The court affirmed that not all amendments to a trademark application are substantial alterations; the amendment's nature must be assessed based on its impact on the original application.

JUDGMENT :

C. HARI SHANKAR, J.

A. The lis

1. The device mark [“the subject mark” hereinafter] was registered in favour of Respondent 1 [“the respondent” hereinafter] in Class 6 for self-tapping metal screws and self drilling screws, vide Registration No. 3986970, under Section 23 of the Trade Marks Act, 1999 [“the Act” hereinafter]. The appellant applied, under Section 57 of the Act, for rectification of the register by removal of the subject mark therefrom. By order dated 15 December 2022, the Deputy Registrar of Trade Marks [“the Dy RTM” hereinafter] allowed the application and cancelled the registration of the subject mark. Aggrieved thereby the respondent appealed to this Court by way of CA (Comm IPD-TM) 1/2023, under Section 91 of the Act. The appeal stands allowed by a learned Single Judge, vide judgment dated 14 May 2025. The appellant is in appeal, under Clause X of the Letters Patent applicable to this Court.

B. Facts

2. The respondent filed Application No. 3986970, under Section 23 of the Act, for registration of the mark. User of the mark was claimed from 27 February 2013. First Examination Report [“FER” hereinafter] dated 26 November 2018 was issued by the Registrar of Trade Marks [“the RTM” hereinafter] raising objections, to which the respondent replied on 13 December 2018. In the reply, too, the respondent claimed user of the mark since 2013. However, the mark to which the affidavit referred was the subject mark , and not the mark for which the respondent had sought registration.

3. On 13 December 2018, the respondent applied for correction of a clerical error in its Registration Application, as it claimed to have inadvertently applied for the mark instead of . The respondent, therefore, sought permission to amend its application.

4. The request was allowed, and the subject mark proceeded to registration.

5. The appellant, thereafter, proceed to institute three actions against the respondent, qua the subject mark.

6. On 24 July 2019, the appellant filed a petition [“the rectification petition” hereinafter] under Section 57 [Power to cancel or vary registration and to rectify the register: (1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit] of the Act before the RTM, seeking rectification of the register and cancellation of the subject mark .

7. In September 2019, the appellant instituted CS (Comm) No. 117/2019 [ Landmark Crafts Pvt Ltd v. Sohan Lal Gupta ] against the respondent, seeking an injunction against use of the mark by the respondent. The suit is pending. An ex parte ad interim injunction which was granted to the appellant on 7 September 2019, was vacated on 3 October 2019.

8. On 29 July 2020, the appellant filed a complaint before the RTM, alleging irregularities in the grant of registration to the subject mark. It was alleged, in the said complaint, that the amendment, sought by the respondent to substitute the mark for the mark in the Registration Application, ought not to have been allowed, as it amounted to a substantial alteration, which was not permissible under Rule 37 [Correction and amendment of application - An applicant for registration of a trade mar