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

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

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

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

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

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

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

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

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

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

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

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

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

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

Section 57 regarding the power to cancel or vary registration

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

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

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

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

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

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