One of my clients recently had a case which I am explaining below and if you are stuck in such similar situation, here is what to do.

Note: Due to attorney-client privilege, I cannot disclose complete case details or identify the actual parties involved. However, I am sharing the essential facts and legal approach so that if you find yourself in a similar situation, you can understand the available solutions and legal remedies.

Mr. X had applied for trademark registration for his clothing brand X.Brand two years ago. The application was refused by the Trademark Registry on grounds of common word objection. Initially, Mr. X had paid his lawyer approximately Rs. 23,000 for the trademark filing and examination report response. After the refusal, Mr. X was contemplating whether to file an appeal in the High Court. The main concern was understanding the additional costs involved in pursuing the High Court appeal, as the legal fees could escalate significantly. Mr. X’s lawyer explained that High Court appeals in trademark matters involve court fees, advocate fees, and other procedural costs that can range from Rs. 50,000 to Rs. 2,00,000 depending on the complexity of the case.

Advice in Such Cases

Consult with Lawyer: The very basic and important step to start is talk to Lawyer / advocate. You should not hesitate in paying his consultation fee i.e. might be in range of Rs. 10,000 to 50,000 depends case to case. He is helping you in this situation to come out. He is expert in the domain and can help you explain the procedure which you might have never explored. A good lawyer can get the issues resolved much faster than you think.

Evaluate the strength of your case before proceeding with High Court appeal. Review the original refusal order thoroughly and assess chances of success. Consider alternative dispute resolution methods or re-filing with modifications. Budget properly for the appeal process as costs can escalate beyond initial estimates.

Applicable Sections of Law

The primary legislation governing trademark appeals is the Trade Marks Act, 1999. Under this Act, Section 91 provides the right to appeal to High Court against orders of the Registrar. The Bharatiya Nagarik Suraksha Sanhita (BNSS) governs procedural aspects of appeals. Additionally, the Bharatiya Nyaya Sanhita (BNS) may apply in cases involving fraudulent trademark applications or misrepresentation. High Court Rules and Commercial Courts Act provisions also regulate the appeal procedure and timelines for trademark disputes.

If You Are the Complainant

• File the appeal within the prescribed limitation period of three months from the refusal order
• Prepare comprehensive grounds of appeal addressing each objection raised by the Registry
• Gather supporting documents including prior registrations, usage evidence, and commercial success proof
• Pay the requisite court fees and ensure proper service of appeal papers
• Consider seeking interim relief to prevent third parties from using similar marks during appeal pendency

If You Are the Victim

• Document all instances of trademark infringement or unauthorized use of your mark
• Maintain records of financial losses suffered due to the refusal or infringement
• Preserve evidence of your prior use and reputation in the market
• Consider filing opposition against competing applications that may conflict with your rights
• Explore options for damages and injunctive relief through the High Court appeal process

How the Police Behave in Such Cases

Police generally do not get involved in trademark refusal appeals as these are civil matters between the applicant and the Registry. However, if the case involves criminal aspects like counterfeiting or fraudulent trademark use, police may register cases under relevant sections of BNS. In commercial disputes, police typically direct parties to approach civil courts. The focus remains on intellectual property enforcement rather than criminal investigation unless specific violations are established.

FAQs People Normally Have

Q: What are typical High Court appeal costs for trademark cases? A: Costs range from Rs. 50,000 to Rs. 2,00,000 including court fees, advocate fees, and procedural expenses.

Q: How long does a trademark appeal take in High Court? A: Appeals typically take 1-3 years depending on court workload and case complexity.

Q: Can I represent myself in trademark appeals? A: While legally possible, it’s advisable to engage qualified IP lawyers due to technical nature of trademark law.

Q: What happens if I lose the High Court appeal? A: You can file Supreme Court appeal or consider fresh application with modifications addressing original objections.

What Evidence Is Required?

• Original trademark application and all correspondence with Registry
• Evidence of commercial use and market presence of the trademark
• Financial records showing investment in brand building and marketing
• Consumer recognition surveys and market research data
• Prior registration certificates in other classes or jurisdictions
• Expert opinions on distinctiveness and non-descriptive nature of mark
• Comparative analysis with cited prior marks showing differences

How Long Will the Investigation Take?

High Court trademark appeals typically take 12-36 months for final disposal. Initial hearing may be scheduled within 2-3 months of filing. The timeline depends on court calendar, complexity of legal issues, and whether interim applications are filed. Commercial courts may provide faster resolution. Case preparation and evidence compilation usually takes 2-3 months before filing the appeal petition.

Advocate Sudhir Rao, Supreme Court of India