Prior user rights and dishonest adoption of a surname justify trade mark rectification despite registration.

The Petitioner, trading as Agarwal Enterprises, registered the trademark ‘THUKRAL’ in 2003 for brooms (Class 21), claiming use since 1995

Respondent No. 2 filed rectification applications (ORA/30/2013/TM/DEL & ORA/31/2013/TM/DEL) seeking cancellation of the mark, asserting prior use by their family concerns since 1954

Throughout the proceedings before the IPAB and the Registrar, the Petitioner failed to file a Counter Statement despite multiple opportunities and extensions granted between 2013 and 2016

On 10.05.2016, the Registrar (Respondent No. 1) passed the Impugned Order allowing the rectification and removing the Petitioner's mark from the Register

The Petitioner challenged this order via writ petitions under Article 226/227

1. Whether the Impugned Order was passed in violation of the principles of natural justice due to the denial of the Petitioner’s right to file a Counter Statement

2. Whether the registration of the mark ‘THUKRAL’ by the Petitioner was liable for rectification on grounds of prior user by Respondent No. 2 and dishonest adoption

The court applied Rule 10(1) of the Intellectual Property Appellate Board (Procedure) Rules, 2003, which mandates filing a counter-statement within two months of service

It relied on Sections 28, 34, and 47 of the Trade Marks Act, 1999, establishing that registration is "subject to other provisions" and cannot override the rights of a prior user

Further, the court applied the principle from *Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Bayer Aktiengesellschaft*, holding that procuring registration while knowing another party has prior rights constitutes fraud under Section 32(a)

The court also cited *Vishudas Trading v. Vazir Sultan Tobacco Co. Ltd.* regarding the non-perpetual nature of trademark registration

The Court found that the Petitioner displayed a "non-caring attitude" and consistently disobeyed IPAB directions, failing to file a Counter Statement for over three years

Since the Petitioner provided no evidence of the statement being signed or verified, the plea of "counsel's negligence" was rejected

On merits, the Court observed that Respondent No. 2 proved use of the surname ‘THUKRAL’ since 1954, whereas the Petitioner (an ‘Aggarwal’ by caste) offered no explanation for adopting the ‘THUKRAL’ name in 1995

Applying Section 34, the Court held that the statutory rights of a registered proprietor are subordinate to a prior user

The Court determined that the Registrar correctly found the Petitioner’s adoption to be mala fide and the claim of user to be a misrepresentation amounting to fraud

It held that there was no jurisdictional error or violation of natural justice as the Petitioner failed to utilize ample opportunities to defend the rectification

The holding confirmed that Respondent No. 2 established superior rights as a prior user, and the Petitioner’s mark was rightly removed for dishonest adoption and non-use post-registration

All pending applications were disposed of with no order as to costs