Introduction
The dispute stems from competing claims to ownership of the “Lambretta” mark, tracing back to its origins in Italy and subsequent assignments involving Indian government entities. The court was tasked with resolving an appeal against the refusal of one application and two writ petitions seeking intervention in the registration process, ultimately emphasizing the structured statutory framework under the Trade Marks Act, 1999, and cautioning against bypassing opposition mechanisms through judicial writs.
Factual Background
The “Lambretta” mark originated in 1932 with Innocenti Societa Generale per l’Industria Metallurgica e Meccanica SPA, an Italian company engaged in designing and selling motor scooters. The mark was registered in Italy in 1948 for vehicles in Class 12 and in India in 1949.
In 1972, through a tripartite agreement involving the Government of India, Automobile Products of India Limited, and the Italian entity (renamed Gepar SPA), the machinery, know-how, and trademark rights were acquired by India and assigned to Scooters India Limited, making it the proprietor.
Scooters India Limited faced financial difficulties, being declared sick under the Sick Industrial Companies Act in 1992 and again in 2010, but continued licensing the mark worldwide.
In 2015, Heritage Licensing SA renamed itself Innocenti SA, ostensibly to evoke association with the original Italian entity, though accused of being a habitual infringer.
In 2022, August Ventures acquired global rights to “Lambretta” and related marks from Scooters India Limited via e-auction and assignment deed for over ₹6.86 crore.
Innocenti Applications (2022)
Meanwhile, Innocenti filed applications in September 2022 for “Lambretta” in Classes 12 and 25 on a proposed-to-be-used basis. Examination reports cited August Ventures’ prior marks, but Innocenti’s replies admitted the mark’s origins with the Italian entity and its assignment to Scooters India Limited and then August Ventures.
Despite this, the Registrar accepted Innocenti’s applications in Classes 12 and 25 but refused the one in Class 12 for “Lambretta.” August Ventures then filed applications under Section 19 seeking withdrawal of acceptances, which went unconsidered, leading to the writ petitions.
Procedural Background
Innocenti appealed the Registrar’s May 2024 order refusing registration of “Lambretta” under Application No. 5628005 in Class 12, citing errors in overlooking international registrations and pending rectifications.
August Ventures filed WP 54 in September 2025 seeking a mandamus to compel the Registrar to decide its Section 19 applications for withdrawing acceptances of Innocenti’s Applications Nos. 5628002 and 5628003.
Subsequently, August Ventures filed WP 56 challenging the acceptance orders and advertisements, praying for certiorari to quash them and directions for future examinations to consider its marks.
Issues Framed by the Court
- Whether the Registrar must consider third-party applications under Section 19.
- Whether mandamus could issue despite the availability of alternative remedies.
WP 56 was tagged with WP 54, and the appeal was heard jointly with consent.
Submissions and Arguments
Submissions from August Ventures emphasized the Registrar’s duty to rectify erroneous acceptances under Section 19 to prevent fraudulent marks and avoid burdening proprietors with oppositions or rectifications.
Innocenti countered that Section 19 is solely the Registrar’s discretion without third-party involvement, advocating opposition under Section 21 as the proper remedy.
The Registrar supported this, arguing Section 19 is suo moto and writs bypassed statutory opposition, while defending the refusal in the appeal. The court analyzed the statutory scheme, rejecting third-party invocations of Section 19 and finding Registrar inconsistencies.
Reasoning and Decision of Court
The court dissected Section 19, holding it confers discretionary power on the Registrar to withdraw acceptance if satisfied of error or need for conditions, but without obligation to entertain third-party applications, as Rule 38 limits proceedings to the Registrar and applicant.
It rejected August Ventures’ interpretation that the power implies a duty examinable via third-party prompts, noting the section’s silence on such mechanisms and emphasizing its purpose as a corrective tool for the Registrar alone.
Drawing from precedents like Rajkumar Sabu, the court clarified that no hearing right accrues to non-applicants under Section 19, distinguishing it from opposition under Section 21, which allows any person to challenge post-advertisement.
The court dismissed arguments equating Section 19 to a mandatory review, stating remedies under Sections 21, 47, and 57 are stage-specific and not alternatives, but Section 19 remains internal to the Registry.
On mandamus, it ruled no statutory duty exists to trigger writ issuance, as discretion without imposed obligation precludes compulsion, citing S.C. Advocates-on-Record Association for limited mandamus only in reasoned non-exercise cases.
The court found WP 56 non-maintainable for duplicating WP 54’s cause, amounting to forum shopping and res judicata violation, as both targeted acceptance withdrawal. Reliance on Jai Bhagwan and Kaira District was deemed inapposite, as those involved pre-acceptance advertisements or gross abuses, unlike here where procedural steps were followed.
Noting the Registrar’s contradictory stands—accepting “Lambretta” in some classes while refusing in others—the court allowed Innocenti’s appeal, setting aside the refusal order for inconsistency, but directed consolidated adjudication of all related applications, oppositions, and rectifications after hearing both parties within three months, without opining on merits to preserve fairness.
Key Findings of the Court
- Section 19 provides discretionary, not mandatory, powers to the Registrar.
- Third parties have no right to invoke Section 19 proceedings.
- Opposition rights arise only under Section 21.
- Writ of mandamus cannot compel discretionary statutory powers.
- Multiple petitions on the same cause violate res judicata.
- Registry decisions must remain consistent across related classes.
Point of Law Settled in the Case
The judgment settles that Section 19 of the Trade Marks Act empowers the Registrar with suo moto discretion to withdraw erroneous acceptances, uninvocable by third-party applications, confining challenges to oppositions under Section 21.
It clarifies that no statutory duty mandates the Registrar to consider external prompts under Section 19, rendering writs of mandamus inappropriate absent grave jurisdictional errors, and successive petitions on identical causes are barred by res judicata.
The ruling reinforces the Act’s sequential framework, prioritizing statutory remedies over judicial intervention to maintain Registry efficiency and prevent bypassing opposition processes, while mandating consistency in Registry decisions across related marks to uphold procedural integrity.
Case Details
| Particular | Details |
|---|---|
| Case Title | Innocenti SA Vs. Examiner of Trademarks & Anr. and Connected Matters |
| Date of Order | 31.01.2026 |
| Case Number | C.A.(COMM.IPD-TM) 76/2024, W.P.(C)-IPD 54/2025, W.P.(C)-IPD 56/2025 |
| Neutral Citation | 2026:DHC:784 |
| Name of Court | High Court of Delhi at New Delhi |
| Name of Hon’ble Judge | Hon’ble Mr. Justice Tejas Karia |
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
