Burden of Candour Mandates Disclosure of Prior Registrations and Disputes to Prevent Bad Faith Trademark Registrations

In brief

The question

1. Whether the Respondent’s adoption of the mark ‘S.S. WHITE’ was honest and bona fide or tainted by bad faith.

The court held

The Court held that the Respondent's registration was obtained through bad faith and procedural illegalities

It also directed

The Court allowed the Petitioner’s rectification [C.O. 448/2022] and dismissed the Respondent’s cross-petition [C.O. 299/2023]

The Court ordered the removal of Registration No. 2147676 (Classes 5 & 10) from the Register

Directions were issued to the Registrar to initiate disciplinary action against officials responsible for the procedural lapses

The Respondent was granted one month to dispose of existing stock subject to filing an inventory affidavit

Costs of ₹20,00,000 (₹10 Lakh per petition) were awarded to the Petitioner

01Facts

The Petitioner (S.S. White Burs Inc., USA) claimed ownership of the mark ‘S.S. WHITE’ dating back to 1844, secured via a 1986 Asset Purchase Agreement and 1989 amendments

¶ 10.1–10.4

The Petitioner registered ‘S.S. WHITE BURS INC.’ in India in Class 10 in 1993

¶ 7

The Respondent (S.S. White Dental Pvt. Ltd., India) incorporated in 1992 and registered the identical mark ‘S.S. WHITE’ in Classes 5 and 10 in 2011, claiming use since 2000

¶ 8

The Respondent alleged oral permission from S.S. White UK, which was expressly denied by the UK entity

¶ 24

Despite a protest petition by the Petitioner in 2013 highlighting a mandatory search failure by the Registry, the Respondent’s mark was registered

¶ 10.13–10.14

Cross-rectification petitions were filed seeking cancellation of each other’s marks

¶ 1

02Issues

i.1. Whether the Respondent’s adoption of the mark ‘S.S. WHITE’ was honest and bona fide or tainted by bad faith.

¶ 21, 35

ii.2. Whether the Trade Marks Registry’s failure to conduct a search in Class 10 under Rule 33(1) vitiates the Respondent’s registration.

¶ 57, 65

iii.3. Whether the Respondent’s registration is liable for rectification under Section 57 for being an entry made without sufficient cause.

¶ 86

03Law Applied

The court applied Section 11(1) of the Trade Marks Act, 1999, which prohibits registration of marks identical/similar to earlier trademarks for identical/similar goods

¶ 65

It invoked Section 11(10)(ii), requiring the Registrar to consider bad faith in the registration process

¶ 47

Rule 33 of the Trade Marks Rules (2017/2002) was applied as a mandatory procedural requirement for the Registrar to search for conflicting marks

¶ 59

The court also relied on Section 19 and Rule 38 regarding the withdrawal of acceptance of an application

¶ 73

Section 57 regarding the power to cancel or vary registration

¶ 86

Precedential reliance was placed on Kia Wang v. Registrar of Trademarks regarding bad faith in copying stylized devices

¶ 40

Provisions in the judgment · 8 · Linked ones open on LawLens

Trade Marks Act, 1999 Section 9 Section 11 Section 12 Section 19 Section 21 Section 34 Section 47 Section 57

04Reasoning

The Court found the Petitioner established prior global and Indian rights through valid assignment and continuous use since 1991

¶ 18

It determined the Respondent’s adoption was dishonest because: (a) the Respondent’s claim of "oral permission" was refuted by the alleged grantor and contradicted by different explanations given to the ROC and (b) the Respondent slavishly copied the Petitioner’s unique stylized font and device

¶ 24, 32-33, 37-39

Critically, the Court noted a "material and substantive error" by the Registry, which failed to conduct a mandatory Class 10 search under Rule 33; had it done so, the Petitioner's 1993 registration would have blocked the Respondent's 2011 application

¶ 62, 69

The Respondent’s failure to disclose the Petitioner’s cease-and-desist notice to the Registrar while the application was pending was held to be suppression of material facts and evidence of bad faith

¶ 43-46