Ramesh Bishnoi vs The Registrar of Trade Marks,

CMA (TM) No.13 of 2026
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on:12.10.2026 Pronounced on: 30.10.2026
CORAM
THE HON'BLE MR.JUSTICE P.B. BALAJI
CMA (TM) No.13 of 2026
Ramesh Bishnoi
No.240/443, 1st Floor,
Sydenhams Road,
Apparao Gardens, Choolai,
Chennai - 600 112.
..Appellant(s)
Vs
The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Buildings,
G.S.T. Road, Guindy,
Chennai - 600 032.
..Respondent(s)
PRAYER: This Civil Miscellaneous Appeal is filed under Section 91 of the
Trade Marks Act, 1999 to allow the Appeal against the order of the Respondent
dated 02.03.2026 and set aside the same and accept the Trade Mark Application
No.4869008 filed on 18.02.2021 and advertise in the Trade Marks Journal.
For Appellant(s): Mrs.Gladys Rosette C.Daniel
For Respondent(s): Mr.S.Nelson,
Central Government Standing Counsel
JUDGEMENT
The above appeal has been preferred against the order dated 02.03.2026
passed by the Registrar of Trade Marks in Trade Mark Application
No.4869008.
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2. I have heard Mrs.Gladys Rosette C.Daniel, learned counsel for the
appellant and Mr.S.Nelson, learned Central Government Standing Counsel for
the respondent.
3. Submission of Mrs.Gladys Rosette C.Daniel, learned counsel for the
appellant are summarised as follows:-
The appellant has adopted the Trade Mark, ELITE (Device), along with
the tagline “Light Up Your Life” under Class 11. The appellant filed a
Trademark Application on 31.03.2016 in Application No.3224642 for “ELITE”,
“Light up Your Life”(Device) in Class 11, claiming that the appellant has been
using the Trademark, ELITE ever since 2009.
4. One Mrs.Saroj Sharma, in and by Application No.3557184, again
under Class 11, had applied for registration of Mark “ELITE” on 25.05.2017.
It is the further contention of the learned counsel for the appellant that a
partnership firm was constituted under the name and style of “M/s.Micro
Lights” on 05.10.2017 in whose favour, the appellant granted licence of the
trademark “Elite Light Up Your Life” (Device) on 09.10.2017. However, the
Trade Mark Application No.3224642 in Class 11, for "Elite Light Up Your
Life" (Device), was refused by the respondent citing the objection that the mark
has already been registered in the name of Mrs.Saroj Sharma. The appellant
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CMA (TM) No.13 of 2026
issued a lawyers notice to the said Mrs.Saroj Sharma on 19.01.2021, to which a
reply notice was also received by the appellant on 02.02.2021. It is thereafter
on 18.02.2021 that the appellant filed the impugned Application for “Elite”
(Device) under Class 11 in Application No.4869008. An examination report
was issued on 24.02.2021, to which the appellant sent a reply on 04.03.2021. In
the meantime Mrs.Saroj Sharma, proprietorix of Vinayak Electricals India,
issued a lawyer's notice on 08.03.2021, to which the appellant sent a detailed
reply on 15.03.2021. Pursuant to the exchange of the notices, the said Saroj
Sharma, objected to the registration of appellant's Trade Mark “Elite” (Device)
under A.No.4869008 under Class 11, on 16.04.2021. In response to the said
objections, the appellant filed a reply along with supporting documents on
23.06.2021 and ultimately, the respondent refused the appellant’s objection.
5.Mrs.Gladys Daniel, learned counsel would further contended that as
against the said refusal of the appellant’s application, the appellant preferred an
Appeal before this Court and by order dated 14.03.2024, the impugned order
dated 14.09.2023 passed by the respondent was set aside and the matter was
remitted for fresh consideration. On 06.12.2024, the respondent proceeded to
declare the withdrawal letter filed by the objector, Mrs.Saroj Sharma as void
and infructuous and after conducting a virtual hearing, as permissible under
Rule 115 of the Trade Marks Rules, 2017, (in short ‘Trade Marks Rules’) the
respondent once again refused to register the appellant’s application “Elite”
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CMA (TM) No.13 of 2026
(Device) by order dated 02.03.2026, which is presently under challenge in the
present appeal.
6. It is the further contention of the learned counsel for the appellant
Mrs.Gladys Daniel that even the impugned order dated 02.03.2026 was not
communicated to the appellant and the appellant learnt about it only after
conducting an independent search with regard to the status of the Trade Mark
Application and thereafter, had to repeatedly follow up with the respondent to
obtain a copy of the order to enable the appellant to prefer the present appeal.
7. Mrs.Gladys Daniel, learned counsel for the appellant would firstly
contend that the objector Mrs.Saroj Sharma was herself doing business with the
appellant and the respondent, without even appreciating the documentary
evidence relied on by the appellant, has erroneously refused the appellant’s
application. Inviting my attention to the impugned order in this regard,
Mrs.Gladys Daniel, learned counsel would contend the order to be summary
and unreasoned. She would further contend that under the provisions of the
Trade Marks Act, 1999, (in short ‘Trade Marks Act’), even an applicant who is
able to substantiate and establish honest, concurrent and uninterpreted usage is
entitled to registration of Trade Mark, under Section 12 of the Trade Marks Act
and therefore the appellant's request, could not have refused the application at
the threshold. It is therefore the primordial submission of Mrs.Gladys Daniel,
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CMA (TM) No.13 of 2026
that the impugned order is in fact, premature and the rejection of the appellant’s
Application is wholly unsustainable. She would further state that even after
causing an advertisement in the Trademarks journal, any person is entitled to
object and that would include Mrs.Saroj Sharma, who had earlier objected to the
registration of the mark as prayed for by the appellant and she would therefore
contend that even the said objector will not be in any manner prejudiced, as her
rights are intact and she could always object to the registration of the mark at
the appropriate stage, post advertisement in the Trademarks journal.
8. Even on merits, it is the contention of Mrs.Gladys Daniel, that the
notices were exchanged way back in the year 2021 and despite passage of five
years, the objector, Mrs.Saroj Sharma has not initiated any suit or proceedings
against the appellant and there is also a bar of limitation under Section 33 of the
Trade Marks Act. She would further contend that the only step that has been
taken by the objector is to initiate pre-suit mediation proceedings as
contemplated under the Commercial Courts Act and as on date, there is no
interim order operating against the respondent or even the appellant and
therefore, the learned counsel contends that there is absolutely no legal bar or
impediment for the respondent to entertain the application and proceed for
causing the advertisement in the Trademark journal.
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CMA (TM) No.13 of 2026
9. The learned counsel would also take me through the whatsapp chat
between the husband of the objector, Mrs.Saroj Sharma and appellant to fortify
her submission that the appellant is not a stranger to the objector, Mrs.Saroj
Sharma and that the respondent is well aware of the business being carried on
by the appellant under the name and style of “Elite” (Device) and the long
silence on the part of the objector also has to be necessarily taken into account,
which unfortunately, has not been addressed by the respondent, in the impugned
order.
10. The learned Central Government Standing Counsel appearing for the
respondent, Mr.Nelson, would submit that even as early as on 24.02.2021, the
respondent had addressed a communication to the appellant's attorneys, in
connection with the Application No.4869008 in Class 11, had objected to the
registration of the Mark, in view of Section 11(1) of the Trademark Act,
contending that the mark which is sought to be registered by the appellant is
identical with or similar to earlier marks in respect of identical or similar
description of goods or service and that there is a likelihood of confusion on the
part of the public. He would also point out that in the examination report, the
Registrar of Trademarks has also set out details of same/similar trademarks
which have already been registered for same/similar, goods/services. He would
further rely on Section 48 as well as 49 of the Trademarks Act and contend that
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CMA (TM) No.13 of 2026
no user affidavit has also been filed by the appellant and therefore, there is
absolutely no error committed by the Registrar of Trademarks in refusing the
Application for registration of the applicant’s Trademark. He would therefore
pray for dismissal of the appeal.
11. I have carefully considered the submissions advanced by the learned
counsel on either side.
12. Firstly, it is to be remembered that the stage at which the application
of the appellant has been refused is at the stage of the examination report, prior
to causing of an advertisement in the Trademark journal. On going through the
documents that have been filed in support of the claim of the appellant, it is
clear the appellant has been using the mark “ELITE” as early as from 2009
onwards. In fact, as rightly pointed out by Mrs.Gladys Daniel, the whasapp
chat between the appellant and husband of the first objector, Mrs.Saroj Sharma,
also only goes to show that the objector cannot feign ignorance about the use of
the mark “ELITE” by the appellant. Whatsapp chat messages are way back in
the year 2019 and pursuant to such whatsapp messages alone, the wife of
Mr.Mool Chand Sharma viz., Mrs.Saroj Shama, has obtained registration
certificate in Class 11 dated 23.10.2019. Though there have been exchange of
notices even in January and February 2021, despite knowing the fact that the
appellant has been using the mark “ELITE”, Mrs.Saroj Sharma, has not taken
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CMA (TM) No.13 of 2026
any steps for a clear five years and more and as fairly conceded by Mrs.Gladys
Daniel, learned counsel, a suit has been filed recently and it is only at the pre-
suit mediation stage and suit is not even numbered. However, there is no
interim injunction operating in favour of the objector, Mrs.Saroj Sharma as on
date.
13. As regards the impugned order, the respondent has rightly contended
that the appellant has erroneously applied objections under Section 11 (1) of the
Trademarks Act, citing similarity of marks as well as similarity of goods and
services covered under such marks and that the same would cause confusion in
the minds of the public. Under Section 12 of the Trademarks Act, even when it
is found that there has been an honest and concurrent use or other special
circumstances, then also, the Registrar can permit registration of the mark in the
name of more than one proprietor, even though the marks are identical or
similar and already registered with the Registrar. The impugned order does not
even address the possibility of registration of the appellant’s mark under Section
12, which in any event, can be pressed into service, only after the mark is
advertised in the Trade Marks journal and there are no objections to the same.
Therefore, it was clearly premature on the part of the Registry viz., the
respondent to have put Section 11(1) of the Trademarks Act, against the
appellant.
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CMA (TM) No.13 of 2026
14. As regards the objections under Section 48 and 49 of the Trademarks
Act, I do not see the same would have any application to the facts of the present
case. Under Section 48 of the Act, a person other than the registered proprietor
of the Trademarks, viz., a registered user thereof, in respect of any or all of the
goods or services in respect of which, the Trademark is registered can invoke
this provision. This deals with cases where the registered proprietor of the mark
has entered into an agreement with the user who seeks registration of such use.
In other words, Sections 48 and 49 of the Trademarks Act, would come into
play where the applicant seeking registration is a licensee. However in the
present case, the appellant admittedly, claims to an independent right over the
mark “ELITE” and therefore, I am unable to countenance the objections of
Mr.Nelson, learned Central Government Standing Counsel that since user
affidavit has not been filed in compliance with Sections 48 and 49 of the Act,
the impugned order has to be necessarily sustained.
15. In the light of the foregoing discussions, I am satisfied that the
impugned order is clearly perverse and does not even factor the express
provisions of the Trade Marks Act and at the nascent stage, the respondent
ought not to have invoked the bar under Section 11(1) of the Trademarks Act
and put it against the appellant, to refuse the application as not registrable. The
order is flawed for the various reasons discussed herein above and hence, as
already dealt with, no prejudice is caused to any person, including the person
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CMA (TM) No.13 of 2026
who had objected in 2019 or has got a registration in the year 2019, since it
would always be open to any person including the earlier objector to object
once the mark is put up for advertisement in the Trademarks journal.
16. In the light of the above, I am inclined to set aside the impugned order
dated 02.03.2026 and allow the Appeal. Consequently, the respondent shall
proceed to cause advertisement of the appellant's mark in the Trade Mark
journal and subject to objections that may be forthcoming for the said
advertisement, the application of the appellant shall be decided in accordance
with law. No costs.
30-10-2026
Index: Yes
Speaking order
Neutral Citation: Yes
RKP
To
The Registrar of Trade Marks,
Office of the Trade Marks Registry,
Intellectual Property Buildings,
G.S.T. Road, Guindy,
Chennai - 600 032
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CMA (TM) No.13 of 2026
P.B.BALAJI J.
RKP
Pre-delivery Order in
CMA (TM) No.13 of 2026
30-10-2026
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