Delhi High Court Sets Aside Registrar’s Refusal Of Jindal Steel’s ‘JSP’ Trademark, Calls Order Non-Speaking

Delhi High Court Sets Aside Registrar’s Refusal Of Jindal Steel’s ‘JSP’ Trademark, Calls Order Non-Speaking

Introduction

The Delhi High Court has set aside an order of the Registrar of Trade Marks refusing registration of the trademark “JSP” sought by Jindal Steel Limited, holding that the decision suffered from non-application of mind and was a “non-speaking order”. Justice Jyoti Singh partially allowed the appeal and remanded the matter to the Registrar for fresh adjudication, observing that quasi-judicial authorities must pass reasoned orders after considering all submissions and materials placed before them.

Factual Background

Jindal Steel Limited had applied for registration of the mark “JSP” in Class 06 for goods including steel slabs, ingots, billets, mild steel castings, wire rods, iron beams, steel beams and TMT rebars. The Registrar refused the application after raising an objection under Section 11(1) of the Trade Marks Act, 1999 on the ground that the applied mark was identical or similar to a previously registered “JSP” device mark belonging to Nitin Mehta trading as Shweta Overseas.

The company argued that “JSP” and “JSPL” were acronyms associated with Jindal Steel & Power and functioned as source identifiers for its steel products. It further asserted that it had been using the related “JSPL” marks since 1998, whereas the cited mark claimed user rights only from January 1, 2013.

Procedural Background

Following the refusal of its trademark application, Jindal Steel Limited filed an appeal before the Delhi High Court challenging the Registrar’s decision.The company also pointed out that it had filed a rectification petition seeking cancellation of the cited registration relied upon by the Registrar. It argued that the Registrar ought to have either awaited the outcome of the rectification proceedings or considered both matters together.

Issues

1. Whether the Registrar of Trade Marks had passed a legally sustainable order refusing registration of the mark “JSP”.

2. Whether failure to consider the applicant’s submissions and relevant statutory provisions rendered the order a non-speaking order.

3. Whether the matter required remand for fresh consideration of the trademark application.

Contentions of the Parties

Jindal Steel Limited contended that the mark “JSP” functioned as an acronym for Jindal Steel & Power and acted as a distinctive identifier of the company’s products. The company relied upon Sections 34 and 55 of the Trade Marks Act to argue that its use of the registered “JSPL” marks should be recognised as equivalent to use of “JSP”. It also emphasised its prior use of the related mark since 1998 and argued that the Registrar had failed to consider this material while deciding the application.

The Registrar defended the refusal on the ground that the applied mark “JSP” was phonetically identical to the cited device mark already registered in favour of Shweta Overseas. It argued that since both marks covered goods in Class 06, their concurrent use was likely to cause confusion among consumers. The Registrar also pointed out that Jindal Steel’s application was filed on a “proposed to be used” basis in 2022, whereas the cited mark claimed user rights from 2013.

Reasoning and Analysis

The High Court observed that the impugned order did not address several critical arguments raised by Jindal Steel, including its reliance on Sections 34 and 55 of the Trade Marks Act and its claim of prior association with the acronym “JSP”. The Court reiterated the settled principle that quasi-judicial authorities must provide clear reasoning while deciding matters affecting legal rights. It noted that courts have consistently emphasised the importance of speaking orders to ensure fairness, transparency and effective judicial review.

Justice Singh observed that the Registrar’s order failed to discuss the material placed on record or explain the reasoning behind rejecting the application. Such an approach, the Court held, demonstrated a clear non-application of mind and undermined the decision-making process. The Court also noted that the applicant had already initiated rectification proceedings against the cited mark. In such circumstances, the Registrar should have either awaited the outcome of that proceeding or considered both matters together to ensure a fair adjudication.

Decision

The Delhi High Court set aside the Registrar’s refusal order and remanded the matter for fresh consideration. The Court directed the Registrar of Trade Marks to reconsider the trademark application along with the pending rectification proceedings concerning the cited mark. The Registrar was also instructed to give advance notice of the hearing to all concerned parties and to pass a reasoned speaking order in accordance with law.

In this case the appellant was represented by Advocates Hemant Singh, Mamta Rani Jha, Manish Kumar Mishrak, Akansha Singh, Niharika Kapoor, Saransh Saini, Ms. Saloni Raghuvanchi, Manish Kharbanda and Shivanshu Kumar. Meanwhile the defendant was represented by CGSC Nidhi Raman with Advocate Om Ram.