High Court holds correction of trademark application need not always require fresh user affidavit; upholds Single Judge on merits

A divisional bench of Justices C. Hari Shankar and Om Prakash Shukla heard an intra‑Court Letters Patent Appeal against a Single Judge's order that had set aside the Deputy Registrar of Trade Marks' cancellation of a registered device mark. The appeal arose from the Dy RTM's decision of 15 December 2022 cancelling a device mark registration on grounds of alleged substantial alteration and procedural irregularity, and the Single Judge's judgment dated 14 May 2025 that allowed the proprietor's appeal.

The Court summarised that it found Rule 100(1)'s requirement of one month's notice to be mandatory but also held that the Single Judge properly examined the merits under Letters Patent jurisdiction and that Rule 37 did not, by itself, impose a requirement of a fresh user affidavit. The Court, in its reasoning, observed: “We do not find, in Rule 37, any requirement of submitting any fresh affidavit of user. We are clear in our mind that a requirement, which is not to be found in the statute, cannot be imposed by judicial fiat. If the alternation in the mark is substantial, the very application for correction under Rule 37 would be liable to be rejected. The question of a fresh affidavit of user, then, becomes redundant. If, on the other hand, the alteration is not substantial, the claim of user of the original mark would obviously apply, equally, to the altered mark, as the alteration is insubstantial in nature.” The Court also noted that “the prescription of one month's notice in Rule 100(1) is, therefore, clearly mandatory,” but held that the Single Judge validly proceeded to decide the correctness of the amendment on merits and that there was no scope in Letters Patent jurisdiction to interfere with the Single Judge's conclusion that no “substantial alteration” occurred.

Background

The dispute concerned registration No. 3986970 for a device mark in Class 6 for metal screws. The registered proprietor sought to correct its application by an amendment filed on 13 December 2018, substituting one device configuration for another while retaining the same claimed date of user (27 February 2013). The applicant obtained registration after the amendment was allowed and the mark was published. The rival, Landmark Crafts Limited, challenged the amendment as a “substantial alteration” under Rule 37 and later filed a complaint before the Registrar alleging irregularity; the Examiner issued a show cause notice under Section 57(4). The Dy RTM, after hearing, cancelled the registration on 15 December 2022, finding the amendment had been improperly allowed without fresh user evidence and that publication and registration were therefore erroneous.

The registered proprietor appealed to the High Court, and a Single Judge allowed that appeal, holding that the Dy RTM breached Rule 100(1) by not providing the prescribed one‑month notice and further concluding that the change in the mark (a reorientation of letters) did not amount to a substantial alteration. The present Letters Patent Appeal was confined to whether the Single Judge erred in law in quashing the Dy RTM's order.

The Division Bench examined procedural compliance and substantive law. It held that Rule 100(1)'s one‑month notice requirement was mandatory and that failure to comply could vitiate a Registrar's order; however, it also recognised that a Single Judge could, in Letters Patent jurisdiction, decide the merits where material permitted. Applying Rule 37 and the proviso against substantial alteration, the Court concluded that Rule 37 did not itself mandate a fresh user affidavit and that the Single Judge's subjective but reasoned finding that the amendment was not substantial warranted deference. The Court dismissed the appeal, affirmed the Single Judge's order setting aside the Dy RTM cancellation, and reiterated the Single Judge's caveat that the present decision would not influence any rectification petition or cognate proceedings between the parties.

Case Details: Case No.: LPA 575/2025 Case Title: Landmark Crafts Limited v. Romil Gupta trading as Sohan Lal Gupta & Anr. Appearances: For the Petitioner(s): Mr. J Sai Deepak, Sr. Advocate with Ms. Stuti Wason, Mr. Vipin Wason, Mr. Avinash Sharma and Mr. Hitesh Kumar, Advocates For the Respondent(s): Mr. Sanjeev Sindhwani, Sr. Advocate with Mr. Rajat Bhardwaj, Mr. Sandeep Khatri and Mr. Ujjwal Bhardwaj, Advocates