Allowed

Shri Vinay Rathi & Ors. v. Mr Dhananjay Rathi & Ors.

Delhi HC5 Apr 2024LPA/270/2024

Case brief

AI extract

What is this about?

The Division Bench of the Delhi High Court set aside an order by the Single Judge which found a trademark registration prima facie invalid without addressing the respondents' acquiescence. The matter was restored for fresh decision.

What did the court decide?

The impugned order dated 31.01.2024 was set aside and the interim application restored to the Single Judge for decision afresh.

Shri Vinay Rathi & Ors. Vs Mr Dhananjay Rathi & Ors. — Company and Corporate | Delhi HC (2024)

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$~4

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* IN THE HIGH COURT OF DELHI AT NEW DELHI

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LPA 270/2024 & CM APPL. 20376-379/2024 SHRI VINAY RATHI & ORS. ..... Appellants Through: Mr.Jayant K Mehta, Sr Advocate with Mr.Kapil Wadhwa, Ms.Tejasvini Puri and Ms.Vasanthi Hariharan, Advs.

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versus

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MR DHANANJAY RATHI & ORS. ..... Respondents Through: Mr.Rajshekhar Rao, Sr Advocate with Mr.Karan Bajaj, Mr.Rupin Bahl, Ms.Aastha Arora and Mr. Rajaxshi Roy, Advs. for R-1.

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CORAM: HON'BLE MR. JUSTICE VIBHU BAKHRU HON'BLE MS. JUSTICE TARA VITASTA GANJU

O R D E R

05.04.2024

The appellants have filed the present appeal impugning the order dated 31.01.2024 passed by the learned Single Judge in CS(COMM) No.267/2022 captioned Mr.Dhananjay Rathi v Shree Vasu Steels Pvt Ltd & Ors whereby the learned Single Judge had returned the finding that the registration of the trademark RATHI in favour of the appellants is prima facie invalid. It is the appellants’ grievance that the said finding, although prima facie , has been rendered without considering his contentions.

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Indisputably, the appellants are the registered owner of the trademark RATHI , which has remained on the register since the year 1984. It is also not in dispute that the respondents were fully aware of the said registration and have acquiescenced to the same. Section 33 of the Trademarks Act, 1999 sets out the effect of acquiescence. The said section is reproduced below for ready reference.

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Page 1 of 3

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LPA 270/2024

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This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 22/04/2024 at 13:56:41

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‘33. Effect of acquiescence.

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(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark--

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(a) to apply for a declaration that the registration of the later trade mark is invalid, or

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(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.

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(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.’

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It is apparent from reading of sub section (1) of Section 33 of the Trademarks Act, 1999 that when the proprietor of an earlier trademark – which is in this case the respondents claim they are – have acquiesced for continuous period of five years in the use of the registered trademark being aware of that use – which in this case is also admitted fact – the proprietor of an earlier trademark shall no longer be entitled on the basis of an earlier trademark to either apply for declaration that the registration of the later trademark is invalid or oppose the use of the later trademark in relation to the goods or services in relation to which it has been used.

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The impugned order indicates that the same has not been considered. At this stage, Mr.Rajshekhar Rao, the learned senior counsel appearing for the respondents requests that the impugned order be set aside and the parties be given the liberty to re-argue the matter before the learned Single Judge.

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LPA 270/2024

In view of the above submissions, the impugned order dated 31.01.2024 is set aside. Consequently, the IA No.11562/2022 in CS (COMM) No.267/2022 is also restored before the learned Single Judge for decision afresh.

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The appeal stands disposed of in the above terms. All Pending applications also stands disposed of.

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VIBHU BAKHRU, J

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TARA VITASTA GANJU, J

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APRIL 05, 2024 M

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Click here to check corrigendum, if any

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Page 3 of 3

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LPA 270/2024

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Shri Vinay Rathi & Ors. v. Mr Dhananjay Rathi & Ors.

Case brief

What is this about?

What did the court decide?

Shri Vinay Rathi & Ors. v. Mr Dhananjay Rathi & Ors.

Case brief

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