Appellant's Claim of Honest Concurrent Use Since 2011 Accepted; Registrar of Trade Marks Directed to Hear Application De Novo
In a significant decision dated October 9, 2026, the Delhi High Court allowed the appeal filed by Cobble Stone Private Limited against the refusal order of the Registrar of Trade Marks. The impugned order, dated August 6, 2025, had rejected the trademark application No. 4009557 filed in Class 19 for the mark "COBBLE STONE" on the ground of deceptive similarity with existing marks.
The Court, presided over by Justice Vikas Mahajan, noted that the appellant had requested an adjournment to present crucial invoices evidencing the use of the mark since 2011. These documents were not considered by the Registrar at the time of refusal. The appellant contended that it was an honest concurrent user of the mark under Section 12 of the Trade Marks Act, 1999, and that the refusal under Section 11 for deceptive similarity did not sufficiently address this contention.
The Registrar of Trade Marks, represented by the Central Government Standing Counsel, submitted that there was no objection to remanding the matter for a fresh consideration. The Registrar also indicated that any limitation of territorial use, such as restricting the mark's use to the Delhi/NCR region, would be considered on merit after the re-examination of the application.
Justice Mahajan observed that the Registrar's failure to consider the appellant's evidence of honest concurrent use warranted setting aside the refusal order. The Court directed the Registrar to conduct a de novo examination of the trademark application within 60 days from the date of the order, ensuring that all relevant evidence, including invoices and territorial limitations if any, are duly considered.
This judgment reinforces the principle that mere similarity of marks cannot be a sole ground for refusal without examining concurrent honest use under Section 12 of the Trade Marks Act. It also underscores the importance of procedural fairness, particularly the opportunity to place on record critical evidence before adjudication.
The case highlights the procedural safeguards available to trademark applicants and the willingness of courts to ensure substantive justice through remand for fresh consideration in appropriate cases.
Bottom Line:
Trade Marks - Refusal of application under Section 11 - Appellant contended honest concurrent use under Section 12 and sought adjournment to place invoices showing user since 2011 - Respondent stated no objection to remand - Impugned refusal set aside and matter remanded for de novo consideration to be decided within 60 days.
Statutory provision(s):
Trade Marks Act, 1999 Sections 11, 12, 91; Trade Marks Rules, 2017 Rule 156
Cobble Stone Private Limited v. Registrar of Trade Marks, (Delhi) : Law Finder Doc Id # 2995544
