TEJAS KARIA, J. (ORAL)

INTRODUCTION

1. The present Appeal under Section 91 of the Trade Marks Act, 1999 (“Act”) read with Rule 125 of the Trade Marks Rules, 2017 has been preferred against the order dated 14.08.2025 (“Impugned Order”) passed by the learned Registrar of Trade Marks (“Respondent No. 1”) whereby the Appellant’s Mark, ‘MAKHAN FISH CORNER’ (“Appellant’s Mark”) registered under Trade Mark No. 2489327 (“Subject Application”) under

Class 43 was removed from the Register of Trade Marks pursuant to adjudication of the Rectification Petition No. 283976 (“Rectification Petition”) filed by M/s Makhan Fish Co (“Respondent No. 2”) before Respondent No. 1.

2. By consent of the Parties, this Appeal is taken up for final hearing.

FACTUAL MATRIX

3. The Appellant is a proprietor of a renowned business of providing food and drink services under the Appellant’s Mark since 1962. The Appellant and his family expanded the business under the Appellant’s Mark such as, ‘MAKHAN BANQUET’, ‘MAKHAN RESIDENCY’, ‘HOTEL MAKHAN RESIDENCY’ etc.

4. On 04.03.2013, the Appellant filed the Subject Application for the Appellant’s Mark for food and drink and allied services. The Subject Application was opposed by Respondent No. 2 vide Notice of Opposition No. 866649 dated 29.09.2016 (“Opposition”). After detailed pleadings and hearings, the Opposition was dismissed by Respondent No. 1 vide order dated 21.11.2022. The Appellant’s Mark was duly registered and a Certificate of Registration No. 3155697 was issued on 02.02.2023 (“Registration”) to the Appellant.

5. Subsequent to the Registration, Respondent No. 2 filed the Rectification Petition on 03.09.2024 before Respondent No. 1 seeking removal of the Appellant’s Mark from the Register of Trade Marks under Sections 57(1) and 58 of the Act.

6. The hearings for the Rectification Petition before Respondent No. 1 were conducted on 11.06.2025 and 17.07.2025. During the hearing held on

11.06.2025, the Appellant advanced detailed oral submissions. During the hearing on 17.07.2025, the Appellant made further submissions and reiterated objections to the maintainability of the Rectification Petition and substantiated the Appellant’s prior adoption and extensive use.

7. Repsondent No. 1 vide the Impugned Order allowed the Rectification Petition and directed removal of the Appellant’s Mark from the Register of Trade Marks.

SUBMISSIONS ON BEHALF OF THE APPELLANT

8. The learned Counsel for the Appellant made the following submissions:

8.1. The Impugned Order has been passed without proper appreciation of facts, evidence, and the settled legal position governing Rectification Petition proceedings. Respondent No. 1 has failed to appreciate and consider that Respondent No. 2 primarily operates in Classes 29 and 35 (fish products and commission agency), which are completely different from Class 43 (food, drinks and allied services), in which the Appellant’s Mark is registered.

8.2. The hearings in the Rectification Petition were conducted before Respondent No. 1 on 11.06.2025 and 17.07.2025, wherein the Appellant advanced detailed oral arguments.

8.3. Respondent No. 1, while passing the Impugned Order, erroneously allowed the Rectification Petition, resulting in the removal of the Appellant’s Mark from the Register of Trade Marks. Respondent No. 1 failed to observe that the Appellant,

being the lawful proprietor and prior adopter of the Appellant’s Mark has established its long-standing use, responsiveness, reputation, and goodwill.

8.4. Respondent No. 1 ought to have disclose the reasons to support his conclusion. The lack of reasons not only prejudices the right if the Appellant to identify grounds of Appeal, but also prevents this Court from discerning how Respondent No. 1 has applied minds and reached the conclusion. The passing of a reasoned and a speaking order is an integral part of the principle of audi alteram partem. The learned Counsel for the Appellant relied upon the following decisions in support of this submission:

• Agriboa