Introduction
Trademark disputes frequently raise complex issues involving the rights of prior use, the procedures prescribed for registration, and the scope of third-party intervention at different stages of the trademark application process. One recurring point of controversy relates to whether a third party is entitled to be heard by the Registrar before the advertisement of a trademark application—especially in situations where claims of prior use or document fabrication are made. This subject sits at the intersection of statutory interpretation under the Trade Marks Act, 1999, and procedural fairness in the trademark registration system.
A vivid illustration of these issues recently came up before the Madras High Court in the case of Sabu Trade Private Limited v. Trademark Registrar & Ors. (W.P.(IPD)No.34 of 2025), involving the word mark “SACHAMOTI”.
Facts of the case
The first respondent in this case is Sabu Trade Private Limited, a company that claims proprietorship and ownership of the trademark “SACHAMOTI,” primarily associated with products like sabudana (sago) for human consumption. According to records from the Trademark Registry, Sabu Trade Private Limited applied for registration of the word mark “SACHAMOTI” on January 22, 2020, asserting that the mark has been in use by the company or its predecessor since April 1, 1984. This longstanding use is supported by various documents filed in the Registry and has been a key point in multiple legal proceedings involving trademark rights and ownership disputes within entities related to the mark.
The commercial importance of the “SACHAMOTI” mark and its reputed prior use underpins the legal tussle centred on the trademark registration process and the rights of third parties to challenge or be heard in that process. The petitioner filed an interlocutory petition alleging fabrication of documents supporting the use claim and sought a hearing before the acceptance and advertisement of the trademark application. Despite this, the Trademark Registry proceeded to accept and publish the mark in the Trade Marks Journal, leading to the current legal contest.
This matter was adjudicated by the Madras High Court in Sabu Trade Private Limited v. Registrar of Trade Marks & Ors., which clarified procedural rights and statutory interpretations concerning pre-advertisement opposition and interlocutory petitions under the Trade Marks Act, 1999.
Key Issues
- Whether an interlocutory petition filed by the petitioner without citing a specific statutory provision or rule is maintainable before the Trademark Registry at the pre-advertisement stage?
- Whether the Trade Marks Act, 1999, allows for a hearing of a third-party interlocutory petition or opposition prior to advertisement of the trademark application in the Trade Marks Journal?
- Whether the Registrar of Trade Marks is empowered under Section 19 of the Trade Marks Act to withdraw acceptance of a trademark application before registration, and if such power confers any right on third parties to be heard before withdrawal?
- Whether the absence of response by the Registrar of Trade Marks to the interlocutory petition filed by the petitioner and subsequent RTI request amounts to procedural unfairness or violation of statutory norms?
- Whether the petitioner has an adequate remedy through the formal opposition filed post-advertisement, and consequently, whether there is any prejudice caused by dismissing the interlocutory petition?
Discussion and Findings
The Madras High Court in the present case delivered a comprehensive judgment addressing the procedural and substantive aspects of the interlocutory petition filed by the petitioner against the trademark application for “SACHAMOTI.”
The Court began by emphasizing that any interlocutory petition seeking to challenge the Registrar’s proceedings must have a clear statutory or procedural foundation. It noted that the petitioner’s interlocutory petition, filed in July 2021, did not cite any specific provision under the Trade Marks Act or Rules despite invoking Entry 15 of Schedule I, which merely covers fees for related filings. The court held that paying a fee alone does not confer a right to the consideration of such petitions without statutory backing.
Further, the Court reaffirmed that the Trade Marks Act and its allied rules clearly demarcate the time and manner for third-party participation in trademark registration. Specifically, opposition to an application is statutorily allowed only after the mark has been examined, accepted, and advertised in the Trade Marks Journal. The Court underscored that there is no legal provision for hearing or entertaining objections at the pre-advertisement stage, and any attempt to do so would contravene the statutory scheme.
Addressing the petitioner’s contention invoking Section 19 of the Trade Marks Act, which confers power on the Registrar to withdraw acceptance, the Court clarified that while such power exists, it is discretionary and vested solely in the Registrar. Crucially, the statute does not grant any third party the right to be heard in relation to the exercise of this power before advertisement and registration.
The Court also considered the petitioner’s grievance about the Registrar’s failure to respond to the interlocutory petition and subsequent Right to Information (RTI) request. It was held that since the Registrar had uploaded all relevant documents on the IP India portal and communicated the same in response to the RTI application, there was no breach of procedural fairness or denial of natural justice to the petitioner.
Importantly, the Court noted that the petitioner had already lodged a formal opposition following advertisement of the mark, which had yet to be decided by the Registry. This formal opposition process, governed by the Trade Marks Act and Rules, provides the petitioner with an adequate and effective remedy to raise concerns and establish any grounds against registration.
Balancing the interests, the Court found that non-interference with the Registrar’s acceptance and advertisement of the trademark prior to the resolution of the opposition would not cause any prejudice to the petitioner. Conversely, granting relief at this stage could potentially cause irreparable harm to the first respondent applicant who had complied with the statutory procedure.
In conclusion, the Court dismissed the writ petition, emphasizing the importance of adherence to the statutory framework regulating trademark registration and opposition. The judgment reinforces that interlocutory petitions unsupported by clear legal authority will not be entertained, and the exclusive window for opposition rights is limited to the post-advertisement period as prescribed under the law.
AMLEGALS Remark
The Madras High Court’s judgment in Sabu Trade Private Limited v. Registrar of Trade Marks & Ors. clarifies significant procedural and substantive aspects regarding third-party interventions in trademark registration proceedings, particularly at the critical pre-advertisement stage.
the dispute over the “SACHAMOTI” trademark, which is associated primarily with sabudana (sago) products and has been claimed to be in continuous use since 1984, highlights important facets of trademark law concerning the registration process and third-party rights. The Madras High Court’s judgment reaffirmed that challenges to a trademark application must align strictly with the statutory framework under the Trade Marks Act, 1999, which allows opposition only after the mark has been accepted and advertised. The Court clarified that interlocutory petitions without specific statutory backing, aimed at pre-advertisement intervention, are not maintainable. The decision balanced the Registrar’s discretionary powers with the rights of applicants and opponents, emphasizing procedural fairness, administrative efficiency, and the protection of prior use claims within proper timelines. This precedent ensures the orderly registration of trademarks like “SACHAMOTI,” safeguarding the interests of established users while providing a clear and predictable process for contesting trademark applications.
– Team AMLEGALS
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