to conduct the
examination for the marks registered in Class 10 led to incorrect acceptance
of the trademark application for Class 10 and the consequent registration.
The Petitioner contends that the failure of the Registrar to discharge its
statutory duty under Rule 33 has led to an identical mark for identical goods
wrongly registered in favour of the Respondent, as such registration is in
contravention of Section 11(1) of the Act of 1999.
62. This Court agrees to the said contentions of the Petitioner. The
consequence of such non-examination is significant. Had the Registrar
discharged its statutory obligation under Rule 33 in respect of Class 10, the
Petitioner’s prior registered mark ‘S.S. WHITE BURS INC./ ’,
bearing Registration No. 609897 with an application date of 19.10.1993,
would necessarily have been cited as a conflicting mark.
Given that the rival marks are identical and pertain to identical goods,
the bar under Section 11(1) of the Act would have squarely applied,
mandating refusal of the Respondent’s application at the threshold. The
Petitioner has, in fact, placed on record an independent search report dated
25.07.2013 demonstrating that its mark appears in the Register for Class 10,
thereby reinforcing that a proper search by the Registry would have
inevitably revealed the conflict.
63. The Respondent’s contention that the Examination Report dated
07.08.2012 covered both Class 5 and Class 10 is factually untenable. A plain
reading of the said report makes it evident that it is confined exclusively to
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Class 5. The absence of any reference to Class 10 marks or objections
therein conclusively establishes that no examination was undertaken for the
relevant class.
64. In the absence of any documentary evidence evidencing examination
in Class 10, it must be held that the Respondent’s application escaped the
mandatory scrutiny required under Rule 33 in respect of the very class in
which it claims actual use and commercial activity. This omission is not
peripheral but strikes at the core of the registration process.
65. In these circumstances, the non-compliance with Rule 33 stands
established beyond doubt. The Registrar failed to conduct the mandatory
examination in Class 10, which was the primary and relevant class for the
Respondent’s goods. This failure directly resulted in the registration of an
identical mark for identical goods, in clear contravention of Section 11(1) of
the Act.
66. The Division Bench of this Court in its judgement titled Ashiana
15
Ispat Limited v. Kamdhenu Limited & Ors has categorically held that
the examination under Rule 33 is a substantive and mandatory exercise, and
that failure on the part of the Registrar to cite prior identical or deceptively
similar marks confers a valuable right upon the aggrieved proprietor to
challenge such omission. The Court emphasized that the Registrar is under a
bounden duty to confront the applicant with all conflicting marks, and any
remissness in this regard is actionable. The relevant paragraphs of the same
are produced as under:
11.10 There can be no manner of doubt that the exercise of examination of
an application for registration of a trade mark, issuance of FER if deemed
appropriate, the response thereto, the consideration thereof and passing of

15
2025: DHC:7801-DB
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final orders after hearing the applicant is an exhaustive and detailed
exercise, as envisaged in Rule 33 of the TMR . Failure, on the part of the
Registrar, to diligently comply with the said procedure, is certainly actionable.
Rule 33(1) specifically requires the Registrar to search among the existing
registered trademarks, or trademarks in respect of which applications for
registration are pending, as to whether there are any trade marks which are
deceptively similar to, or identical with, the mark of which the applicant seeks
registration. If there are, it is the statutory duty of the Registrar to require the
applicant, in the FER which the Registrar would issue, to satisfy the Registrar
that the trade mark forming subject matter of the application nonetheless merits
registration, despite the existing trademarks that the Registrar chooses to cite.
Needless to say, it shall be open to the applicant, in such circumstances, to
satisfy the Registrar that the mark of which the applicant seeks registration is
not identical or deceptively similar to any of the cited marks.

11.11 It is, therefore, the bounden duty of the Registrar to confront the
applicant seeking registration of a trade mark with all other trademarks,
earlier registered or in respect of which applications for registration are
pending, which, in the perception of the Registrar, are identical or
deceptively similar to the trade mark of which the applicant seeks
registration. Equally, it would be the entitlement of the proprietor of any such
deceptively similar, or identical, trademark, registered prior in point of time or
in respect of which an application for registration is pending, to have its mark
cited by the Registrar as a rival mark. This is a valuable right, as a proprietor of
a registered trade mark is entitled to every opportunity to protect his
intellectual property. If, therefore, the Registrar is remiss in his responsibility
to cite, by way of FER issued to the applicant, the identical or deceptively
similar marks which are already on the register, or of which applications for
registration are pending, the proprietor of such registered trademarks, or the
applicant of an application seeking registration of such an identical or similar
trade mark, would be within his right to question the action of the Registrar as
not having been undertaken in accordance with Rule 33 of the TMR read with
Section 20 of the TMA.
……
11.16 We are in agreement with Mr. Sai Deepak that the advertisement of the
application by the Registrar of Trademarks is not a purely ministerial act. The
Registrar is required to apply his mind as to whether any rival marks are in
existence and to issue an appropriate FER in a case where such rival marks
exist before advertising the application. The decision to advertise the
application is, therefore, in our view, a decision against which a writ petition
under Article 226 of the Constitution is maintainable .
[Emphasis Supplied]

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PRATAP SINGH
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67. There can therefore be no cavil that the exercise of examination to be
undertaken under Rule 33 is mandatory and has to be carried out by the
Registrar diligently, as not only is it intended to maintain the purity of the
register but also to ensure Registrar’s compliance of the provisions of
Section 9 and Section 11 of the Act. The said principle squarely applies to
the present case, where the Petitioner has been deprived of its statutory right
to have its prior mark considered at the stage of examination.
68. Undoubtedly, had the Registrar conducted the examination in Class
10, the Petitioner’s prior registered mark ‘S.S. WHITE BURS INC./
’registered vide TM application no. 609897, would have
been cited and, in view of the identity of marks and goods, the Respondent’s
application would have been refused. The failure to do so has resulted in a
registration which is ex facie contrary to Section 11(1).
69. This Court is, therefore, of the considered opinion that the non-
examination of the Respondent’s application in Class 10 constitutes a
material and substantive error, which has vitiated the entire registration
process. The illegality of the registration is not curable, and its cancellation
cannot be avoided merely because the Registrar committed an error in
wrongly registering it. The mandatory statutory safeguard envisaged under
Rule 33 has been bypassed, leading to the illegal grant of registration in
favour of the Respondent.
70. The lapse on the part of the Registrar is not a trivial or technical
defect. The failure to conduct a search in the most relevant class, Class 10,
where the Respondent admittedly operates, is inexplicable and has resulted
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in the wrongful registration of an identical mark. Such an error renders the
impugned registration unsustainable in law.
71. The Respondent’s reliance on L’Oréal India Pvt. Ltd. v. Rajesh
Kumar Taneja (supra) to contend that non-examination is a mere procedural
irregularity is misplaced. In that case, the Court found that despite a minor
error in the search process, the marks were neither identical nor deceptively
similar and did not offend Sections 9 or 11.
In contrast, the present case involves identical marks used for
identical goods, and the registration is clearly hit by Section 11(1) of the
Act. The failure of the Registrar to conduct examination in Class 10 has
directly resulted in the grant of a registration which is statutorily
impermissible. Such an illegality is not curable and cannot be sustained
merely on the ground that it arose from an error on the part of the Registry.
A registration obtained in contravention of the Act does not confer any
enforceable rights and is liable to be set aside.
72. In the considered opinion of this Court, the registration of the
impugned mark was illegal at its inception and stood vitiated due to the non-
compliance of the mandatory statutory procedure. such a registration cannot
be sustained in law and is liable to be set aside.
VIII. Failure of the Registrar to exercise power of withdrawal under Section 19
read with Rule 38 despite notice of error and prior rights

73. The acceptance of a trademark application under Rule 33(1) is not
irrevocable, and the Registrar retains the statutory power to revisit and
withdraw such acceptance. This power is expressly embodied in Section 19
of the Act read with Rule 38 of the Rules, which enables the Registrar, at
any stage after acceptance but prior to registration, to withdraw acceptance
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if the mark ought not to have been accepted or if such acceptance was
erroneous. The said provision is a crucial safeguard to ensure that
inadvertent acceptances do not culminate in illegal registrations, thereby
preserving the purity of the register. Section 19 of the Act and Rule 38 read
as under:
Section 19

19. Withdrawal of acceptance.—Where, after the acceptance of an application for
registration of a trade mark but before its registration, the Registrar is satisfied—

(a) that the application has been accepted in error; or

(b) that in the circumstances of the case the trade mark should not be registered or
should be registered subject to conditions or limitations or to conditions
additional to or different from the conditions or limitations subject to which the
application has been accepted,

the Registrar may, after hearing the applicant if he so desires, withdraw the
acceptance and proceed as if the application had not been accepted.

Rule 38

“38. Withdrawal of acceptance by the Registrar.— (1) If, after the acceptance of
an application but before the registration of the trademark, the Registrar has any
objection to the acceptance of the application on the ground that it was accepted
in error, or that the trademark ought not to have been accepted in the
circumstances of the case, or proposes that the trademark should be registered
only subject to conditions, limitations, divisions or to conditions additional to or
different from the conditions, or limitations, subject to which the application has
been accepted, the Registrar shall communicate such objection in writing to the
applicant.

(2) Unless within thirty days from the date of receipt of the communication
mentioned in sub-rule (1), the applicant amends his application to comply with
the requirements of the Registrar or applies for a hearing, the acceptance of the
application shall be deemed to be withdrawn by the Registrar, and the application
shall proceed as if it had not been accepted.

(3) Where the applicant intimates the Registrar within the period mentioned in
sub-rule (2) that he desires to be heard, the Registrar shall give notice to the
applicant of a date when he will hear him. Such appointment shall be for a date at
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least fifteen days after the date of the notice, unless the applicant consents to a
shorter notice. The applicant may state that he does not desire to be heard and
submit such submissions, as he may consider desirable.

(4) The Registrar may, after hearing the applicant, on considering the
submissions, if any, of the applicant, pass such orders as he may deem fit.”
[ Emphasis supplied]

74. In the present case, the Respondent’s application was accepted and
advertised on 11.03.2013.
It is correct that the Petitioner failed to file a formal opposition within
the prescribed period under Rule 42 of the Rules.
However, prior to the grant of registration, the Petitioner filed a
detailed [protest] petition dated 26.07.2013 before the Registrar, specifically
drawing its attention to the existence of Petitioner’s prior registered mark
bearing TM No. 609897 in Class 10 and raising substantive objections to the
Respondent’s TM No. 2147676. The Petitioner categorically pointed out that
no examination had been conducted in Class 10 in terms of Rule 33(1), and
that had such examination been undertaken, the conflicting prior mark on
the register would have been revealed. The Petitioner further highlighted
that the Respondent had falsely claimed use in respect of Class 5 goods
despite not carrying on any business therein, and also raised the issue of
dishonest adoption, including the copying of the Petitioner’s stylised mark
and the historical lineage of the mark ‘S.S. WHITE’. Despite the gravity of
these objections, the Registrar neither acknowledged nor adjudicated upon
the protest petition, even though a reminder was subsequently issued by the
Petitioner.
75. The Registrar has elected not to file any response to this petition.
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PRATAP SINGH
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76. In the considered opinion of this Court, the Registrar’s inaction
constitutes its failure to exercise jurisdiction vested under Section 19 of the
Act read with Rule 38 of the Rules. Once material facts were brought to its
attention, through the [protest] petition, demonstrating that the acceptance
suffered from serious infirmities, including non-compliance with Rule 33,
existence of a prior identical mark in Class 10, and allegations of bad faith
adoption, it was incumbent upon the Registrar to apply its mind and, if
satisfied, to invoke its power to withdraw acceptance. The failure to do so
reflects a breach of the statutory duty to safeguard the purity of the register.
77. The combined effect of the Registrar’s omission to conduct a proper
examination under Rule 33(1) and the subsequent failure of the Registrar to
act upon the [protest] petition under Section 19 read with Rule 38 has
resulted in the impugned mark being registered in clear contravention of
Section 11(1) of the Act.
78. It is unfortunate that though the Petitioner had approached the Court
by filing a writ petition i.e., W.P(C) 5174/2013 on 16.08.2013 challenging
the acceptance of the application. Notice in the writ petition was issued on
19.08.2013. Even at this point, the Registrar had an opportunity to examine
its record. However, instead of examining its record to ascertain the
procedural lapse, the Registrar proceeded to grant impugned registration to
the Respondent on 13.11.2013. This would have been a fit case for imposing
costs on the concerned Registrar for overreaching the judicial process and
abdicating its obligation under the statute. However, since a long time has
elapsed, this Court is refraining from imposing costs. However, the Court
strongly deprecates the failure of mandatory procedure by the Registrar in
this matter while granting the registration to the Respondent.
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PRATAP SINGH
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The issue of inexplicable failure of examination process under Rule
33(1) by the Registrar and failure of the Registrar to exercise its jurisdiction
under Section 19 r/w Rule 38 was also highlighted by the IPAB in Prajapati
16
Constructions Ltd. v. Manoj Ramanand Prajapad and the Tribunal
expressed serious concern on these lapses and its impact on the public
interest.
79. The acts and omissions of the concerned officers in the Trademark
Registry, which has led to the registration of the impugned mark cannot be
overlooked by simply allowing this petition as it would not rectify the ills
which are plaguing the examination process.
The Registrar is thus, directed to examine the entire file of TM No.
2147676 from the date of its filing to the date of its registration and identify
the concerned officers, who dealt with this matter, and identify the
officer(s), who are responsible for the mandatory procedural lapse of Rule
33(1), the failure to exercise the powers under Section 19 read with Rule 38
despite receipt of the petition dated 26.07.2013, as well as the officer
responsible for registering the mark during the pendency of W.P(C)
5174/2013. After ascertaining the identity of the officer(s) responsible for
the omissions, the Registrar will initiate appropriate disciplinary action
against the concerned officer(s). The entire exercise should be completed
within six (6) weeks from today.
IX. No delay or latches by the Petitioner


80. The contention of the Respondent that the Petitioner is estopped from
maintaining the present rectification/cancellation proceedings on account of
its failure to file a formal opposition under Section 21 of the Act, when the

16
2018 SCC OnLine IPAB 313, at paragraph nos. 19 to 25.
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application was advertised is misconceived and legally untenable. It is a
settled position that the remedy of rectification is independent and co-
extensive with the grounds of invalidity under the Act, and the mere non-
filing of an opposition within the prescribed period does not operate as a bar
to seeking cancellation of an erroneously granted registration, particularly
where the impugned registration is contrary to the provisions of Sections 9
and 11 or is vitiated by bad faith.
81. The record clearly shows that the Petitioner has been vigilant and
proactive in asserting its rights at every relevant stage. Upon gaining
knowledge of the Respondent’s use, the Petitioner issued a cease-and-desist
notice dated 11.09.2012, to which the Respondent replied on 03.10.2012,
but significantly failed to disclose the pendency of its trademark application.
Thereafter, upon becoming aware of the application, the Petitioner promptly
filed a detailed [protest] petition before the Registrar on 26.07.2013,
specifically raising objections regarding non-examination under Rule 33,
existence of its prior registered mark in Class 10, and the Respondent’s
dishonest adoption. When no action was taken by the Registry, the Petitioner
approached this Court by way of a writ petition on 16.08.2013. The said writ
petition was disposed of with liberty to avail the alternative statutory
remedy, pursuant to which the present cancellation petition has been filed
without undue delay.
These steps unequivocally establish that the Petitioner has
consistently opposed the Respondent’s mark and has not acquiesced in its
use or registration at any point of time.
82. In these circumstances, the plea of delay, laches, or acquiescence is
wholly devoid of merit. The statutory right of rectification cannot be
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defeated by such conduct. Accordingly, the Respondent’s contention that the
Petitioner has forfeited its right to challenge the impugned registration is
liable to be rejected, and the present petition is maintainable both in law and
on facts.
X. Registration of the impugned mark in Class 5 also liable to be set aside

83. The conduct of the Respondent in filing a common application no.
2147676 covering both Class 5 and Class 10 goods was not innocuous and
warrants close scrutiny, as the facts of the present case reveal. The material
on record establishes that the Respondent was, at all relevant times, engaged
only in goods falling under Class 10 and had no business, manufacture, or
trade in respect of the goods specified in Class 5. Despite this, the
Respondent proceeded to include Class 5 in its common application and
made a categorical declaration of use since 01.04.2000. This declaration qua
Class 5 is admittedly false. The absence of any bona fide commercial
activity in Class 5 goods, coupled with the lack of any plausible explanation
for seeking such registration, renders the application in respect of Class 5
highly suspect. It cannot be accepted that such filing for Class 5 was made in
good faith.
The events, as they transpired in the year 2011-2013 before the
Registrar, lead this Court to form an opinion, that the inclusion of Class 5
was not incidental but a considered attempt to influence the examination
process and circumvent scrutiny of the application in Class 10, where the
Petitioner’s prior identical mark stood registered. It appears that there was a
loophole in the office of the Registrar in the examination process, where a
common application filed for registration in different classes could skip
examination and Respondent was aware of this loophole. It is unfortunate
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PRATAP SINGH
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that Respondent succeeded in overcoming the examination process of Class
10 by filing such a common application.
84. Further, the impugned mark ‘S.S. WHITE’ is a coined and distinctive
mark of the Petitioner, supported by longstanding global use, registrations
across multiple jurisdictions, and prior statutory rights in India. The
Respondent’s adoption of the said mark, including its stylised device form,
has already been found to be dishonest and without authorization. Insofar as
Class 5 is concerned, the illegality is compounded by the false claim of user.
It is an admitted position that the Respondent neither used the mark in
relation to Class 5 goods from 01.04.2000 till the date of application
20.05.2011, nor has it commenced such use even thereafter. The acceptance
and eventual registration of the mark in Class 5 on the basis of a false user
claim is thus contrary to the Act and is therefore illegal.
85. In view of the above, this Court is of the considered opinion that the
Respondent’s application in Class 5 was filed without bona fide intent and
as observed above forms part of bad faith attempt aimed at securing
registration in Class 10 by improper means. Such conduct squarely attracts
the mischief of bad faith under Section 11(10)(ii) of the Act. Accordingly,
the registration of the impugned mark in Class 5 is also unsustainable in law
and is liable to be set aside on this ground alone.
XI. Conclusion
86. In view of the foregoing discussion, this Court is satisfied that the
impugned TM no. 2147676 in favour of the Respondent squarely falls
within the meaning of an ‘entry made without sufficient cause’ as well as an
‘entry wrongly remaining on the register’ within the meaning of Section
57(2) of the Act. The registration, having been obtained in contravention of
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PRATAP SINGH
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statutory provisions and tainted by lack of bona fides, cannot be permitted to
subsist.
87. Accordingly, the Respondent’s impugned registration bearing TM No.
2147676 in Classes 5 and 10 is liable to be set aside and removed from the
register. Consequently, the rectification petition being C.O. (COMM.IPD-
TM) 448/2022 is allowed.
C.O. (COMM.IPD-TM) 299/2023
88. This petition has been filed by S.S. White Dental Private Limited
against the S.S. White Burs Inc. For the sake of continuity, S.S. White
Dental Private Limited is referred to as Respondent, and S.S. White Burs
Inc. is referred to as Petitioner.
89. The Respondent in this cross-rectification petition has taken the
following grounds for seeking cancellation/rectification of the Petitioner’s
Trade Mark Registration No. 609897 in Class 10 for the mark ‘S.S. WHITE
BURS INC’: – (i) that the Petitioner is merely an assignee and does not
possess valid proprietary rights in India; (ii) that there has been no bona fide
use of the mark in India and the registration is liable to be removed under
Section 47(1)(a) and (b) of the Act; (iii) that the mark is devoid of
distinctiveness and is hit by Sections 9(1)(a), (b) and (c); (iv) that the
Respondent is the prior user and proprietor of the mark ‘S.S. WHITE’ in
India; (v) that the Petitioner’s registration is contrary to Sections 11(1),
11(3) and 11(10) of the Act; and (vi) that the registration is liable to be
removed under Section 57(2) being an entry made without sufficient cause
and wrongly remaining on the register.
90. This Court has already, in the preceding discussion in C.O.
(COMM.IPD-TM) 448/2022, exhaustively examined legal title of the
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Petitioner and has categorically held that the proprietary rights in the mark
‘S.S. WHITE’ validly devolved upon the Petitioner. The contention of the
Respondent that the Petitioner is merely an assignee without enforceable
rights in India is therefore contrary to the documentary record and is
rejected.
91. Insofar as the ground of non-use under Section 47 is concerned, the
same is liable to be rejected. The material on record, including the affidavit
evidence of sales, establishes that the Petitioner has commercially exploited
the mark ‘S.S. WHITE’ in India through its distribution network. The
Respondent’s own pleadings further acknowledge the presence of the
Petitioner’s goods in the Indian market, including imports of products
bearing the said mark during the period 1992-1999, and the certificates (of
the year 2013) issued by dentists/orthodontics (filed by Respondent itself)
claiming to be a purchaser of Petitioner’s products from the distributors.
92. The contention that the mark ‘S.S. WHITE’ is devoid of
distinctiveness or is descriptive within the meaning of Sections 9(1)(a), (b)
and (c) is wholly misconceived. This Court has already held that the mark is
a coined mark derived from the name of its founder and has acquired
inherent distinctiveness. The Respondent’s own inconsistent stand, including
its explanation before the ROC that the mark is an acronym, further
undermine its challenge to distinctiveness.
93. The Respondent’s claim of being a prior user and proprietor of the
mark ‘S.S. WHITE’ in India has already been rejected by this Court.
94. The grounds urged under Sections 11(1), 11(3) and 11(10) are equally
untenable. These provisions operate to prevent registration of marks which
conflict with earlier marks or are adopted in bad faith. In the present case, it
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is the Respondent whose registration have been found to be hit by these
provisions. The Petitioner, being the prior adopter and lawful proprietor,
cannot be non-suited on these grounds.
95. In view of the findings returned hereinabove, none of the grounds
urged by the Respondent in its cross-rectification petition are sustainable
either in fact or in law.
96. Accordingly, the cross-rectification petition being C.O. (COMM.IPD-
TM) 299/2023, seeking cancellation/rectification of the Petitioner’s Trade
Mark Registration No. 609897 in Class 10 for the mark ‘S.S. WHITE BURS
INC’, is devoid of merit and is hereby dismissed.
Miscellaneous Directions for Disposal of existing stock available with the
Respondent i.e., S.S. White Dental Private Limited

97. The Respondent presumably has existing stocks bearing the impugned
mark S.S. WHITE. The Respondent will be at liberty to dispose of the said
goods within one month from today, subject to rendering accounts of the
sales before the learned Single Judge in CS(COMM) No. 26 of 2015 (filed
by the Petitioner). If the Respondent wishes to avail of this leave, it shall
first file an affidavit of its existing stock with manufacturing date and batch
number before the learned Single Judge in CS(COMM) No. 26 of 2015,
within one (1) week. Subject to filing the said affidavit, the Respondent will
be at liberty to dispose of its existing stock.
In case, the Respondent requires additional time to dispose of its stock
it shall approach the learned Single Judge in the aforesaid suit for extension
of time. This direction has been issued, keeping in view the fact that the
Respondent has continued to use the impugned mark during the pendency of

this petition.
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PRATAP SINGH
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Costs
98. Having regard to the protracted nature of the litigation spanning over
14 long years, and the fact that the Petitioner had, at various stages,
extended opportunities to the Respondent to resolve the dispute amicably,
including through mediation, this Court is of the considered view that the
present case warrants imposition of costs.
99. Accordingly, costs of Rs. 10,00,000/- for each petition is granted in
favour of the Petitioner, S.S. White, U.S.A., and against the Respondent,
S.S. White Dental Pvt. Ltd., India. The total costs awarded are
Rs. 20,00,000/- (Twenty Lakhs). The said costs are moderate and reasonable
in the facts and circumstances of the case and are imposed to compensate the
successful party and to discourage protracted litigation.
100. The costs shall be paid within a period of six (6) weeks.
101. The Registrar will complete the inquiry directed at paragraph 79
under section VIII of this order, within a period of six (6) weeks from today
and place the outcome of the decision before the Roster Bench. Non-
compliance of this direction in the time bound period will invite stringent
action. The order has been pronounced in open Court and in the presence of
the counsel for the Registrar.
102. Though the petitions stand disposed of, list for compliance of the
aforesaid directions to the Respondent/S.S. White Dental Pvt. Ltd. and the
Registrar of Trademarks before the Roster Bench on 17.07.2026 .


MANMEET PRITAM SINGH ARORA, J

APRIL 25, 2026/hp/AM/IB
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PRATAP SINGH
Signing Date:25.04.2026
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