Delhi High Court Sets Aside ‘FISCHBEIN’ Trademark Abandonment, Says Registrar Cannot Reject Application on Uncommunicated Objections

Delhi High Court Sets Aside ‘FISCHBEIN’ Trademark Abandonment, Says Registrar Cannot Reject Application on Uncommunicated Objections

Introduction

The Delhi High Court has set aside an order of the Registrar of Trade Marks declaring the trademark application for the mark “FISCHBEIN” as abandoned, holding that the decision violated principles of natural justice. Justice Tushar Rao Gedela ruled that the Registrar rejected the application on grounds that were never communicated to the applicant, thereby depriving the applicant of a fair opportunity to respond. The Court allowed the appeal and directed a fresh adjudication of the application within four months.

Factual Background

The dispute arose when the Registrar of Trade Marks declared a trademark application filed by nVenia for the mark “FISCHBEIN” as abandoned. The applicant claimed that the mark had been used internationally since 1918 and in India since 1989. According to the company, the application was being actively pursued and the company had even initiated opposition proceedings against a rival trader, Naresh Behl, who had allegedly adopted the identical mark in bad faith. However, despite the ongoing proceedings and correspondence with the Trademark Office, the application was suddenly declared abandoned.

Procedural Background

Aggrieved by the abandonment order, nVenia filed an appeal under Section 91 of the Trade Marks Act, 1999 before the Delhi High Court. The company argued that the Registrar had issued the abandonment order despite being informed about pending opposition proceedings concerning the conflicting mark cited in the Examination Report. The appellant further submitted that it had sought a short adjournment through a letter dated February 20, 2025, which the Trademark Office failed to acknowledge.

Issues

1. Whether the Registrar of Trade Marks could declare a trademark application abandoned based on objections that were never communicated to the applicant.

2. Whether such a decision violated the principles of natural justice governing trademark examination proceedings.

Contentions of the Parties

The appellant, nVenia, contended that the abandonment order was arbitrary and unsustainable because the Registrar relied on objections that had never been raised in the Examination Report. It argued that the company had duly responded to all objections that were communicated and could not reasonably be expected to address issues that were never formally notified.

The respondent authorities argued that the decision of the Registrar was justified based on deficiencies relating to the user claim and discrepancies in the entity names appearing on invoices relied upon by the applicant.

Reasoning and Analysis

The High Court examined the record and noted that the objections forming the basis of the abandonment order were not part of the original Examination Report issued by the Trademark Office. Justice Tushar Rao Gedela observed that an applicant can only be expected to respond to objections that are formally communicated during the examination process. The Court emphasised that it is the duty of the Trademark Office to clearly set out all objections so that the applicant has an opportunity to address them.

The Court found it improper for the Registrar to reject the application on grounds relating to user claims and invoice discrepancies when those issues had never been communicated to the applicant earlier. The Bench remarked that the impugned order proceeded as though the applicant had already been informed of the grounds of rejection, which was contrary to the factual record. Such an approach, the Court held, amounted to a violation of natural justice.

Decision

The Delhi High Court allowed the appeal filed by nVenia, set aside the Registrar’s order declaring the trademark application abandoned, and directed the Trademark Office to reconsider the application. The Court further directed that the matter be freshly adjudicated by the Registrar of Trade Marks within four months.

In this case the plaintiff was represented by Advocate Ranjan Narula. Meanwhile the Controller General was represented by CGSC Nidhi Raman with Advocates Om Ram and Arnav Mittal.