Non-Speaking Order Can’t Sustain Trademark Deletion: Delhi High Court Restores ‘Makhan Fish Corner’

Non-Speaking Order Can’t Sustain Trademark Deletion: Delhi High Court Restores ‘Makhan Fish Corner’

Introduction

The Delhi High Court has reinstated the trademark “MAKHAN FISH CORNER”, setting aside an order of the Trade Marks Registry that had directed its removal from the Register of Trade Marks. The Court held that the Registry’s decision suffered from non-application of mind, lack of reasoning, and failure to evaluate material evidence placed on record.

Factual Background

The appellant, Malkit Singh, is the proprietor of Makhan Fish Corner, a family-run food business established in 1962. Over decades, the business expanded under various names incorporating the word “Makhan”, gaining significant goodwill in the restaurant and food services sector.

In 2013, the appellant applied for registration of the trademark “MAKHAN FISH CORNER” in Class 43 for restaurant and food services. The trademark was eventually registered in February 2023. Another entity, Makhan Fish Co., engaged in the trade of fish products, had earlier opposed the registration. That opposition was dismissed by the Trade Marks Registry in 2022.

Procedural Background

After the registration was granted, Makhan Fish Co. filed a rectification petition seeking removal of the mark from the Register. The Trade Marks Registry allowed the rectification petition and ordered deletion of the trademark, holding that:

● Makhan Fish Co. was a prior user of similar marks,

● Makhan Fish Corner had failed to prove use of the mark prior to 2013.

Aggrieved by this order, Makhan Fish Corner approached the Delhi High Court, challenging the Registry’s decision under the Trade Marks Act, 1999.

Issues

1. Whether the Trade Marks Registry had applied its mind to the evidence placed on record while allowing the rectification petition.

2. Whether similarity of trademarks alone was sufficient to justify removal without analysing trade channels, classes of goods/services and consumer overlap.

3. Whether the impugned order satisfied the requirement of a reasoned and speaking order under principles of natural justice.

Contentions of the Parties

The appellant contended that the Registry ignored crucial evidence, including third-party affidavits and Chartered Accountant certificates, demonstrating use of the mark since 2001. It was argued that the Registry wrongly assumed absence of documentary proof prior to 2013 without evaluating the material on record.

The appellant also submitted that the Registry failed to consider objections relating to the maintainability of the rectification petition and did not examine whether consumers of restaurant services under Class 43 overlap with consumers of fish products falling under Classes 29 and 35.

The respondent opposed the appeal, maintaining that it was a prior user of similar marks and that the appellant had failed to establish continuous prior use sufficient to justify registration.

Reasoning and Analysis

The High Court emphasised that statutory authorities exercising quasi-judicial functions are obligated to pass reasoned orders, particularly when statutory rights such as trademark registration are affected.

Justice Tejas Karia observed that the impugned order was non-speaking and cryptic, noting that the Registry failed to evaluate or even refer to the evidence relied upon by the appellant. The Court found that the assumption that no documents existed prior to 2013 was factually incorrect and unsupported by analysis.

The Court further held that similarity of trademarks alone cannot justify rectification. In particular, the Court noted the Registry’s failure to analyse whether consumers of restaurant services (Class 43) overlap with consumers of fish products or commission agency services (Classes 29 and 35), rendering its conclusion legally unsustainable. The Court held that a right to hearing is meaningless without a reasoned decision, and that non-application of mind vitiates administrative and quasi-judicial orders.

Decision

The Delhi High Court set aside the order of the Trade Marks Registry directing deletion of the trademark “MAKHAN FISH CORNER”. The rectification petition was remanded to the Registry for fresh consideration in accordance with law, with a direction to evaluate the evidence and contentions of the parties. The Court clarified that it had expressed no opinion on the merits of the rival claims.

In this case the appellant was represented by Dr. Farrukh Khan, Mr. Md. Affan and Ms. Tanzeela Farheen, Advocates. Meanwhile the respondent was represented by Ms. Nidhi Raman, CGSC with Mr. Mayank Sansanwal and Mr. Om Ram, Advocates for R1 and Mr. J. Sai Deepak, Senior Advocate with Mr. Lakshay Sharma and Ms. Kaveri Verma, Advocates for R2.