Madras High Court Restores ‘SAKTHI’ Trademark, Slams Registry for Cancelling Decades-Old Mark Without Notice

Madras High Court Restores ‘SAKTHI’ Trademark, Slams Registry for Cancelling Decades-Old Mark Without Notice

Introduction

The Madras High Court has set aside the cancellation of the long-standing “SAKTHI” trademark, holding that the Trade Marks Registry acted arbitrarily and in violation of the principles of natural justice by cancelling the registration without issuing any prior notice to the trademark holder. The Court directed reinstatement of the trademark, observing that a decades-old registration cannot be nullified through administrative shortcuts.

Factual Background

Sakthi Trading Company, the appellant, is engaged in the manufacture and sale of spice powders, masalas, cereals, pickles, edible oil, flour and papad under the brand name “SAKTHI.” The company has been using the “SAKTHI” mark continuously since 1977 and secured statutory registration of the trademark in 2005, which was periodically renewed and remained valid.

Despite this long-standing use and subsisting registration, the Trade Marks Registry cancelled the registration and later treated the application as abandoned, without issuing any notice or granting an opportunity of hearing to the appellant.

Procedural Background

The controversy stemmed from public notices issued by the Controller General of Patents, Designs and Trade Marks in February and March 2023, which listed several trademark applications as abandoned for failure to file counter-statements in opposition proceedings. Sakthi Trading Company’s trademark was included in the said list.

The public notices were challenged before the Delhi High Court, where the government assured that the notices would be withdrawn within ten days and that affected applications would be restored. On the basis of this assurance, the Delhi High Court disposed of the petition.

However, contrary to this assurance, the Trade Marks Registry proceeded in May 2025 to cancel Sakthi’s trademark registration and mark the application as abandoned. Aggrieved, the appellant filed an appeal under Section 91 of the Trade Marks Act, 1999 before the Madras High Court.

Issues

1. Whether the Trade Marks Registry could cancel a valid and renewed trademark registration without issuing notice to the registered proprietor.

2. Whether the cancellation of the “SAKTHI” trademark and its treatment as abandoned was legally sustainable.

3. Whether the Registry’s actions violated the principles of natural justice.

Contentions of the Parties

The appellant contended that once a trademark is registered and renewed, it cannot be cancelled unilaterally without following due process. It was argued that the Registry neither issued any notice nor afforded an opportunity of hearing, rendering the cancellation arbitrary and illegal. The appellant further relied on the assurance given before the Delhi High Court that the impugned public notices would be withdrawn and applications restored.

The Trade Marks Registry defended its action by relying on the public notices issued in 2023 and the alleged failure to comply with procedural requirements. Kumar Food Industries Limited, which had opposed the mark, supported the Registry’s position.

Reasoning and Analysis

Justice N. Anand Venkatesh held that the procedure adopted by the Trade Marks Registry was fundamentally flawed and violative of natural justice. The Court emphasised that cancellation of a registered trademark cannot be carried out behind the back of the registered proprietor.

The Court noted that the Registry had assured the Delhi High Court that the impugned public notices would be withdrawn and that affected applications would be restored. Having taken such a stand before a constitutional court, the Registry was not justified in proceeding further to cancel the appellant’s registration and treat the application as abandoned.

The Court observed that once a registration certificate is granted and renewed, any challenge to it must be made through a rectification proceeding, which is a formal adjudicatory process. Administrative action cannot substitute statutory safeguards provided under the Trade Marks Act.

Holding that the entire exercise “smacked of arbitrariness,” the Court concluded that the Registry’s conduct was unfair, unreasonable and devoid of legal authority.

Decision

Allowing the appeal, the Madras High Court set aside the impugned order dated 09.05.2025 passed by the Trade Marks Registry. The Court directed the Registrar of Trade Marks to reinstate the “SAKTHI” trademark registration granted in 2005 within four weeks. It reaffirmed that statutory trademark rights cannot be extinguished without adherence to due process and principles of natural justice.

In this case the appellant was represented by Mr. S. Diwakar, Advocate. Meanwhile the respondent was represented by Mr. C. Samivel Senior Panel-Central Government Standing Counsel for R1 and Mr. M. K. Miglani for R2.