By Ananyaa Banerjee and Samridhi Chugh
In India, as in many other jurisdictions, the trade marks registration process has clearly been demarcated into specific stages, uniquely balancing the rights and interests of third-parties and the applicants. A trade mark application, as per both statute and convention, first undergoes the administrative stage of formalities check for any irregularities, passing which, it reaches the stage of thorough examination by the trade marks examiner, who scrutinizes the application for possible contraventions with the provisions of Trade Marks Act, 1999 and Trade Marks Rules 2017 (hereinafter referred to as “the Act” and “the Rules”). It is only following this stage, once an application is advertised in the Trade Marks Journal, does it become open to oppositions by third-party actors. Section 21 of the Act allows “any person” to challenge a trade mark application, post its journal advertisement by way of a formal opposition.
However, frequently, a procedural question arises – can a person raise any objection or intervention against a trade mark application before its advertisement? Do third parties have the right to be heard during the long-pendency and completion of the examination process before the learned examiner? The Hon’ble Madras High Court in a recent decision, in the case of Rajkumar Sabu v. Sabu Trade Private Ltd. and Anr.[1], comprehensively analyzed similar questions of law and held that third parties can only raise their interventions after an application for a trade mark has been advertised for opposition.
Factual Matrix of the Case
- A trade mark application (hereinafter referred to as “the application”) bearing no. 4416374 was filed by the Applicant/Respondent No. 1, Sabu Trade Private Limited, for the mark SACHAMOTI (hereinafter referred to as the “subject trade mark”) in Classes 30, 35 and 39, on January 22, 2020, with a user claim of April 01, 1984, in respect of goods related to sago (sabudana).
- While the application was still pending at the stage of examination, the Petitioner, Rajkumar Sabu, in July 2021, filed an interlocutory petition before the Registrar, contending that it was the actual registered proprietor of the subject trade mark and that the Applicant/Respondent No. 1 had relied on forged documents in support of its user claim.
- In the meanwhile, the subject application was accepted and advertised in the Trade Marks Journal No. 2199 on March 10 2025, while the aforesaid interlocutory petition failed to receive any response.
- Dissatisfied with the above scheme of events, the Petitioner, ultimately, moved the instant writ petition before the Hon’ble Madras High Court contending that the information submitted in the interlocutory petition warranted a reconsideration of the acceptance order and that the learned examiner ought to have examined the objections before the mark proceeded for advertisement.
Key Legal Issues before the Court
- Whether an interlocutory petition filed at the pre-advertisement stage is maintainable against an application.
- Whether the Registrar is empowered to withdraw the acceptance of an application before its registration under Section 19 of the Act, and whether third parties have the right to be heard as a part of this process.
- Whether any prejudice is caused if the interlocutory petition is dismissed at the aforesaid stage.
Contentions of the Parties before the Court
- The Petitioner maintained its stance that the learned Registrar had the power under Section 19 of the Act to withdraw an application after acceptance but before registration. It argued that the learned Registrar ought to have considered the information presented by it before taking the final decision. It also claimed that nothing in the Act prohibited the Petitioner from being heard even at the stage of pre-advertisement.
- The Respondents, however, argued, that the statutory framework does not permit third-party interventions at the examination stage, with their only remedy being filing an opposition post the advertisement of the application, in consonance with Section 21 of the Act and as per the Rules.
Court’s Observations and Decision
The Hon’ble Madras High Court addressed the substantive and procedural issues raised by the parties, foremostly observing that an application or a petition is only maintainable if it can be traceable to the statute or rules governing the subject matter. Thereafter, it held as follows:
- Petition not traceable to statute: The Court observed that Entry 15, Schedule I of the Trade Marks Rules could be invoked only for three clear purposes – review of the Registrar’s decision, obtaining the Registrar’s order on an interlocutory matter or any other matter not covered in other Trade Marks Forms. Thus, it was held that the said interlocutory petition was without statutory basis.
- Third party interventions only allowed post advertisement: The Court also observed that while Rule 33(1) provides for the examination and even the re-examination of an application at the pre-advertisement stage, there is nothing thereunder to provide for a third-party intervention or opposition at that stage, which can only be filed post-advertisement, and is governed by Section 21 and Rules 42 to 51.
- No right to be heard for third parties on withdrawal: The Court further held that while the Registrar can exercise his power to ‘withdraw acceptance’ at any stage, Section 19 does not confer any person, other than the Applicant, to be heard on this question.
- Petitioner deserved a response: Balancing the interests, the Court observed that at the minimum, the Petitioner did deserve a response from the Trade Marks Registry to the contentions raised in its interlocutory petition as it had paid the requisite fee.
- Court’s solution to future contentions: The Court observed that the Trade Marks Registry should make it mandatory that the relevant provision be indicated based on which the interlocutory petition is filed and to reject a petition in case it is not found maintainable.
- No prejudice caused: Finally, the Court held that the very option of filing oppositions at the post-advertisement stage guaranteed that the Petitioner was not without remedy, and could adduce evidence at a further stage, as under Rules 42 to 51. Contrarily, the Court held that irreparable damage would be caused to the Applicant/Respondent No. 1 should the acceptance order be quashed.
Practice across Jurisdictions
- In a majority of jurisdictions, a trade mark application is first examined by the appropriate office, then published for third-party oppositions, including in the EUIPO, Canada, Australia, New Zealand etc. In these systems, third parties cannot formally challenge marks before their advertisement or publication in the appropriate gazettes.
- However, in some jurisdictions, informal pre-publication interventions are allowed. For instance, in the United States, the USPTO permits ‘Letters of Protest’ allowing third parties to file evidence relevant to examination. Further, while pre-publication interventions are not allowed in the United Kingdom, a ‘Third Party Observation’, which is not a formal legal action, may be filed after acceptance of an application by any person who believes that the said application was accepted in error.
The ruling, while at the first instance, appearing to merely be elucidating a procedural point of law, provides significant clarifications in light of the current trend wherein prior third-party proprietors tend to file representations and requests to the Trade Marks Registry before the advertisement of an application. While purely administrative in nature, such requests are filed with to draw the attention of the Examiners to existing issues with the application, including possible conflicts in rights.
However, as held by the Hon’ble Court, the same do not carry any statutory weight. Such representation cannot be legally enforced or replace the filing of a proper opposition at the appropriate stage, bypassing the process. The decision has also joined a series of previous cases that uphold procedural certainty and fairness, and reinforce the stringent nature of the trade marks registration process and timelines in India.
[1] (W.P. (IPD) No. 34 of 2025 and W.M.P (IPD) No. 23 of 2025)