If you are stuck in such a situation, here is what to do.

In 2005, two business partners, Mr. Alok Sharma and Mr. Rajesh Gupta, started a small venture and created a brand they named “SPARK.” At the time, an inexperienced legal advisor told them the name was too common and could not be registered. They did not pursue the matter further, focusing instead on building their business.

By 2016, the “SPARK” brand had gained a significant reputation due to the partners’ hard work. That year, Mr. Sharma and Mr. Gupta decided to part ways and dissolved their partnership. In his new proprietorship, Mr. Sharma successfully registered a variation of the brand, “MAXISPARK,” but continued to primarily use the original “SPARK” name for his products, as did Mr. Gupta in his separate business, based on a mutual understanding.

The market was soon flooded with counterfeit products, creating major issues. In 2020, Mr. Sharma filed an application to register the original “SPARK” trademark, but the application remained under scrutiny. In 2022, a competitor, Mr. Rohan Verma of Verma Industries, also filed an application for the “SPARK” trademark. Initially, the Trademark Registry raised an objection to Mr. Verma’s application. However, the process was expedited, and the objection was overcome within a month.

Mr. Sharma filed a formal opposition, being the sole opponent to Mr. Verma’s application. His legal counsel was confident that the opposition would succeed given Mr. Sharma’s prior use and pending application. To everyone’s shock, on June 15, 2024, the Trademark Registry issued an order in favour of Mr. Verma. Mr. Sharma strongly suspects that the decision was influenced by illicit means and that the registrar may have been compromised. With a large portion of his business dependent on the “SPARK” brand, he is now facing a critical situation and has been advised that he has a three-month window to file an appeal in the High Court.

Advice in such cases

Facing a seemingly unjust order from a quasi-judicial body like the Trademark Registry can be daunting. The immediate steps you take are crucial for protecting your rights and business interests.

• Obtain a certified copy of the order immediately. This is the foundational document for any appeal.
• Do not panic or take any drastic business decisions, such as completely abandoning the brand, without legal consultation.
• Preserve all records and evidence related to your brand’s usage, including invoices, marketing materials, and financial statements.
• File an appeal within the statutory limitation period, which is typically three months from the date of the order for an appeal to the High Court.
• 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 of 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.

Applicable Sections of Law

The legal framework for such a dispute is primarily governed by the Trade Marks Act, 1999. If corruption is suspected, other laws may also apply.

• The Trade Marks Act, 1999:
  • Section 9: Outlines absolute grounds for refusal of registration, such as marks devoid of distinctive character. Your lawyer might argue the opponent’s mark falls under this.
  • Section 11: Details relative grounds for refusal, especially concerning earlier trademarks and prior use. This is a critical section for your appeal, as you can prove you used the mark earlier.
  • Section 21: Governs the procedure for opposition to registration, which you have already followed.
  • Section 91: This section is most pertinent now, as it provides the right to appeal an order of the Registrar to the High Court.
• The Prevention of Corruption Act, 1988: If you have concrete evidence of bribery or undue influence, a complaint can be filed against the public servant (the Registrar) under this Act. However, this requires a high burden of proof.

If you are the complainant

As the party aggrieved by the Registrar’s order, your path forward is to challenge the decision legally and strategically.

• File an Appeal: Your immediate and most important step is to file an appeal before the jurisdictional High Court under Section 91 of the Trade Marks Act.
• Seek a Stay: Along with the appeal, file an application for an interim stay on the Registrar’s order. If granted, this would prevent the opponent from enforcing their registration against you while the appeal is being heard.
• Gather Evidence of Prior Use: Systematically compile all evidence that proves you are the prior user and owner of the brand’s goodwill. This includes old invoices, advertisements, media mentions, customer affidavits, and financial records showing revenue generated from the brand.
• Document Bad Faith: Argue that the opponent’s application was filed in bad faith, knowing full well about your prior and extensive use of the brand.
• 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 of 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.

If you are the victim

As the victim of a potentially flawed decision that threatens your livelihood, it is essential to act decisively to protect your intellectual property.

• Understand Your Rights: Your prior use of the trademark gives you common law rights, even without registration. The appeal is the process to have these rights legally recognized over the opponent’s flawed registration.
• Strategic Business Planning: While the legal battle ensues, consult with your team about a parallel business strategy. This might involve preparing to transition to your registered variant (“MAXISPARK” in this case) if the legal outcome is uncertain, but do not abandon the main brand prematurely.
• Public Notice: In some cases, and upon legal advice, issuing a public cautionary notice to the trade and public about your claim to the brand and the pending litigation can be a strategic move.
• 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 of 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.

How the police behave in such cases

The police have a very limited to non-existent role in the trademark dispute itself. This is a civil matter that falls under the jurisdiction of the Trademark Registry and the High Court. The police will not entertain a complaint regarding who has the right to use a trademark.

However, if you have credible and substantial evidence of corruption (bribery) involving the Registrar, you cannot go to the local police. A complaint would need to be filed with a specialized agency like the Central Bureau of Investigation (CBI) or the state’s Anti-Corruption Bureau (ACB). Be aware that initiating such a complaint based on suspicion alone is not advisable and can have serious repercussions if the allegations are not proven.

FAQs people normally have

Can the decision of the Trademark Registrar be challenged?

Yes, absolutely. An appeal against the Registrar’s order can be filed in the High Court within three months from the date of the order.

What happens if I miss the three-month deadline to appeal?

The right to appeal is a statutory right bound by a limitation period. If you miss the deadline, you may lose your right to challenge the order, making it final. The court may condone a delay, but only for very strong and valid reasons.

Can I continue using my brand while the appeal is pending in the High Court?

This depends on whether the High Court grants a stay on the Registrar’s order. If a stay is granted, the opponent cannot take action against you based on their registration. If a stay is not granted, you use the mark at your own risk, as the opponent could potentially file an infringement suit against you.

How can I prove that the Registrar was biased or corrupt?

Proving corruption is extremely difficult. It requires a high standard of proof, such as financial trails, recordings, or witness testimony. Mere suspicion, the speed of the opponent’s process, or an unfavourable order are not sufficient proof in a court of law.

What evidence is required?

For a successful appeal, you must present compelling evidence to the High Court. The focus will be on proving your prior rights to the trademark.

• Evidence of Prior Use: This is the most critical evidence. It includes dated invoices, bills of lading, packaging materials, advertisements in newspapers or online, website screenshots, and entries in business directories.
• Evidence of Goodwill and Reputation: Financial statements showing turnover related to the brand, customer testimonials, awards, and media articles recognizing the brand.
• Evidence of Bad Faith by Opponent: Proof that the opponent was aware of your brand before filing their application. This could be evidence that they were a customer, supplier, or operated in the same industry and geographic area.
• Procedural Lapses: Your lawyer will scrutinize the Registrar’s order for any errors in law or procedure that can be challenged.

How long will the investigation take?

The legal process can be lengthy. An appeal in the High Court, from filing to final hearing, can take several years, often between 2 to 5 years, depending on the workload of the court. Hearings for interim relief, like a stay order, happen much faster, usually within a few months.

A separate investigation into corruption allegations, if initiated, is an even longer and more complex process, with its own timeline independent of the High Court appeal.

Advocate Sudhir Rao, Supreme Court of India