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2026 Supreme(Online)(Del) 16934
IN THE HIGH COURT OF DELHI AT NEW DELHI
Mini Pushkarna, J
Prakash Industries Ltd. – Appellant
Versus
Registrar of Trade Mark – Respondent
CONT.CAS(C) 1437/2022 | CONT.CAS(C) 16/2023
For the Appellants/Petitioners: Yasheswini Sharma, Rishabh Srivastava, Sanjay Aggarwal, Sahil Gupta
For the Respondents: Nidhi Raman, Akash Mishra, Amique Khalid, Anubhav Gupta, Rashi Aggarwal
The creation of third-party rights in a trademark after its cancellation by a judicial or quasi-judicial order and a settlement agreement is contemptuous and renders such transfers void.
Headnote:(A) Contempt of Court - Wilful Disobedience - Breach of settlement terms and IPAB order regarding trademark cancellation - Creating third-party rights in a trademark that was cancelled pursuant to a settlement and judicial order is contemptuous and renders such transfer void. (Para 17, 18)
Issues: Whether the creation of third-party rights in a trademark after its cancellation by the IPAB and a court-approved settlement constitutes contempt of court.
MINI PUSHKARNA, J.
(ORAL):
1. The present petitions have been filed alleging wilful disobedience of the order dated 30th November, 2018, passed by the Intellectual Property Appellate Board (“IPAB”) and the consent order dated 27th February, 2017, passed by this Court in CS(OS) 1562/2015.
2. This Court notes that vide order dated 30th November, 2018, passed by the IPAB, the trademark bearing no. 1800087 of respondent no.1 in CONT. CAS (C) 16/2023 in Class 35, for the mark, i.e., ‘PRAKASHDEEP’, was cancelled.
3. The said order reads as under:
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4. The aforesaid order was passed on the basis of settlement between the parties, terms of which are reproduced in application being I.A. 2537/2016, in CS(OS) 1562/2015, filed before this Court.
5. The terms of the said settlement as contained in the application, read as under:
“xxx xxx xxx
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xxx xxx xxx”
6. Perusal of the aforesaid clearly shows that in terms of the Settlement, the respondent herein undertook not to use the trademark ‘PRAKASHDEEP’ or ‘PRAKASH’ or file any application for its registration.
7. The said settlement pertains to use of the trademark in Classes 6, 9 and 17.
8. It is to be noted that on the basis of the aforesaid settlement, the rectification petition filed on behalf of the petitioner herein with regard to use of the said mark by the respondents under Class 35 was also allowed, and the trademark under Class 35 as registered by the respondent no.1 in CONT. CAS (C) 16/2023 under the name ‘PRAKASHDEEP’ was removed vide order dated 30th November, 2018, passed by the IPAB.
9. Subsequently, after the passing of the aforesaid order, the respondents herein renewed the registration under Class 35. Further, respondent nos. 1 and 2 in CONT. CAS (C) 16/2023 are also stated to have created third party right in the said registration under Class 35 for the mark ‘PRAKASHDEEP’.
10. Thus, the present contempt petition has been filed.
11. Clearly, after the settlement between parties, and passing of the order dated 30th November, 2018, there was no occasion for the Registrar of Trade Marks to renew the trademark of the respondent nos. 1 and 2 in CONT. CAS (C) 16/2023 for the mark, ‘PRAKASHDEEP’, under Class 35.
12. In response, learned counsel appearing for respondent - Registrar of Trade Marks submits that the mark of respondent nos. 1 and 2, under Class 35 was removed on 19th December, 2022.
13. He draws the attention of this Court to the order dated 18th April, 2023, passed in the present proceedings, where the said fact has been recorded.
14. Paragraph 1 of the order dated 18th April, 2023, reads as under:
“1. Mr. Harish Vaidyanathan Shankar, learned counsel for Respondent no. 1 has entered appearances and he states that trademark bearing registration No. 1800087 has been removed by the registry.
xxx xxx xxx”
15. At this stage, this Court records the statement of learned counsel appearing for the petitioner that despite the aforesaid order of the IPAB and the settlement between the parties, respondent nos. 1 and 2 in CONT. CAS (C) 16/2023 created third party right in the mark ‘PRAKASHDEEP’ under Class 35.
16. This Court also records the statement made by learned counsel appearing for respondent nos. 1 and 2 that the said transfer in favour of a third party was made in the year 2020.
17. Clearly, the said transfer by the said respondents in favour of the third party was contemptuous in nature, as no third party right could have been created by the respondents in view of the settlement, and the order as aforesaid.
18. Evidently, any transfer made by respondent nos. 1 and 2 in CONT. CAS (C) 16/2023 for the mark ‘PRAKASHDEEP’ under Class 35, was void.
19. At this stage, learned counsel appearing for respondent nos. 1 and 2 extends unconditional apology before this Court.
20. The aforesaid apology is accepted.
21. Noting the aforesaid, the present petition is accordingly disposed of.
