CAM COMMENT: The Calcutta High Court’s new IP Division recently set aside the Deputy Registrar of Trademark’s unreasoned orders that allowed the registration of the “Dunlop” word mark for eight product categories on a “proposed to be used” basis. This landmark judgment, arising from appeals filed by Sumitomo Rubber Industries, underscores the critical importance of procedural fairness, detailed consideration of material facts (including fraud allegations), and the necessity for reasoned decisions in intellectual property adjudication before the new IP Division. It serves as a significant precedent, emphasising rigorous standards for trademark registration processes and judicial review within the new specialised divisions.
The Calcutta High Court has recently marked a significant advancement in the realm of Intellectual Property law, with the establishment of its dedicated Intellectual Property Rights Division (IPRD) and Intellectual Property Rights Appellate Division (IPRAD). Having commenced operations from November 4, 2024, these specialised divisions are poised to streamline the adjudication of IP disputes, promising efficient handling of complex legal and technical matters.
This newly constituted IP Division recently delivered a crucial judgment (trademark) in Dunlop International Limited / Dunlop Slazenger Group Ltd. vs. Glorious Investment Limited and Anr.
The appeals, collectively titled Dunlop International Limited / Dunlop Slazenger Group Ltd. vs. Glorious Investment Limited and Anr. (IPDTMA/14/2024 to IPDTMA/21/2024), challenged orders passed by the Deputy Registrar of Trademarks, which had permitted the registration of the “Dunlop” word mark in favour of Glorious Investment Limited across eight different product categories on a “proposed to be used” basis.
In appeals filed on behalf of Sumitomo, The Hon’ble High Court, in its judgment delivered on June 11, 2025, has set aside all the impugned orders of the Deputy Registrar. The Court identified several critical flaws in the original proceedings, emphasising the importance of procedural fairness and reasoned decision-making within the new IP division framework.
Key takeaways from the judgment include:
- Upholding Principles of Natural Justice: The Court strongly criticised the manner in which the original hearings were conducted. Specifically, the Court highlighted the denial of an adjournment request despite the long pendency of the matters and the procedural rules that were applicable at the time of their initiation. The judgment underscores that justice must not only be done, it must be seen to be done, highlighting that a mere notation of appearance for seeking an adjournment does not constitute a fair hearing on merits. The recording in the impugned orders that both parties were heard was considered unfair and misleading.
- Requirement for Reasoned Orders: The High Court found the Deputy Registrar’s orders to be unreasoned, stating they lacked the necessary “why” to support the “what” (the conclusion). The judgment reiterated that reasoned orders are a safeguard against arbitrary decisions and must clearly demonstrate the application of judicial mind to the issues and evidence presented. The Court stated that simply mentioning the consideration of documents and evidence, without specifying which documents or the weight they held in the decision, does not constitute sufficient reasoning.
- Consideration of Material Facts, Including Fraud Allegations: The Court noted that serious issues, including allegations of fraud, concerning the assignment of the “Dunlop” mark during the liquidation of Dunlop India Ltd., were ignored by the Deputy Registrar. The judgment emphasised that fraud vitiates everything and such material facts warrant due examination. The assignments, which were allegedly made during the liquidation period, and the issue of fraudulent preferences, were material facts that were not addressed.
- Proper Procedure for Recording Assignments: The Court also observed the Appellant’s contention regarding the use of an incorrect form for recording assignments, and highlighted the need to examine the applicability of Section 45 of the Trademarks Act, especially for unregistered marks and disputed assignments.
- Rationale behind dismissing oppositions and allowing applications to proceed to registration:
- It is relevant to note that the Court emphasised on the fact that Glorious had applied for registration of the “Dunlop” mark on a “proposed to be used” basis, on June 22, 2008. At that time, the Court suggested that the mark “Dunlop” lacked distinctive character for the specific goods and services applied for by Glorious. The judgment stated that “Dunlop” is an invented word derived from Sir John Boyd Dunlop, inventor of the phonetic tyres, and that Sumitomo’s origin traces back to Sir John Boyd Dunlop, while Glorious’ predecessor was a subsidiary company of Sumitomo.
- The Court further stated that merely because the “Dunlop” mark was registered in other classes does not automatically mean it should be registered in favour of Respondent no. 1 (who was a permissive user under the Appellant) in classes 16, 26, 32, 33, 38, 40, 41, and 42. Therefore, the test applied by the Trade Marks Registry in allowing the registration applications was considered erroneous and misplaced. The judgment also noted that the well-established principles for determining “distinctiveness” of a mark were ignored and not addressed in the impugned orders.
This outcome for Sumitomo Rubber Industries Ltd. reinforces the importance of following rigorous procedural standards and providing reasoned decisions. The High Court’s decision to remand the matters for fresh consideration, with direction for proper hearing, offers a renewed opportunity for fair adjudication of trademark applications.
