No New Grounds Without Opportunity: Procedural Fairness Trademark Examination

Introduction

The case revolves around the trademark registration battle for the mark ‘TAJPURIYA’ in Class 33 for alcoholic beverages, highlighting critical procedural safeguards in trademark examination and adjudication under the Trade Marks Act, 1999. The Delhi High Court’s decision in this appeal underscores the imperative that the Registrar of Trade Marks must confine refusals to objections explicitly raised in the Examination Report, thereby upholding principles of natural justice and preventing arbitrary shifts in grounds for refusal. This ruling reinforces that applicants deserve a full and fair opportunity to address all objections, and any deviation renders the order unsustainable, especially when the mark is asserted to be arbitrary and devoid of direct descriptive or geographical linkage to the goods.

Factual Background

ADS Agro Industries Pvt. Ltd., a rapidly expanding liquor conglomerate in India’s alcohol beverage sector, is involved in manufacturing, marketing, trading, and selling liquor products. The company honestly and bona fide adopted the trademark ‘TAJPURIYA’ for alcoholic beverages and preparations for making such beverages, claiming the mark to be arbitrary in relation to the goods and inherently distinctive, with no natural or direct connection to alcohol or the industry.

Procedural Background

Application Filing

• Date: 08.06.2021
• Application Number: 4997781
• Class: 33
• Basis: Proposed To Be Used
• Mark: ‘TAJPURIYA’

Examination Report

Appellant Reply

• Date: 26.06.2021
• Asserted arbitrariness and inherent distinctiveness
• Denied any geographical connection
• Claimed entitlement to registration even if hypothetically geographical
• Relied on precedent: Sahkar Seeds Corporation v. Dharti Seeds, 2017 SCC OnLine Guj 2577

Hearing And Order

New Ground Of Refusal

The Registrar refused registration on an entirely new and extraneous ground — that ‘Tajpuriya’ refers to an indigenous tribe of Nepal (also residing in parts of India such as Bihar, West Bengal, Sikkim, and Darjeeling), where alcohol forms an essential part of religious rituals, rendering the mark devoid of distinctive character.

Reasoning And Decision Of Court

The Delhi High Court, presided over by Hon’ble Ms. Justice Jyoti Singh, found substantial merit in the Appellant’s challenge under Section 91 of the Act. The Court observed that the impugned order suffered from two fundamental defects.

Fundamental Defects Identified

The Court noted that shifting to an extraneous ground without prior notice or consideration of the reply rendered the order wholly illegal and unsustainable. Consequently, the impugned order dated 29.01.2024 was set aside, and the matter was remanded to the Registrar for re-examination of the application from the hearing stage, mandating due consideration of the reply to the Examination Report, grant of a fresh hearing opportunity to the Appellant, and completion of the entire process within two months from the date of the judgment.

Point Of Law Settled In The Case

The judgment firmly establishes that the Registrar of Trade Marks is bound to restrict refusal grounds to those explicitly articulated in the Examination Report issued under the Trade Marks Act, 1999.

• Introducing new or extraneous grounds in the final order without affording the applicant prior notice and an opportunity to respond constitutes a serious procedural irregularity, infringing natural justice principles and statutory procedure.
• Furthermore, where specific objections are raised and a detailed reply is filed addressing distinctiveness, arbitrariness, or exceptions for arbitrary use, the Registrar is duty-bound to deal with and consider those submissions.
• Failure to do so, coupled with reliance on unheralded grounds, vitiates the refusal order.

This ruling strengthens applicant protections in opposition and refusal proceedings by mandating transparency, consistency, and fairness throughout the examination and hearing stages.

Case Details