### Correction of Mark Under Rule 37 is Permissible Provided Alteration is Not Substantial; Fresh User Affidavit Unnecessary. Legal Summary: Procedural History: The Appellant challenged a Single Judge's decision which set aside an order by the Deputy Registrar of Trade Marks (Dy RTM) cancelling the Respondent's registration. The Dy RTM had originally revoked the mark on the grounds that an amendment to the device mark constituted a "substantial alteration" and lacked a fresh user affidavit. Key Legal Principles: 1. Mandatory Nature of Rule 100(1): The Court affirmed that the requirement to provide at least one month's notice before exercising *suo motu* powers under Section 57(4) of the Trade Marks Act is mandatory. Failure to comply with this period constitutes a jurisdictional and procedural error that cannot be waived by a party's participation in the hearing. 2. Scope of Rule 37 Amendments: Rule 37 allows for the correction of "any error." The Court held that unless an amendment "substantially alters" the mark, it is permissible. In this case, rearranging the letters "S" and "D" from horizontal to vertical within a device mark was deemed an insubstantial alteration. 3. No Requirement for Fresh User Affidavit: The Court clarified that neither the Trade Marks Act nor the Rules require a fresh user affidavit for an amendment under Rule 37. If an alteration is insubstantial, the original claim of user—even if initially attached to the uncorrected version of the mark—legally extends to the corrected mark. 4. Letters Patent Jurisdiction: The Division Bench emphasized that in intra-court appeals, it acts as a "Court of Error" and will not substitute its subjective opinion for that of the Single Judge unless the finding is perverse or lacks evidentiary basis. Conclusion: The appeal was dismissed, upholding the Single Judge's order and restoring the Respondent's registration, while leaving the Appellant’s pending rectification petition to be decided independently.

The Respondent (Romil Gupta) originally applied for registration of the device mark “SDHP” (with 'SD' placed horizontally) claiming user since 2013

Following an Examination Report, the Respondent sought an amendment under Rule 37 of the Trade Marks Rules, 2017, to substitute the mark with a version where 'SD' was placed vertically

The request was allowed, and the mark was registered.

The Appellant filed a complaint alleging that this change constituted a "substantial alteration" prohibited by law.

On 31 October 2022, the Deputy Registrar of Trade Marks (Dy RTM) issued a notice under Section 57(4) of the Trade Marks Act, 1999, and subsequently cancelled the registration on 15 December 2022

A learned Single Judge set aside the Dy RTM’s order on grounds of procedural irregularities and held that the alteration was not substantial

The Appellant challenged this before the Division Bench.

1. Whether the Dy RTM’s order was vitiated by procedural non-compliance with Rule 100(1) of the Trade Marks Rules, 2017

2. Whether the amendment of the mark from a horizontal to a vertical orientation of the letters “SD” constituted a “substantial alteration” under the proviso to Rule 37

3. Whether an applicant is required to file a fresh user affidavit when seeking a non-substantial amendment to a trademark application

The court primarily applied Section 57(4) of the Trade Marks Act, 1999, which empowers the Registrar to rectify the register suo motu provided notice is given in the "prescribed manner"

Rule 100(1) of the Trade Marks Rules, 2017, mandates that such notice must allow the party at least one month to apply for a hearing

The court relied on the proviso to Rule 37 of the Rules, which prohibits amendments that "substantially alter" the trade mark

It further applied the principle from *Nazir Ahmed v. King Emperor*, establishing that where a statute mandates a specific procedure, it must be followed exclusively

The court also referred to *Santosh Hazari v. Purushottam Tiwari* to define "substantial" as something essential, real, or of sound worth

The Court found the Dy RTM’s order procedurally flawed because the notice dated 31 October 2022 provided only 17 days for a hearing, directly violating the one-month statutory mandate under Rule 100(1)

The Court rejected the argument that this was a mere directory requirement, holding that the cancellation of a registered mark constitutes a significant prejudice, making the timeline mandatory

On merits, the Court upheld the Single Judge’s finding that changing the orientation of two letters (“SD”) within the same composite mark (“SDHP”) was not a "substantial alteration"

Since the alteration was insubstantial, the Court reasoned that the original user affidavit remained valid and Rule 37 did not require a fresh affidavit; requiring one would impose a burden not found in the statute

The Court noted that the Appellant’s rights remain protected as they can still pursue their pending rectification petition

2. The Court held that the modification of the mark was not a "substantial alteration" and thus was permissible under Rule 37

3. The Court held that no fresh user affidavit is required for insubstantial amendments

The Letters Patent Appeal was dismissed, affirming the Single Judge’s judgment, with a caveat that these findings would not prejudice the pending separate rectification proceedings between the parties