Synopsis

The appellant (opponent) challenged the registration of a device mark in Class 30 (gram flour) granted to the respondents. The opposition was dismissed by the Registrar, and the mark was registered. On appeal under Section 91 of the Trade Marks Act, 1999, the Madras High Court dismissed the appeal. The court held that the respondents were entitled to the benefit of Section 12 of the Act (registration in case of honest concurrent use) because: (i) they had an earlier registration (Trade Mark No.460314) for a similar mark with user claim from 1978, which the appellant had unsuccessfully sought to rectify (petition withdrawn without leave); (ii) the respondents had produced a Chartered Accountant’s certificate showing turnover and advertisement expenses from 1995-96 onwards; (iii) the appellant’s evidence of use was from 1992; and (iv) the territorial limitations on the marks (respondents’ mark limited to Karnataka, appellant’s marks limited to West Bengal) provided an additional ground for concurrent registration under Section 12. The court also held that the Registrar is not strictly bound by the Evidence Act, and a Chartered Accountant’s certificate without underlying documents could be relied upon as evidence of use.

Court: High Court of Judicature at Madras

Coram: Justice Senthilkumar Ramamoorthy

Date of Judgment: 15th April 2026

Citation: CMA (TM) No.21 of 2025 (2026:MHC:1519)

Core Law: Trade Marks Act, 1999 – Sections 12 (honest concurrent use), 91 (appeals)

2. Legal Framework

Major laws and provisions involved

• Trade Marks Act, 1999 – Section 12 (registration in case of honest concurrent use or other special circumstances), Section 91 (appeals to High Court from decisions of Registrar)

• Evidence Act, 1872 – not binding on Registrar of Trade Marks

Key legal principles applied

• Section 12 – honest concurrent use or special circumstances: The Registrar may permit registration by more than one proprietor of identical or similar marks in respect of the same or similar goods if there is honest concurrent use or other special circumstances that make it proper to do so.

• Chartered Accountant’s certificate as evidence of use: The Registrar of Trade

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