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Calcutta High Court
Marriott Worldwide Corporation vs Sunjoy Hans And Ors on 12 August, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIPD -10 2025:CHC-OS:149
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IPDTMA/6/2025
IA NO: GA-COM/1/2025
MARRIOTT WORLDWIDE CORPORATION
VS
SUNJOY HANS AND ORS.
For the appellant : Mr. Debnath Ghosh, Senior Advocate
Mr. Manoj Kumar Tiwari, Advocate
Ms. Madhu Rewari, Advocate
Mr. Biswaroop Mukherjee, Advocate
Ms. Mini Agarwal, Advocate
For the respondents no. 1&2 : Mr. Rudraman Bhattacharyya, Sr Adv.
Mr. Suryaneel Das, Advocate
Mr. Akash Munshi, Advocate
Ms. Oindrila Ghosal, Advocate
Mr. Chiranjit Pal, Advocate
Mr. Anish Gupta, Advocate
For the Controller : Mr. Sunil Singhania, Advocate.
Mrs. Priti Jain, Advocate.
Heard on : 12th August 2025
Judgment on : 12th August, 2025.
Ravi Krishan Kapur, J.:
1. This is an appeal under Section 91 of the Trademarks Act 1999, directed
against an order dated 18 February 2025, passed by the Deputy Registrar
of Trademarks, whereby the appellant’s opposition to the respondent nos.
2
1 and 2’s application for registration of a deceptively similar mark, “The
2025:CHC-OS:149
New Marrion” was dismissed.
2. Briefly, the petitioner is engaged in the hospitality industry and is
carrying on business as part of the Marriott Group of Companies. The
petitioner is a well-known brand and provides hospitality and related
services. The petitioner is also the registered proprietor of the well-known
trademark “MARRIOTT”, which it has envisaged, adopted and used
continuously worldwide since 1957 and in India since 1992. The
petitioner has obtained registration for the MARRIOTT trade marks
including the word mark “MARRIOTT” with the earliest registration dating
back to 1992 as far as India is concerned.
3. The respondent no. 1 claims to be the proprietor of the impugned mark
, in class 43 for similar services of hotel and resort services,
restaurants, bar and lounge services, banquet and catering services.
4. It is alleged that the respondent no. 2 had applied for registration of the
impugned mark on 8 November, 2022 with the user claim since 12
October, 2000. Thereafter, the respondent no. 2 filed a FORM TM-M on 6
May, 2024 to amend the name of the applicant as Sunjoy Hans (the
respondent no. 1). Upon the filing of the above application, diverse orders
were passed from time to time and ultimately the impugned order came to
be passed inter alia rejecting the objection of the petitioner on the ground
that the evidence in support of the opposition had not been apostilled in
accordance with law.
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5. On behalf of the appellant, it is contended that the impugned order 2025:CHC-OS:149
has
been passed in violation of the principles of natural justice and without
taking into consideration the evidence in support of the opposition filed by
the appellant under Rule 45 of the Trademarks Rule 2017. It is further
contended that the provisions of section 14 of the Notaries Act 1952 have
been totally disregarded and despite an affidavit being filed in support of
the opposition by the appellant and the same being notarized before the
Notary Public of the place where it was executed i.e. Maryland, USA, and
the same was unjustifiably and arbitrarily not taken on record. In support
of such contentions, the appellant relies on the decisions in Rajesh
Wadhwa v. Dr. (Mrs.) Sushma Govil, 37(1989) DLT 88, para 12, Crocodile
Pte. Ltd. v. Lacoste S.A: (2008) ILR 1 Del 1101 and Jaldhi Overseas Pvt. Ltd.
v. Bhushan Power & Steel Limited: 2017 SCC Online Cal 4414 at paras
52,53,62 and 63.].
6. On behalf of the respondent nos. 1 and 2, it is submitted that the instant
appeal is infructuous inasmuch as the impugned order has already been
implemented and the registration certificate in terms of the impugned
order has been uploaded. It is further contended that the impugned order
does not require any interference whatsoever inasmuch as the statutory
authorities were well within their rights, not to place any reliance on the
evidence in support of the opposition.
7. Admittedly, the merits of the objections raised by the appellant have not
been adjudicated upon in the impugned order. The only ground on which
the opposition filed on behalf of the appellant has been rejected is that the
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same had not been apostilled in accordance with law. The evidence
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affidavit filed in support of the opposition was notarized before the Notary
Public at Maryland, USA. This being the case, there was no further
requirement for the Central Government to issue a notice under Section
14 of the Notaries Act, 1952. [Rajesh Wadhwa v. Dr. (Mrs.) Sushma Govil,
37(1989) DLT 88, para 12 and Crocodile Pte. Ltd. v. Lacoste S.A: (2008) ILR
1 Del 1101: MANU/DE/9164/2007, para16.]. In any event, such
procedural and technical grounds did not justify dismissal of the objection.
8. In this context, the respondent’s reliance on the decision In Re: Rei Agro
and UBS AG & Others, 2015 SCC Online Calcutta 2557 is misplaced. The
infirmity in the decision rendered in Rei Agro and UBS AG & Others (supra)
in not having considered the decision in K K Ray (Pvt) Ltd vs State , AIR
1967 Cal 636 has been recognised in Jaldhi Overseas Pvt. Ltd. v. Bhushan
Power (Supra). In addition, under Rule 120(3)(b) of the Trademarks Rules
2017, the Registrar could have accepted affidavits notarized in any
country or place outside India before a Notary Public of the country or
place and such provisions are part of the special statute and Rules framed
thereunder and prevail over all other general laws. There is nothing in
Section 14 of the Notaries Act, 1952, which creates an embargo in
accepting the evidence in support of the opposition being taken on record.
There is also a presumption to this effect under section 57 of the Evidence
Act, 1882 with regard to the genuineness of the seal of the said Notary.
9. Ironically, the respondent no 2 failed to file its Counterstatement within
the prescribed time of 2 months from the receipt of the notice of
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opposition as prescribed under the Act. Such delay was condoned by2025:CHC-OS:149
the
respondent no 3 without any power to condone the same with the result
of shifting the burden of proof on the appellant to show receipt of the
notice of opposition. Such exercise of power is ex facie arbitrary and
perverse to say the least.
10. In such view of the matter, the impugned order is unsustainable and is
set aside. The matter is remanded back to the respondent no. 3 to have
the matter heard afresh, including the opposition filed by the appellant
and after taking the evidence in support thereof on record.
11. It is made clear that there has been no adjudication on the merits of the
case and all questions insofar as the merits of the case are concerned are
left open to be decided in accordance with law. The above exercise is to be
completed within a period of four months from the date of communication
of this order to the respondent No. 3.
12. With the above directions, IPDTMA/6/2025 stands disposed of. Since no
affidavit has been filed by the respondent no 2, the allegations contained
in the stay application and appeal are not admitted.
13. All connected interlocutory applications including GA 1 of 2025 stand
disposed of as infructuous.
(RAVI KRISHAN KAPUR, J.)
SK.
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