The Registrar must consistently apply relevant laws in trademark registration, ensuring procedural compliance, and cannot ignore third-party rights under the Trade Marks Act, allowing for comprehensive reviews when errors are apparent.

JUDGEMENT :

TEJAS KARIA, J.

1. By way of this common Judgement, C.A.(COMM.IPD-TM) 76/2024 (“Appeal”), W.P.(C)-IPD 54/2025 (“WP 54”) and W.P.(C)-IPD 56/2025 (“WP 56”) are decided in terms of the agreement between the Parties as recorded in order dated 16.10.2025.

2. The Appeal has been filed by Innocenti SA (“Innocenti”) against the order dated 28.05.2024 (“Impugned Order”) passed by the Registrar of Trade Marks refusing the registration of the Trade Mark,

3. WP 54 has been filed by August Ventures Private Limited (“August Ventures”) seeking writ of mandamus against the Registrar of Trade Marks to consider and decide the Applications filed by August Ventures under Section 19 of the Trade Marks Act, 1999 (“Act”) in Trade Mark Application Nos. 5628002 and 5628003 filed by Innocenti.

4. WP 56 has been filed by August Ventures seeking writ of certiorari quashing the Acceptance Orders dated 30.05.2025 and 23.06.2025 (“Acceptance Orders”) and consequent advertisements dated 09.06.2025 for Application No. 5628002 and dated 07.07.2025 for Application No. 5628003 filed by Innocenti in the Trade Marks Journal. It is also prayed to direct the Registrar of Trade Marks (“Registrar”) to bear in mind and consider the registrations and applications of August Ventures while conducting examination under Rule 33 and 34 of the Trade Marks Rules, 2017 (“Rules”) and before granting acceptance and directing advertisement under Section 20 of the Act, whenever any applications consisting of the word, ‘LAMBRETTA’ are filed or come up for examination.

FACTUAL BACKGROUND:

5. In the year 1932, Innocenti Societa Generale per 1’Industria Metallurgica e Meccanica SPA (“Innocenti SG”) was incorporated in Italy, and engaged in the business of designing, making, and selling motor scooters and parts thereof under the Name Mark, ‘LAMBRETTA’ and, thereafter, on 18.11.1948, Innocenti SG obtained Italian Trade Mark Registration No. 83425 for the word, ‘LAMBRETTA’ for vehicles in Class 12, which was renewed periodically. On 02.06.1949, Innocenti SG obtained Indian Trade Mark registration of the Mark, ‘LAMBRETTA’ for motor vehicles in Class 12.

6. On 16.06.1972, by a tripartite agreement amongst (i) Government of India acting through the President of India; (ii) Automobile Products of India Limited (“API”) and (iii) Innocenti SG (which had become Gepar SPA in 1972) together with Innocenti Lambretta S.P.A. (which merged with Gepar SPA on 29.12.1972), Government of India purchased machinery, know-how, and rights in the Trade Mark, ‘LAMBRETTA’.

7. The President of India assigned the aforesaid assets and rights to Scooters India Limited (“SIL”) in 1972, which became the proprietor of the Trade Mark, ‘LAMBRETTA’.

8. During the years 1992 to 2000, SIL was declared sick by the Board of Industrial and Financial Reconstruction (“BIFR”) in terms of the provisions of Section 3(1)(0) of the Sick Industrial Companies (Special Provisions) Act, 1985. Subsequently, SIL was declared no longer sick in the year 2000.

9. In 2007, Brandconcern B.V. (“Brandconcern”) filed Trade Marks Applications attempting to illegally usurp the brand, ‘LAMBRETTA’.

10. During the years 2010 to 2015, SIL, was again declared sick and put under BIFR until the year 2015 and the use of the Trade Mark, ‘LAMBRETT’ continued worldwide through the licensees, and such use by the licensees belonged to SIL.

11. In the year 2015, Heritage Licensing SA changed its name to Innocenti SA.

12. On 05.09.2022, August Ventures