Registrar must issue reasoned orders evaluating honest concurrent use claims under Section 12.

The Petitioner applied for the registration of the device mark ‘ENTERO’ under Class 5 on August 18, 2023

The Respondent issued an Examination Report raising objections under Section 11(1) of the Trade Marks Act, 1999, citing a deceptively similar earlier registered mark, ‘EnteroGG’

In response, the Petitioner filed a reply and a User Affidavit asserting honest and concurrent use of the mark since 2018 and alleged that the cited mark had never been used

On May 19, 2025, the Respondent passed the "Impugned Order" rejecting the application, stating that the similarity of marks and goods would cause a likelihood of confusion

The Petitioner challenged this order before the High Court, contending it was unreasoned and failed to consider the statutory exception of honest concurrent use.

1. Whether the Impugned Order was invalid for being unreasoned and passed without application of mind regarding the Petitioner’s evidence of use

2. Whether the Registrar of Trade Marks is required to consider the provisions of Section 12 (honest and concurrent use) as an exception to Section 11(1) during the registration process

3. Whether the Respondent’s contention that a hearing officer cannot verify the actual use of a cited mark is legally sustainable

Section 11(1) of the Trade Marks Act, 1999, which prohibits registration of marks similar to earlier marks

Section 12, which allows registration of identical or similar marks in cases of honest concurrent use or special circumstances

Section 18(5), which mandates the Registrar to record reasons for refusing an application

Section 91, which provides for appeals against such orders

Assistant Commissioner, Commercial Tax Department, Works Contract and Leasing, Kota v. Shukla and Brothers, establishing that reasons are the soul of any judicial or quasi-judicial decision

London Rubber Co. Ltd. v. Durex Products Incorporated and Anr., which held that Section 12 is an independent provision that must be interpreted liberally

The court found the Impugned Order to be a mechanical reproduction of the Examination Report, lacking any cogent reasoning or assessment of the Petitioner’s User Affidavit and evidence of use since 2018

The court observed that the Registrar failed to satisfy the mandate of Section 18(5), noting that an appealable order under Section 91 must contain reasons to allow an appellate authority to test its legality

The court held that Section 11(1) is not absolute and must be read with the exception of honest concurrent use under Section 12

The court rejected the Respondent's argument that they lacked the power to verify the use of a cited mark, stating that such a stance renders Section 12 "otiose" and does violence to the spirit of the Act

By failing to address the Petitioner's claim of independent adoption and extensive market presence since 2018, the Registrar committed a jurisdictional error

The Court set aside the Impugned Order dated May 19, 2025

It remanded Application No. 6072440 back to a different Registrar to be decided afresh, ensuring a fair and reasoned adjudication of the Petitioner’s claim under Section 12

No costs were awarded