C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 1 of 43

* IN THE HIGH COURT OF DELHI AT NEW DELHI

% Judgement Delivered on: 31.01.2026

+ C.A.(COMM.IPD-TM) 76/2024, I.A. 45128/2024&I.A. 45132/2024

INNOCENTI SA .....Appellant

versus

EXAMINER OF TRADEMARKS & ANR. .....Respondents

Advocates who appeared in this case

For the Appellant : Mr. Chander M. Lall, Senior Advocate with

Dr. Sheetal Vohra, Mr. Rahul Dwivedi, Mr.

Sridharan Rajan Ramkumar, Ms. Annanya

Mehan, Mr. Ashutosh & Ms. Sakshi

Rathore, Advocates.

For the Respondents : Ms. Nidhi Raman, CGSC along with Mr.

Mayank Sansanwal & Mr. Om Ram,

Advocates for Respondent No.1.

Mr. Jayant Mehta, Senior Advocate along

with Mr. Kapil Wadhwa, Ms. Apoorva

Maheshwari, Ms. Bhavya Gupta & Ms.

Priyanshi Bhageria, Advocates for

Respondent No.4.

+ W.P.(C)-IPD 54/2025, CM 223/2025 & CM 224/2025

AUGUST VENTURES PRIVATE LIMITED .....Petitioner

versus

REGISTRAR OF TRADE MARKS .....Respondent

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 2 of 43

Advocates who appeared in this case

For the Petitioner : Mr. Jayant Mehta, Senior Advocate

along with Mr. Kapil Wadhwa, Ms.

Apoorva Maheshwari, Ms. Bhavya

Gupta & Ms. Priyanshi Bhageria,

Advocates.

For the Respondent : Ms. Nidhi Raman, CGSC along with

Mr. Mayank Sansanwal & Mr. Om

Ram, Advocates.

Mr. Chander M. Lall, Senior

Advocate with Dr. Sheetal Vohra Mr.

Rahul Dwivedi, Mr. Sridharan Rajan

Ramkumar, Ms. Annanya Mehan, Mr.

Ashutosh & Ms. Sakshi Rathore,

Advocates for Innocenti SA.

+ W.P.(C)-IPD 56/2025, CM 232/2025 & CM 233/2025

AUGUST VENTURES PRIVATE LIMITED .....Petitioner

versus

REGISTRAR OF TRADE MARKS & ANR. .....Respondents

Advocates who appeared in this case

For the Petitioner : Mr. Jayant Mehta, Senior Advocate

along with Mr. Kapil Wadhwa, Ms.

Apoorva Maheshwari, Ms. Bhavya

Gupta & Ms. Priyanshi Bhageria,

Advocates.

For the Respondents : Ms. Nidhi Raman, CGSC along with

Mr. Mayank Sansanwal & Mr. Om

Ram, Advocates for Respondent

No.1.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 3 of 43

Mr. Chander M. Lall, Senior

Advocate with Dr. Sheetal Vohra Mr.

Rahul Dwivedi, Mr. Sridharan Rajan

Ramkumar, Ms. Annanya Mehan, Mr.

Ashutosh & Ms. Sakshi Rathore,

Advocates for R-2.

CORAM:

HON'BLE MR. JUSTICE TEJAS KARIA

JUDGEMENT

TEJAS KARIA, J

1. By way of this common Judgement, C.A.(COMM.IPD-TM) 76/2024

(“Appeal”), W.P.(C)-IPD 54/2025 (“WP 54”) and W.P.(C)-IPD 56/2025

(“WP 56”) are decided in terms of the agreement between the Parties as

recorded in order dated 16.10.2025.

2. The Appeal has been filed by Innocenti SA (“Innocenti”) against the

order dated 28.05.2024 (“Impugned Order”) passed by the Registrar of

Trade Marks refusing the registration of the Trade Mark,

‘ ’ under Application No. 5628005 in Class 12.

3. WP 54 has been filed by August Ventures Private Limited (“August

Ventures”) seeking writ of mandamus against the Registrar of Trade Marks

to consider and decide the Applications filed by August Ventures under

Section 19 of the Trade Marks Act, 1999 (“Act”) in Trade Mark Application

Nos. 5628002 and 5628003 filed by Innocenti.

4. WP 56 has been filed by August Ventures seeking writ of certiorari

quashing the Acceptance Orders dated 30.05.2025 and 23.06.2025

(“Acceptance Orders”) and consequent advertisements dated 09.06.2025

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 4 of 43

for Application No. 5628002 and dated 07.07.2025 for Application No.

5628003 filed by Innocenti in the Trade Marks Journal. It is also prayed to

direct the Registrar of Trade Marks (“Registrar”) to bear in mind and

consider the registrations and applications of August Ventures while

conducting examination under Rule 33 and 34 of the Trade Marks Rules,

2017 (“Rules”) and before granting acceptance and directing advertisement

under Section 20 of the Act, whenever any applications consisting of the

word, ‘LAMBRETTA’ are filed or come up for examination.

FACTUAL BACKGROUND:

5. In the year 1932, Innocenti Societa Generale per 1’Industria

Metallurgica e Meccanica SPA (“Innocenti SG”) was incorporated in Italy,

and engaged in the business of designing, making, and selling motor

scooters and parts thereof under the Name Mark, ‘LAMBRETTA’ and,

thereafter, on 18.11.1948, Innocenti SG obtained Italian Trade Mark

Registration No. 83425 for the word, ‘LAMBRETTA’ for vehicles in Class

12, which was renewed periodically. On 02.06.1949, Innocenti SG obtained

Indian Trade Mark registration of the Mark, ‘LAMBRETTA’ for motor

vehicles in Class 12.

6. On 16.06.1972, by a tripartite agreement amongst (i) Government of

India acting through the President of India; (ii) Automobile Products of

India Limited (“API”) and (iii) Innocenti SG (which had become Gepar

SPA in 1972) together with Innocenti Lambretta S.P.A. (which merged with

Gepar SPA on 29.12.1972), Government of India purchased machinery,

know-how, and rights in the Trade Mark, ‘LAMBRETTA’.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 5 of 43

7. The President of India assigned the aforesaid assets and rights to

Scooters India Limited (“SIL”) in 1972, which became the proprietor of the

Trade Mark, ‘LAMBRETTA’.

8. During the years 1992 to 2000, SIL was declared sick by the Board of

Industrial and Financial Reconstruction (“BIFR”) in terms of the provisions

of Section 3(1)(0) of the Sick Industrial Companies (Special Provisions)

Act, 1985. Subsequently, SIL was declared no longer sick in the year 2000.

9. In 2007, Brandconcern B.V. (“Brandconcern”) filed Trade Marks

Applications attempting to illegally usurp the brand, ‘LAMBRETTA’.

10. During the years 2010 to 2015, SIL, was again declared sick and put

under BIFR until the year 2015 and the use of the Trade Mark,

‘LAMBRETT’ continued worldwide through the licensees, and such use by

the licensees belonged to SIL.

11. In the year 2015, Heritage Licensing SA changed its name to

Innocenti SA.

12. On 05.09.2022, August Ventures participated in SIL’s e-auction, and

acquired worldwide rights, title, and interest in the Trade Marks,

‘LAMBRETTA’ and ‘LAMBRO’ and all associated Trade Marks and paid

consideration for an amount of ₹6,86,14,131/-.

13. On 28.09.2022, Innocenti filed Trade Mark Application Nos. 5628002

and 5628003 for ‘LAMBRETTA’ on a proposed to be used basis under

Classes 12 and 25 respectively.

14. On 24.11.2022, under a valid Assignment Deed, August Ventures

acquired all the worldwide rights interest and title in respect of the Trade

Marks, ‘LAMBRETTA’ and ‘LAMBRO’ and all other associated Trade

Marks, along with the goodwill and all common law rights from SIL.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 6 of 43

15. On 12.07.2023, the Examination Reports in Trade Mark Application

Nos. 5625002 and 5628003, cited August Venture’s prior applications /

registrations.

16. On 25.07.2023 and 26.07.2023, Innocenti in the reply to the

Examination Report in Trade Marks Application Nos. 5628002 and 5628003

admitted that the Mark, ‘LAMBRETTA’ was coined and adopted by

Innocenti SG, which was later assigned to SIL and subsequently, to the

August Ventures.

17. On 19.04.2024 and 16.05.2025, Innocenti relied upon international

registrations obtained by Innocenti during the hearing in Trade Mark

Application No. 5628002. On 09.06.2025 and 07.07.2025, the Trade Mark

Application Nos. 5628002 and 5628003 were advertised in Trade Marks

Journal Nos. 2212-0 and 2216-0, respectively.

18. August Ventures filed Applications under Section 19 of the Act on

20.06.2025 seeking withdrawal of acceptance and subsequent refusal of

Trade Mark Application Nos. 5628002 and 5628003.

19. In September 2025, August Ventures filed the WP 54 seeking a writ

in the nature of mandamus to consider and decide the Applications under

Section 19 of the Act and WP 56 seeking a writ in the nature of certiorari

quashing of the Acceptance Orders and consequent advertisements in the

Trade Marks Journal.

SUBMISSIONS ON BEHALF OF AUGUST VENTURES:

20. The learned Senior Counsel for August Ventures submitted as under:

20.1. Innocenti is incorporated in Switzerland in 2008 as Heritage

Licensing SA and changed its name to Innocenti SA in 2015 to

create a false impression of being associated with original

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 7 of 43

Innocenti SG. Innocenti and its associated companies are habitual

infringers and usurp the trademarks owned by third parties.

20.2. In 2008, the Court of the Hague vide order dated 24.09.2008

banned Brandconcern from filing Applications for the Mark ‘Pink

Ribbon’ or combination of the words ‘Pink’ or ‘Ribbon’, which are

owned by the Pink Ribbon Foundation, which is a charitable

institution aimed to improve breast cancer awareness.

20.3. The first set of applications for registration of the Mark,

‘LAMBRETTA’ were filed in 2007 through Brandconcern and the

second set of applications for the Mark, ‘LAMBRETTA’ have been

filed by the Innocenti in 2022. Both these attempts are made to

illegally obtained the registration of the Mark, ‘LAMBRETTA’ by

claiming themselves to be the owners of the Mark,

‘LAMBRETTA’.

20.4. Innocenti is a pirator and not the originator of the Mark,

‘LAMBRETTA’. Accordingly, no rights vest in Innocenti to obtain

registration of Mark, ‘LAMBRETTA’ in name of Innocenti.

Therefore, the acceptance of Application Nos. 5628002 and

5628003 for registration of the Mark, ‘LAMBRETTA’ in Class 12

and 25 under Section 18(5) of the Act is squarely hit by Section 11

of the Act despite the Mark, ‘LAMBRETTA’ belonging to August

Ventures having been cited.

20.5. The Acceptance Orders are contrary to the order dated 28.05.2024

refusing the Application No. 5628005 file by Innocenti for

registration of the Mark, ‘LAMBRETTA’, against which Innocenti

has filed the Appeal. Once the Respondent had taken a view that

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 8 of 43

the registration of the Mark, ‘LAMBRETTA’ was not permissible

in Application No. 5628005, the Acceptance Orders passed under

Section 18(5) of the Act were contrary to law.

20.6. The Respondent has erred in bypassing the provisions of Section

11 of the Act by ignoring the identical Mark, ‘LAMBRETTA’

belonging to August Ventures cited in the examination report. Any

Application for an identical mark applied for in the same class of

goods and services must be nipped in the bud. An application for

registration of a Trade Mark cannot be accepted, if there is an

identical mark, which is phonetically and visually similar, is cited

in the examination report for the said application.

20.7. The right of a registered proprietor to protect its Trade Mark is

precious and unlike a copyright or a design registration, the Trade

Mark registration goes through an open challenge and the

proprietor is granted registration after multiple levels of scrutiny at

every stage. Section 11 of the Act is a mandate that the Registrar

has to follow at every stage of the prosecution of a trade mark

starting from acceptance to examination to opposition to

registration to rectification. The duty to apply Section 11 of the Act

encompasses the principles that govern a Trade Mark application

at every stage. The acceptance or advertisement of a Mark is not

merely a ministerial act and requires proper application of mind.

The duty under Section 11 of the Act permeates across different

stages of the Act and every stage is equally important. Therefore,

availability of remedy of opposition or rectification cannot absolve

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 9 of 43

the Registrar from exercising its duty under Sections 9 and 11 of

the Act.

20.8. Accordingly, Section 19 of the Act is a valuable right granted to

the rightful owner of the Mark as well as to the Registrar. The

purpose of Section 19 of the Act is to save the burden on the

rightful owner of the trade mark to prosecute opposition under

Section 21 of the Act or rectification under Sections 47 and 57 of

the Act. Section 19 of the Act empowers the Registrar to rectify an

‘error’ or an oversight, which may have been committed under

Section 18 of the Act. The availability of the remedy of opposition

/ rectification cannot be a tradeoff for exercising rights under

Section 19 of the Act to rectify an ‘error’.

20.9. The power under Section 19 of the Act is given to the Registrar to

withdraw an erroneous acceptance of an application for a

registration of the Trade Mark. To restrict exercise of such power

only ‘suo moto’ or at ‘discretion’ of the Registrar makes the power

completely arbitrary.

20.10. There is no prohibition under Section 19 of the Act for a rightful

proprietor of a trade mark to make a representation before the

Registrar for exercising the right available under Section 19 of the

Act. The purpose of Section 19 of the Act is to empower the

Registrar to withdraw the acceptance of a trade mark application

before its registration, if it is discovered that the acceptance was

made in error. Section 19 shields the proprietors of the mark and

also protects the public against the fraudulent marks as the power

of Registrar to withdraw the acceptance exists to safeguard the

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 10 of 43

public interest and to prevent the grant of statutory right in respect

of marks, which are not registerable under the Act.

20.11. Section 19 of the Act is a special provision, which empowers the

Registrar to revisit the trade mark examination and nullify the

acceptance independent of the opposition stage. The jurisdiction

under Section 19 of the Act can be invoked by the Registrar either

suo moto or at the instance of the third party as there is no

prohibition any third-party representation being made to the

Registrar. A purposive interpretation of broadly worded Section 19

of the Act would prevent the registration of fraudulent marks as

contemplated under the Act. If there is an error apparent in

acceptance of a mark, the Registrar cannot refuse to exercise its

jurisdiction under Section 19 of the Act. If a fact of prima facie

illegal / erroneous acceptance has been brought to the notice of the

Registrar, the Registrar cannot refrain from applying the mind in

terms of Section 19 of the Act.

20.12. The power of the Registrar under Section 19 of the Act is

discretionary to decide the question of whether a trade mark has

been accepted in error or it should not be registered. However, if a

third party makes an application requesting the Registrar to

exercise the power under Section 19 of the Act, it is obligatory on

the Registrar to examine such a request and the examination of the

same cannot be refused on the ground of discretion. The discretion

is limited in the context of withdrawing the acceptance of the mark

and not with respect to considering the application for exercising

the power under Section 19 of the Act. Once an application is

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 11 of 43

made requesting the Registrar to exercise the power under Section

19 of the Act, it is obligatory on part of the Registrar to examine

such a request.

20.13. In a number of cases, the Registrar has entertained the applications

filed by the third parties under Section 19 of the Act. Therefore,

the Registrar is duty bound to maintain parity and act with fairness.

The Registrar has no discretion to entertain a few requests made

under Section 19 of the Act and not consider the other. In Tikkam

Chand & Anr. v. Dy. Registrar of Trade Marks & Anr., 1998 SCC

OnLine Del 478, the Registrar had issued a show cause notice to

the applicant on a Section 19 application filed by third party which

was challenged before this Court. While dismissing the challenge,

it was held that the Registrar should hear both the applicant and the

objector. It shows that the Registrar has been entertaining the

application under Section 19 of the Act filed by third parties and is

estopped from acting contrary to such practice.

20.14. After the mark is accepted under Section 18(4) of the Act, it

automatically proceeds towards advertisement. There is no

intervening step where a review of the accepted mark is conducted

by the Registrar while the mark is being advertised in the Trade

Marks Journal. Therefore, if a third party points out an error in

acceptance of the mark, it is imperative for the Registrar to

exercise the power of withdrawal of acceptance under Section 19

of the Act as otherwise such a power would be rendered

completely nugatory. Once an error in acceptance is discovered by

the Registrar or brought to the notice by a third party, the Registrar

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 12 of 43

is bound to take steps as envisaged under Section 19 of the Act and

Rule 38 of the Rules. The Registrar cannot ignore the error by

citing discretion. If the Registrar fails to consider the application

filed under Section 19 of the Act, once the error is brought to the

notice of the Registrar, the same will amount to an arbitrary

exercise of power. In most cases, the error may not be discoverable

to the Registrar on its own unless the same is brought to the notice

of the Registrar. A restrictive interpretation that prevents third

parties from bringing the error to the Registrar’s knowledge, would

frustrate the very objective of Section 19 of the Act.

20.15. In M/s Kamdhenu Limited v. Union of India & Ors., W.P.(C)-IPD

29-33 of 2025, wherein the challenge was made to the examination

report and acceptance order passed by the Registrar before filing

any opposition proceedings, the applications were remanded for de

novo adjudication in view of an apparent gross abuse of the

jurisdiction by the Registrar.

20.16. The above decision underscores that where an error is brought to

the notice of the Registrar, the corrective steps are bound to be

taken to maintain the purity of the Register. The Act aims to

prevent use of fraudulent marks and Section 19 of the Act is one of

the ways to achieve the said goal.

20.17. The remedies of filing opposition post acceptance and pre-

registration of the mark under Section 21 of the Act or filing

rectification of the mark under Sections 47 and 57 of the Act after

the registration of the mark are stage specific and not alternative

remedies. Merely because the remedies under Sections 21, 47 or

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 13 of 43

57 of the Act are available at a later stage, it does not act as a bar to

invocation of Section 19 of the Act. Section 19 of the Act operates

in its own independent limited scope of error in acceptance. The

existence of the other remedies such as opposition and rectification

cannot negate a remedy available at the preliminary stage. The

remedy under Section 19 of the Act is independent and not an

alternate to Section 21 of the Act. Once the mark is accepted under

Section 18(4) of the Act and advertised under Section 20 of the

Act, the remedy to file an opposition under Section 21 of the Act is

limited to the extent that the Registrar shall decide whether to

grant a registration under Section 23 of the Act or not. The grant of

registration under Section 23 of the Act is made subject to the

provisions of Section 19 of the Act. Therefore, the remedies under

Sections 19 and 21 of the Act are both independent as the powers

conferred upon the Registrar under Section 19 of the Act and under

Section 21 of the Act are entirely different.

20.18. The power under Section 19 of the Act is the only recourse to

challenge the acceptance under Section 18(4) of the Act. Once an

acceptance is granted, the only statutory mechanism for

withdrawing the acceptance is provided under Section 19 of the

Act. Whereas proceedings under Section 21 of the Act are directed

towards opposing the registration of the mark after valid

acceptance and advertisement. Accordingly, proceedings under

Section 21 of the Act do not result in withdrawal of the acceptance

granted under Section 18(4) of the Act.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 14 of 43

20.19. The proceedings under Section 21 of the Act does not affect the

acceptance under Section 18(4) of the Act. Section 19 of the Act

results in withdrawal of the acceptance rendering the acceptance a

nullity. Therefore, the remedies under Section 19 of the Act and

Section 21 of the Act are not interchangeable and operate in

different spheres.

20.20. If the Registrar makes an error while accepting the application for

registration of a mark under Section 18(4) of the Act, such an error

cannot be ignored at the first stage itself merely because there is a

remedy available for filing an opposition under Section 21 of the

Act. The opposition proceedings on an average take around three

to five years and even if successful, it will not withdraw the

acceptance under Section 18(4) of the Act. If an erroneous

acceptance remains on record, the same will be used as a precedent

for obtaining acceptance orders for other Trade Marks. Therefore,

Sections 21, 47 or 57 of the Act are not alternative remedies to

Section 19 of the Act. If remedy available under Section 21 of the

Act is considered to be an alternative to Section 19 of the Act, the

existence of a separate provision of Section 19 of the Act would be

nugatory. Accordingly, the Registrar can decide an application

under Section 19 of the Act despite the remedy of Section 21 of the

Act still being available.

20.21. The provision of Section 19 of the Act can be read to be akin to the

provision of Order VII Rule 11 of the Code of Civil Procedure,

1908, which is to nip the application in the bud if it is found to be

without any valid cause of action or barred by law. Similarly,

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 15 of 43

Section 19 of the Act empowers the Registrar to withdraw the very

acceptance of the mark, independent of opposition proceedings, if

the application is found to be accepted in error.

20.22. If the Registrar fails to perform the duty under Section 19 of the

Act, this Court has power to issue mandamus directing the

Registrar to perform its statutory duty of consideration of Section

19 application. In S.C. Advocates-On-Record Association v.

Union of India, (1993) 4 SCC 441, it is held that a Court can issue

a writ of mandamus directing the public authority to exercise its

discretion within a reasonable time. The ground of practical

difficulty and opening of flood gates if the remedy under Section

19 of the Act is held to be in addition to the remedy under Section

21 of the Act, cannot be the reason for circumventing the statutory

duty under Section 19 of the Act. The practical difficulty cannot

render the statutory provision otiose or in applicable.

20.23. In Jai Bhagwan Gupta v. Registrar of Trade Marks ,

2020:DHC:1532, this Court has held that the Registrar has to apply

mind prior to the mark being advertised. The principles of Jai

Bhagwan (supra) have been reaffirmed in Kaira District

Cooperative Milk Producers Union Ltd. v. Registrar of

Trademarks, WP(C)-IPD 14/2021. Accordingly, the inaction of the

Registrar to effectively its mind under Section 19 of the Act is

amenable to the writ jurisdiction of this Court.

20.24. The Registrar has accepted the Application No. 5628002 stating

that the cited marks are ‘different as a whole’, which is an error

under Section 11 of the Act and clear non-application of mind. It is

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 16 of 43

a settled law that application of mind must be proper, genuine,

reasoned and not mechanical. The Registrar has relied upon the

written submissions dated 16.05.2025 filed by Innocenti to state

that cited marks are different as a whole, however, neither the

Reply to Examination Report nor the Written Submissions filed by

Innocenti make any such argument. The Registrar also failed to

appreciate that Brandconcern’s Rectification Petition against

August Ventures in Trade Mark Application No. 139031 has been

dismissed.

20.25. While accepting Application No. 5628003 filed by Innocenti for

the Mark, ‘LAMBRETTA’ in Class 25 on proposed to be used

basis, the Registrar made an error by bypassing the mandate of

Section 11 of the Act despite the identical mark of August Ventures

having phonetic, visual, conceptual and structural similarity.

20.26. WP 56 challenging the Acceptance Orders is maintainable as the

said issue has been decided by the Division Bench of this Court in

Ashiana Ispat Limited v. Kamdhenu Limited & Ors., LPA

407/2025, which held that the actions of the Registrar of not

having been undertaken in accordance with the Act is

challengeable. Accordingly, the question of maintainability of the

writ petition challenging the Acceptance Orders is no longer res

integra.

20.27. As regards the entertainability of the writ petition challenging the

Acceptance Orders, where the error committed is gross and the

Registrar has failed to effectively perform its duty under Sections

9, 11, 18 and 20 of the Act, this Court ought to intervene and quash

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 17 of 43

the Acceptance Orders and consequent advertisements. The

availability of opposition proceedings being independent and

separate, cannot be used to refuse entertaining the writ petition

challenging and evidently illegal acceptance in gross violation of

Section 11 of the Act. In any event, the opposition under Section

21 of the Act proceeds on the basis of validity of acceptance. WP

56 challenges the very acceptance under Section 18(4) of the Act

by the Registrar, while failing to perform its bounden duty and

completely bypassing Section 11 of the Act.

20.28. Accordingly, the Acceptance Orders passed by the Registrar

ignoring the provisions of Section 11 of the Act are liable to be

quashed. Further, the Registrar is liable to be directed to consider

the application filed by August Ventures under Section 19 of the

Act.

20.29. The Appeal filed by Innocenti against order dated 28.05.2024

refusing the Application No. 5628005 is liable to be dismissed as

the Registrar has rightly rejected the said Application. The scope

of inquiry at the stage of Section 18 of the Act is limited to Section

9 and Section 11 of the Act. At that stage, the Registrar is not

required to venture into extraneous irrelevant issues. On a

comparison of the Mark, ‘ ’ with the

cited Mark, ‘ ’, it is evident that both

the Marks are phonetically, visually, conceptually identical and are

bound to cause confusion and deception.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 18 of 43

20.30. Accordingly, the Registrar has rightly rejected the Application No.

5628005 in view of Section 11 of the Act. Accordingly, the Appeal

deserves to be dismissed.

SUBMISSIONS ON BEHALF OF THE INNOCENTI:

21. The learned Counsel for Innocenti submitted as under:

21.1. The Innocenti was incorporated under the laws of Switzerland and

has attained immense reputation in the international market over

the years and operates in more than sixty countries through

subsidiaries, numerous distributors and direct production facilities

located in Thailand, Vietnam, and China.

21.2. Innocenti is in the business of distributing and selling of goods,

namely, motor vehicles, motor scooters, electrically operated

scooters, automobiles, motorized bicycles etc. Innocenti along with

its affiliates and group company is the registered holder of various

Trade Marks including ‘LAMBRETTA’,

‘ ’, ‘LAMBRO’ and ‘INNOCENTI’ in

various jurisdictions including North and South America, Asia,

Oceania, Europe, Middle East, and Africa.

21.3. The Mark, ‘LAMBRETTA’ was initially used by an Italian

company Innocenti SG based in a town near Milan, Italy for its

range of scooters. The name, ‘LAMBRETTA’ is derived from the

word, ‘Lambrate’, the suburb of Milan named after the river

‘LAMBRO’. ‘LAMBRETTA’ was the name of mythical water-

sprite associated with the river. Innocenti SG sold its models to

India under the Mark, ‘LAMBRETTA’ via API until 1972.

Innocenti SG became defunct in 1972 and sold its two-wheeler

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 19 of 43

division (Plant and Equipment) to the Government of India, who

passed it forward to SIL. SIL used the brands like Ravalli,

Digvijay, Vijai Falcon, Vijai Kesri and Allwyn Pushpak, but did

not use the Mark, ‘LAMBRETTA’ in India.

21.4. Innocenti’s group company, Brandconcern had intent to revive and

adopt the Mark, ‘LAMBRETTA’ for its various products. Since

2007, Innocenti’s group company had secured Trade Mark

registrations globally, whereas a few existing registrations in the

name of SIL were either removed for non-use or expired due to

non-removal. Through its effort, Innocenti has claimed huge

goodwill for the international Mark, ‘LAMBRETTA’.

21.5. Innocenti has already commercially used the Mark,

‘LAMBRETTA’ globally. Innocenti operates international

websites, www.lambretta.com and www.lambrettascooters.com.

Innocenti is also the registered owner of domains,

www.lambretta.in and www.lambretta.co.in.

21.6. The Impugned Order challenged in the Appeal is totally arbitrary,

pedantic, cryptic and has been passed in a sweeping manner

without any application of mind. The Impugned Order simply

states that ‘LAMBRETTA’ is found phonetically and visually

similar to the cited conflicting Mark, ‘LAMBRETTA’ vide

Application No. 350817 for the similar goods. As the Mark,

‘LAMBRETTA’ was applied subsequently on proposed to be used

basis by Innocenti, the Impugned Order states that there is

likelihood of confusion. Further, the Impugned Order held that no

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 20 of 43

explanation is provided by Innocenti for adopting the Mark,

‘LAMBRETTA’, when a similar mark is already on record.

21.7. The Impugned Order does not record the grounds for refusal and

the material used for arriving at the decision by the Registrar. The

Examination Report Application No. 5628005 in Class 12 cited

three Trade Marks. As regards Mark bearing No. 350817,

‘ ’, Innocenti has already filed the

cancellation as early as 28.10.2011. The second Mark belongs to

the sister concern of Innocenti itself and the rectification of the

third Mark bearing No. 2890657 has been filed by Innocenti. The

Impugned Order does not consider these aspects and, accordingly,

the Impugned Order is liable to be set aside.

21.8. Further, the Registrar also failed to consider reply filed by

Innocenti to the Examination Report, wherein it is stated that the

Mark, ‘LAMBRETTA’ is registered in multiple foreign

jurisdictions being Brazil, Cambodia, Switzerland, CTM, Benelux,

Mexico, France, Great Britain, Malaysia, Italy, Spain, WIPO, US

and Canada.

21.9. The reply also mentioned that Innocenti has registration of the

Mark, ‘LAMBRETTA’ in Class 18 under No. 1551216 and for the

Mark, ‘LAMBRO’ in Class 12 under No. 1551219. The Registrar

has also failed to consider the cancellation of SIL Trade Marks in

United States, Great Britain, Europe, Canada filed by the sister

concern of Innocenti. The Registrar has also failed to examine and

written a finding on a rectification / cancellation of two cited

Marks being SIL / August Ventures bearing No. 350817

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 21 of 43

‘ ’ and ‘LAMBRETTA’ bearing No. 2890657,

in which it is clearly stated that the cited Marks have not been used

since 1997. In fact, there is no ‘LAMBRETA’ scooter of SIL /

August Ventures available in India. The Registrar failed to

consider the document filed by Innocenti from the website of the

proprietor cited mark being SIL stating that “Company is under

closure”.

21.10. The Registrar has failed to consider the NOC given by sister

concern of Innocenti, Brandconcern that it has no objection if

Trade Mark No. 5628005 is registered in name of Innocenti.

Therefore, this is the fit case for acceptance and advertisement of

the Mark applied vide Application No. 5628005 in Class 12 so that

August Ventures has a remedy to oppose the same.

21.11. The scheme of the Act and Rules do not provide for any third party

to make an application under Section 19 of the Act. A bare reading

of the Section 19 of the Act and Rule 38 of the Rules make it clear

that the Registrar at pre-advertisement stage only needs to hear the

applicant of the application and cannot hear any third party, like

August Ventures, if the Registrar is of the view that the application

has been accepted in error as it is the only applicant of the

application whose rights are affected if acceptance is withdrawn.

21.12. Therefore, the Registrar has rightly not looked into the application

filed by August Ventures under Section 19 of the Act for

withdrawal of acceptance of Application Nos. 5628002 and

5628003.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 22 of 43

21.13. Rule 38(1) of the Rules make it abundantly clear that at pre-

advertisement stage, the Registrar only communicates with the

applicant. Rules 38(2) and 38(3) of the Rules provide that only an

applicant is afforded an opportunity to amend the application or

right to be heard. Rule 38(4) of the Rules provide that the Registrar

may, after hearing the applicant, on considering the submissions, if

any, pass such orders as he may deem fit. Accordingly, there is no

provision for third parties to file any application or be given the

hearing prior to the advertisement of the trade mark.

21.14. In Rajkumar Sabu v. Sabu Trade Private Ltd and Anr., W.P.

(IPD) No. 34/2025 and W.M.P (IPD) No. 23/2025, the High Court

of Madras has held that it does not follow from Section 19 of the

Act that a person other than the applicant has the right to be heard

in relation to the withdrawal of the acceptance by the Registrar. A

bare reading of Section 18(4) of the Act with Rule 33(2) of the

Rules makes it apparent that if the Registrar is accepting an

application, he communicates his acceptance in writing to the

applicant and does not give grounds to the acceptance.

21.15. Section 18(5) of the Act provides that when the Registrar is

refusing a trade mark or accepting a trade mark with conditions,

the Registrar shall record in writing the grounds for such refusal or

conditional acceptance and the materials used by the Registrar in

arriving at such decision. Hence, there is no infirmity with the

Acceptance Orders.

21.16. Further, Rule 38 of the Rules makes it clear that at the stage of

Section 19 of the Act, there can be only two parties to the

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 23 of 43

proceedings, i.e., the Registrar and the applicant. Rule 38 of the

Rules specifically lays down that only Registrar can have objection

to the acceptance of the application and no third party can raise

such an objection. The only party who can be heard at the stage of

Section 19 of the Act is the applicant and no one else.

21.17. The decision in Jai Bhagwan (supra) is not applicable in the

present case, as none of the applications being Application Nos.

5628002 and 5628003 have been advertised before acceptance.

Rule 41 of the Rules allow any third party to file request in Form

TM-M for particulars of advertisement of a trade mark through the

Registrar, who shall provide the number and date of the journal in

which the advertisement was published. Hence, the only remedy

available with August Ventures is to file opposition under Section

21 of the Act, which allows ‘any person’ to file an opposition.

Section 19 of the Act does not provide or indicate any third party

to circumvent the opposition route and file an application before

the Registrar for invocation of powers under Section 19 of the Act.

Such powers are discretion of the Registrar, and a third party

cannot interfere with the same.

21.18. WP 54 and WP 56 are filed by August Ventures for the same cause

of action as the subject matter of both the Petitions are Application

Nos. 5628002 and 5628003. Hence, two writ petitions for the same

cause of action are not maintainable on the ground of constructive

res judicata and amounts to abuse of the process of this Court.

21.19. In any event, August Ventures has not filed a single document to

show how SIL got the Mark, ‘LAMBRETTA’, especially when

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 24 of 43

August Ventures has never used the Mark, ‘LAMBRETTA’ in

India or anywhere in the world. Therefore, even on merits, August

Ventures will not be able to establish the rights over the Mark,

‘LAMBRETTA’.

21.20. Accordingly, the Appeal be allowed while dismissing WP 54 and

WP 56.

SUBMISSIONS ON BEHALF OF THE REGISTRAR OF TRADE

MARKS:

22. The learned CGSC for the Registrar of Trade Marks submitted as

under:

22.1. August Ventures has incorrectly invoked the extra ordinary writ

jurisdiction of this Court by bypassing the specific and statutory

remedy available under Section 21 of the Act to oppose the Trade

Mark applications filed by Innocenti. Accordingly, August

Ventures has an effective and efficacious, alternative, statutory

remedy available and, therefore, WP 54 seeking directions against

the Registrar to consider the application under Section 19 of the

Act is not maintainable.

22.2. Section 19 of the Act grants the Registrar a suo moto and

discretionary power to withdraw the acceptance of trade mark

application. The wording ‘the Registrar is satisfied’ makes it clear

that the process is triggered by the Registrar’s own judgment and

not by an application from a third party.

22.3. Rule 38 of the Rules explicitly outlines a two party process, i.e.,

involving the Registrar and the applicant. There is no provision for

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 25 of 43

a third party to file an application under Section 19 of the Act or be

heard or participate at the stage of Section 19 of the Act.

22.4. The legislative intent behind creating separate process under

Sections 19 and 21 of the Act is to provide different remedies to

the Registrar and third parties. Section 21 of the Act allows ‘any

person’ to file an opposition, whereas Section 19 of the Act gives

the discretion only to the Registrar. In Rajkumar Sabu (supra) it is

clearly held that Section 19 of the Act does not give a person other

than the applicant the right to be heard.

22.5. The Registrar passed the Acceptance Orders based on a detailed

response to the Examination Report from Innocenti. Based on the

examination of the response, it was prima facie established that the

application could be accepted and advertised based on the global

ownership with registration in over forty countries and the

contention that the owner of the cited Marks had no intention to

use the cited Marks and informing about on-going proceedings to

have those Marks rectified. Further, Innocenti also provided a no-

objection certificate from the associated entity for registration of

the Marks.

22.6. If August Ventures is not satisfied with the Acceptance Orders, it

has a statutory remedy of filing opposition under Section 21 of the

Act. By filing WP 54 and WP 56, August Ventures is attempting to

bypass the required procedure to get invalidation of the

Acceptance Orders. The writ jurisdiction is not meant to be a

shortcut to avoid the statutory remedies in the correct legal forum.

The grievance of August Ventures is not with the lack of the

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 26 of 43

process but with the outcome of the process. The contention of

August Ventures that the opposition proceedings are burdensome is

not tenable as August Ventures has availed the same remedy

against the registration of Mark, ‘LAMBRO’ bearing Application

No. 5639358 in Class 12 filed by Innocenti.

22.7. The opposition proceedings under Section 21 of the Act ensures

due process by allowing both sides to present evidence and

arguments before the Registrar to decide the dispute conclusively.

The contention of August Ventures that the Acceptance Orders are

untenable is the precise issue that can be decided by the Registrar

in the opposition proceedings under Section 21 of the Act and the

same cannot be a justification to bypass the process itself.

22.8. It is settled legal principle that the right holders must be vigilant in

protecting their rights and monitoring the Journal is a standard and

expected aspect of the diligence for every proprietor of Trade

Mark. The Journal serves the critical public notice function,

ensuring transparency and due process. While the Trade Mark

registration confers rights, it does not exempt the owner from the

diligence required to enforce them by actively monitoring the

Journal for exercising the right to oppose.

22.9. The prohibition under Section 11 of the Act applies only to the

final act of registration, but not the preliminary steps like

acceptance and advertisement. By advertising the mark, the

Registrar initiates the process that allows third parties to oppose

and prevent the final registration. August Ventures has incorrectly

filed the Writ Petitions seeking a final decision at the preliminary

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 27 of 43

stage without following the statutory scheme of opposition under

Section 21 of the Act. Allowing the Writ Petitions, setting aside the

Acceptance Orders or directing to exercise powers under Section

19 of the Act will set a wrong precedent, encouraging the third

parties to bypass the statutory process of opposition under Section

21 of the Act. This would open floodgates for similar petitions,

enabling competitors to strategically stall the registration of any

mark. If the challenge to the orders passed under Section 18 of the

Act is allowed by way of a writ petition, it would paralyze the

entire trade mark registration system, undermining the structured,

time bound procedure established by law.

22.10. The successive Writ Petitions filed by August Ventures on the very

same cause of action of acceptance and advertisement of Trade

Mark Application Nos. 5628002 and 5628003 are not

maintainable. August Ventures was fully aware of the Acceptance

Orders when it filed WP 54 as the Acceptance Orders formed the

very basis for filing WP 54. Since the underlying cause is identical,

August Ventures was obligated to include all related claims in WP

54 itself. The relief of quashing the Acceptance Orders sought in

WP 56 was available to August Ventures when it filed WP 54.

However, August Ventures chose only to seek writ of mandamus

against the Registrar and did not seek writ of certiorari to quash

the Acceptance Orders. It is a settled position of law that a party

must bring the entire claim and seek all available remedies related

to a single cause of action in one proceeding. Filing successive

petitions based on the identical cause of action is improper.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 28 of 43

22.11. It is also a settled position of law that a writ of certiorari can be

issued only in cases of grave error of jurisdiction, violation of

principles of natural justice and where the order is vitiated by an

error apparent on the face of the record. In the present case, the

Acceptance Orders are procedural in nature passed in due exercise

of the statutory function under the Act after considering the

Examination Report and the Reply filed by Innocenti before

arriving at a subjective satisfaction to accept the Applications. A

mere disagreement with the conclusion arrived at by the Registrar

under Section 18 of the Act, does not constitute an error apparent

on the face of the record warranting the exercise of writ

jurisdiction by this Court. The correctness of the Acceptance

Orders is a matter of merit to be adjudicated in the opposition

proceedings or in appeal and not by way of a writ petition.

22.12. The allegation that the Acceptance Orders were passed without

application of mind is baseless as the records clearly show that it

was the Registrar, who initially raised objection under Section 11

of the Act citing the earlier Marks in the Examination Reports for

both the Applications. After considering the Reply filed by the

Innocenti to the Examination Reports and other materials place on

record, Acceptance Orders were passed.

22.13. As regards the Appeal filed by Innocenti, the Impugned Order is

well-reasoned and based on a correct appreciation of the facts and

does not suffer from any infirmity that would warrant interference

by this Court. The primary basis for passing the Impugned Order is

the grounds stipulated under Section 11(1) of the Act. The Mark,

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 29 of 43

‘ ’ bears a striking and impermissible

similarity to the cited Mark, ‘ ’, giving rise to

a likelihood of confusion upon the public as there exists a high

degree of phonetic and visual similarity. Further, the goods in

Class 12 are identical / similar to the goods covered by earlier cited

Marks. Both the sets of the goods are targeted at the same

consumer base and are sold through identical trade channels. The

Mark, ‘ ’ is applied on proposed to be used

basis, which shows that Innocenti had no prior use or established

goodwill in India.

22.14. Innocenti has failed to provide any cogent explanation or

justification for the adoption of the Mark, which is so close and

resembles to the ones already in the Register, which suggests a

lack of due diligence and an attempt to trade on the goodwill and

reputation of the earlier cited Marks.

22.15. Accordingly, the objection raised in the Impugned Order is fully

justified and cannot be waived. To uphold the integrity and to

maintain the purity of the Register of the Trade Marks as well as to

protect the interests of the consumer and the rights of the

registered proprietors of the earlier cited Marks the refusal of the

registration in the Impugned Order was justified. Further, the

proprietor of the earlier Marks is contesting the rectification

petitions filed by Innocenti, which are currently pending before the

Trade Marks Registry. Further, Innocenti has not impleaded the

registered proprietor of the earlier Trade Marks in the Appeal.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 30 of 43

22.16. Innocenti has also concealed material documents showing that the

registered proprietor of earlier cited Marks has a tenable claim of

prior use of the Mark, ‘LAMBRETTA’ in India being the

predecessor-in-interest of Innocenti assigned all the rights in Mark,

‘LAMBRETTA’ to the President of India on 16.06.1972, which

were further assigned to SIL vide Assignment Deed dated

26.07.1974. Therefore, the stand of registered proprietor of the

earlier cited Marks cannot be ignored.

22.17. Accordingly, the Appeal as well as WP 54 and WP 56 deserve to

be dismissed.

ANALYSIS AND FINDINGS:

23. The Appeal as well as WP 54 and WP 56 raise important questions of

law regarding the interplay between various Sections of the Act read with

the Rules and exercise of the writ jurisdiction, when the alternative statutory

remedy is available under the Act.

24. At the first hearing of WP 54 on 11.09.2025 seeking writ of

mandamus against the Registrar for exercising the powers under Section 19

of the Act, before issuing the Notice, following Issues were framed for

consideration:

i. Whether the power under Section 19 of the Act, which provides

as under:

“19. Withdrawal of acceptance. — Where, after the

acceptance of an application for registration of a Trade

Mark but before its registration, the Registrar is satisfied—

(a) that the application has been accepted in error; or (b)

that in the circumstances of the case the Trade Mark should

not be registered or should be registered subject to

conditions or limitations or to conditions additional to or

different from the conditions or limitations subject to which

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 31 of 43

the application has been accepted, the Registrar may, after

hearing the applicant if he so desires, withdraw the

acceptance and proceed as if the application had not been

accepted.”

be exercised when the above Section states that the Respondent ‘may’

withdraw the acceptance, especially when there is no provision for

filing the Applications before the Respondent by the Petitioner under

Section 19 of the Act?

ii. Whether the Respondent is obligated to consider and decide the

Applications filed by the Petitioner alleging that the Trade Mark

Applications have been accepted in error?

iii. Whether the Respondent can be directed to consider and decide

the Applications filed by the Petitioner under Section 19 of the Act,

after giving opportunity of hearing to the Petitioner, when the

Petitioner has also an alternative remedy under Section 20 of the Act?

25. Subsequently, August Ventures filed WP 56 seeking quashing and

setting aside of Acceptance Orders passed under Section 18 of the Act,

wherein Innocenti was also joined as Respondent No. 2. Vide order dated

26.09.2025, Notice was issued in WP 56 and both WP 54 and WP 56 were

tagged together since they were in relation to the Acceptance Orders passed

in the Trade Mark Application Nos. 5628002 and 5628003 filed by

Innocenti. As it was pointed out that the Appeal filed by Innocenti was also

pending consideration, the said Appeal was also heard along with WP 54 and

WP 56 with consent of all the Parties.

Scope of Section 19 of the Act

26. As per Section 19 of the Act, the Registrar has the power to withdraw

the acceptance of the application for registration of Trade Mark made under

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 32 of 43

Section 18 of the Act if the Registrar is satisfied that the application was

accepted in error or the Trade Mark applied should not be registered or

should be registered with certain conditions. August Ventures has invoked

Section 19 of the Act calling upon the Registrar to exercise the power under

Section 19 of the Act pursuant to the Acceptance Orders passed by the

Registrar under Section 18 of the Act.

27. Since the Registrar has not acted upon the application filed by August

Ventures under Section 19 of the Act, WP 54 has been filed seeking

direction to the Registrar for exercising the right under Section 19 of the

Act. August Ventures has interpreted Section 19 of the Act to provide

discretionary power to the Registrar, which can be invoked by rightful

owner / proprietor of the earlier Trade Marks, in absence of any prohibition

for the same under Section 19 of the Act.

28. The plain language of Section 19 of the Act indicates that the power

to withdraw the acceptance is based on subjective satisfaction of the

Registrar that the acceptance of the application under Section 18 of the Act

was in error or that circumstances of the case required that the Trade Mark

should not be registered or should be registered subject to conditions or

limitations. The trigger for invoking such power is a satisfaction of the

Registrar about existence of the conditions mentioned in Section 19 of the

Act. Section 19 of the Act is silent with regard to the basis on which the

Registrar can arrive at such satisfaction.

29. August Ventures has sought to contend that the power given to the

Registrar is also coupled with the duty to examine the existence of any of

the conditions specified in Section 19 of the Act, if the same is brought to

the notice of the Registrar by any third party by way of filing an application.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 33 of 43

Section 19 of the Act does not specifically provide for any such application

to be entertained by the Registrar. Rule 38 of the Rules, which deal with the

withdrawal of acceptance by the Registrar under Section 19 of the Act reads

as under:

“Expedited examination, objection to acceptance, hearing.- (1)

After the receipt of the official number of an application under sub-

rule (1) of rule 37, an applicant may request for expedited

examination of an application for registration of a trade mark in

Form TM-63 together with a declaration stating the reason for the

request, on payment of five times the application fee.

(2) If the Registrar is satisfied on the basis of declaration filed under

sub-rule(1) that an expedited examination of the application is

warranted, he shall cause the expedited examination of such

application in the order in which the requests are filed and may

ordinarily issue the examination report within three months of the

date of such request.

(3) Where the Registrar declines the request under sub-rule (1), the

applicant shall be entitled to have the fee refunded: Provided that

before declining any such request, the Registrar shall provide the

applicant an opportunity of being heard.

(4) If on consideration of an application for registration of a trade

mark or on an application for an expedited examination of an

application referred to in sub-rule (1) and any evidence of use or of

distinctiveness or of any other matter which the applicant may or

may be required to furnish, the Registrar has any objection to the

acceptance of the application or proposes to accept it subject to

such conditions, amendments, modifications or limitations as he may

think right to impose under sub-section (4) of section 18, the

Registrar shall communicate such objection or proposal in writing

to the applicant.

(5) If within one month from the date of communication mentioned

in sub-rule (4), the applicant fails to amend his application

according to the proposal or fails to submit his observations to the

Registrar or apply for a hearing or fails to attend the hearing, the

application shall be deemed to have been abandoned.”

30. As per Rule 38 of the Rules, the power to withdraw the acceptance

can be exercised if the Registrar has any objection to the acceptance. In such

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 34 of 43

a case, the Registrar has to communicate such objection in writing to the

applicant. If the applicant does not respond within thirty days of such

communication, the acceptance of the application shall be deemed to be

withdrawn, however, if the applicant requests for a hearing, the Registrar

shall give an opportunity of hearing and pass an order as the Registrar may

deem fit.

31. A conjoint reading of Section 19 of the Act and Rule 38 of the Rules

makes it clear that the powers under Section 19 of the Act can only be

invoked by the Registrar upon arriving at a satisfaction of the existence of

the conditions mentioned in Section 19 of the Act. Therefore, it is not

obligatory upon the Registrar to consider any application by the third party

requesting the Registrar to exercise the power under Section 19 of the Act.

32. At the stage of Section 19 of the Act, there is no provision for a third

party to make an application as there are only two parties contemplated

under Section 19 of the Act and Rule 38 of the Rules, i.e., the Registrar and

the applicant. Therefore, there is no scope for interpretation of Section 19 of

the Act to permit any third party to make an application for invocation of

power under Section 19 of the Act.

33. August Ventures has argued that the Court can issue a writ of

mandamus directing a public authority to exercise its discretion within a

reasonable time. In support, August Ventures has relied upon S.C.

Advocates-on-record Association (supra), which is relied upon in Dr. S

Gurushankar v. Govt. of Tamil Nadu and Ors., 2014 SCC OnLine Mad

9372, wherein it is held that where the public authority is guilty of non-

performance of its public duty and it is shown that it has failed to perform its

constitutional or statutory duty, a writ of mandamus can be issued. However,

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 35 of 43

for a writ of mandamus to compel performance of a duty, it must clearly

appear from the language of the statute that a duty is imposed and the

performance or non-performance of which is not a matter of mere discretion,

but in cases where the duty is discretionary, as distinct from a statutory

obligation, a limited mandamus could be issued directing the public

authority to exercise its discretion within a reasonable time on sound

reasoned principles and not merely on whim.

34. In view of the above, it is clear that for issuing writ of mandamus, the

pre-condition is existence of a statutory duty. However, Section 19 of the

Act does not impose any duty on the Registrar to withdraw the acceptance

and only gives a discretion to exercise the power in appropriate cases.

Therefore, it cannot be said that there was any duty on the Registrar to

examine the conditions under Section 19 of the Act upon an application

being filed by a third party. The power under Section 19 of the Act is purely

discretionary and not coupled with a duty. The underlying rationale behind

giving such a power to the Registrar is to correct any error which has crept

in while accepting the application for registration. However, it does not

impose any duty upon the Registrar to examine the application of any third-

party seeking exercise of such power.

35. If any person is aggrieved by the acceptance of application and

advertisement of the mark pursuant thereto, Section 21 of the Act provides

an adequate remedy. Section 21 of the Act reads as under:

“21. Opposition to registration

(1) Any person may, within four months from the date of the

advertisement or re-advertisement of an application for registration,

give notice in writing in the prescribed manner and on payment of

such fee as may be prescribed, to the Registrar, of opposition to the

registration.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 36 of 43

(2) The Registrar shall serve a copy of the notice on the applicant

for registration and, within two months from the receipt by the

applicant of such copy of the notice of opposition, the applicant

shall send to the Registrar in the prescribed manner a counter-

statement of the grounds on which he relies for his application, and

if he does not do so he shall be deemed to have abandoned his

application.

(3) If the applicant sends such counter-statement, the Registrar shall

serve a copy thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may

rely shall be submitted in the prescribed manner and within the

prescribed time to the Registrar, and the Registrar shall give an

opportunity to them to be heard, if they so desire.

(5) The Registrar shall, after hearing the parties, if so required, and

considering the evidence, decide whether and subject to what

conditions or limitations, if any, the registration is to be permitted,

and may take into account a ground of objection whether relied

upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant

sending a counter-statement after receipt of a copy of such notice

neither resides nor carries on business in India, the Registrar may

require him to give security for the costs of proceedings before him,

and in default of such security being duly given, may treat the

opposition or application, as the case may be, as abandoned.

(7) The Registrar may, on request, permit correction of any error in,

or any amendment of, a notice of opposition or a counter-statement

on such terms as he thinks just.”

36. In view of the efficacious alternative statutory remedy available in

form of Section 21 of the Act, it cannot be said that August Ventures was

remediless against the Acceptance Orders. The argument of August Ventures

that the Acceptance Orders were passed in contradiction to the previous

stand taken by the Registrar and, therefore, there was an error apparent on

the face of the record cannot be a ground to invoke writ jurisdiction of this

Court and bypassing the statutory remedy under Section 21 of the Act.

37. The argument of August Ventures that the Registrar has been

entertaining the applications under Section 19 of the Act previously also

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 37 of 43

cannot entitle August Ventures to seek a writ of mandamus against the

Registrar to consider the Application filed under Section 19 of the Act by

August Ventures. The reliance upon Tikkam Chand (supra) by August

Ventures to argue that a show cause notice was issued under Section 19 of

the Act at the behest of some person is not helpful to interpret Section 19 of

the Act in a manner that would permit an additional avenue to the aggrieved

person to apply under Section 19 of the Act in addition to filing objection

under Section 21 of the Act. The decision in Tikkam Chand (supra) does not

consider the nature of right under Section 19 of the Act and only records the

submission of the petitioner while directing the hearing by the Registrar

under Section 19 of the Act. The said decision is not an authority on the

scope of Section 19 of the Act with regard to the obligation on the Registrar

to consider any application filed by third party for exercising the right under

Section 19 of the Act.

38. In Rajkumar Sabu (supra), it is correctly held that Section 19 of the

Act does not give a person other than the applicant the right to be heard.

39. The argument of August Ventures is that the remedies under Section

19 of the Act of withdrawal of the acceptance and under Section 21 of the

Act for opposing to the registration are entirely distinct and separate from

each other. Such averment cannot be accepted, as Section 19 of the Act does

not permit any third party to make an application before the Registrar. The

only option available to any person, who wishes to challenge the acceptance

of the application, is to file an opposition under Section 21 of the Act.

Therefore, there cannot be any comparison between the remedies under

Sections 19 and 21 of the Act.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 38 of 43

40. Section 21 of the Act provides an adequate process for any person to

oppose the registration of the Mark even though the same is accepted under

Section 18 of the Act in error or the Mark is not capable of registration under

Sections 9 and 11 of the Act. The power under Section 19 of the Act is

exclusively available to the Registrar independent of the power to determine

the opposition under Section 21 of the Act. If the opponent to the application

is given additional right to file an application under Section 19 of the Act in

addition to the opposition under Section 21 of the Act, the statutory scheme

of the Act will be unworkable. There are strict timelines provided under

Section 21 of the Act, whereas there are no timelines under Section 19 of the

Act and the power under Section 19 of the Act can be exercised by the

Registrar at any stage from the date of acceptance till the mark is registered

irrespective of any opposition under Section 21 of the Act. The opposition

under Section 21 of the Act serves the same purpose of non-registration of

the mark, if the objections are accepted by the Registrar. In case an

application is allowed to be filed for withdrawal of the acceptance under

Section 19 of the Act, Section 21 of the Act would be rendered redundant.

The artificial distinction between ‘acceptance’ and ‘registration’ of the mark

as sought to be created by August Ventures is misconceived as acceptance is

only a step in the entire process of registration and does not confer any right

on the applicant unless the mark is eventually accepted for registration after

the completion of stage of Section 21 of the Act.

41. In any case, Rule 38 of the Rules do not contemplate any hearing to

be given to third party at the time of considering the objection raised by the

Registrar under Section 19 of the Act.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 39 of 43

42. In view of the above, no relief can be granted in WP 54 for directing

the Registrar to consider the Application filed by August Ventures under

Section 19 of the Act.

Maintainability of WP 56

43. August Ventures has challenged the Acceptance Orders on the ground

that the Registrar has committed error in accepting the Application Nos.

5628002 and 5628003, therefore, August Ventures has sought quashing and

setting aside of the Acceptance Orders.

44. August Ventures has relied upon Jai Bhagwan (supra) and Kaira

District (supra) to argue that the Registrar has to apply mind prior to the

Mark being advertised. Accordingly, the inaction of the Registrar to

effectively apply its mind would entitle August Ventures to file the Writ

Petition seeking setting aside of the Acceptance Orders.

45. August Ventures has filed successive Petitions on the same cause of

action that arises from the passing of the Acceptance Orders. In WP 54,

August Ventures has sought writ of mandamus against the Registrar for

seeking direction against the Registrar for exercising the jurisdiction under

Section 19 of the Act pursuant to the Acceptance Orders and in WP 56,

August Ventures has sought writ of certiorari for setting aside the

Acceptance Orders. Although the reliefs sough in both these Petitions are

worded differently, it aims to achieve the same purpose of seeking

withdrawal of the acceptance by the Registry.

46. The attempt of August Ventures to invoke the writ jurisdiction of this

Court by filing two separate Petitions on the same issue amounts to forum

shopping, especially when August Ventures has efficacious alternative

remedy in form of filing objection under Section 21 of the Act. The

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 40 of 43

decisions in Jai Bhagwan (supra) and Kaira District (supra) are not

applicable to the facts of the present case. In Jai Bhagwan (supra), the issue

pertained to automatic advertisement of the application prior to acceptance

under Section 18 of the Act. Whereas in the present case, the Applications of

Innocenti have been accepted by following the process under Section 18 of

the Act. In fact, in Kaira District (supra), this Court refused to exercise the

extra ordinary jurisdiction vested by Article 226 of the Constitution of India,

1950 in face of efficacious alternative avenues available in the Act and

directed to exhaust the remedy under Section 21 of the Act.

47. It is trite law that writ of certiorari can only be issued in case of grave

jurisdictional errors, violations of natural justice or obvious mistakes

apparent on the face of the record. In the facts of the present case, the

Acceptance Orders cannot be termed as grave jurisdictional error as the

Registrar has passed the Acceptance Orders as per the power conferred

under Section 18 of the Act. Every wrong decision while exercising the of

power under Section 18 of the Act cannot entitle invocation of writ

jurisdiction, when there is a statutory remedy available to file an opposition

under Section 21 of the Act for the very same purpose of opposing the

registration if the acceptance is found to be wrong by the Registrar.

48. The contention of August Ventures that in cases where the Registry

has committed gross abuse of the jurisdiction, the writ jurisdiction ought to

be exercised as in case of Kamdhenu Limited (supra), cannot be accepted as

this is not such a case where the Registrar can be said to have committed

gross abuse of jurisdiction. From the facts of the present case, it is apparent

that all the objections that are taken by August Ventures in WP 56 can be

taken at the time of filing the objections under Section 21 of the Act and the

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 41 of 43

Registrar will be empowered to consider and decide the same after giving

opportunity to August Ventures and Innocenti.

49. August Ventures’ argument that filing opposition under Section 21 is

burdensome when the Acceptance Orders are ex facie illegal and

contradictory to the previous stand taken by the Registrar, is not sufficient to

exercise the writ jurisdiction to set aside the Acceptance Orders as the very

same grounds can be taken by August Ventures in opposition under Section

21 of the Act.

50. During the course of the hearing, it was revealed that August Ventures

has already availed the remedy under Section 21 of the Act, without

prejudice to the pendency of WP 54 and WP 56, in order to save limitation

under Section 21 of the Act. This clearly shows that August Ventures has

sought the same remedy under Section 21 of the Act, albeit without

prejudice to the reliefs sought in WP 54 and WP 56.

51. Accordingly, WP 56 is not maintainable, and no relief can be granted

as sought therein.

Appeal filed by Innocenti

52. Innocenti has challenged the Impugned Order rejecting the

registration of the Mark, ‘ ’ under Application No.

5628005 in Class 12.

53. Interestingly, the Registrar has taken completely contradictory stands

in Acceptance Orders and the Impugned Order for the same Marks and

between the same Parties. The submissions made on behalf of the Registrar

opposing WP 54 and WP 56 as well as the Appeal are self-contradictory and

mutually destructive.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 42 of 43

54. This clearly shows that the Registrar has taken inconsistent stands in

relation to the same Marks in the different Applications filed by Innocenti.

In Acceptance Orders, the Registrar has accepted the justification given by

Innocenti for accepting the Marks for advertisement, whereas the Registrar

has rejected the acceptance of the same Marks in the Impugned Order.

55. The Impugned Order and the Acceptance Orders both cannot coexist.

Accordingly, the Impugned Order is set aside on this ground alone as the

reasoning given in the Acceptance Orders is completely opposite to the

Impugned Order.

CONCLUSION:

56. In view of the above analysis, W.P.(C)-IPD 54/2025 and W.P.(C)-IPD

56/2025 are dismissed and the Appeal being C.A.(COMM.IPD-TM)

76/2024 is hereby allowed with direction to the Registrar of Trade Marks

decide and pass a consolidated order after giving opportunity of hearing to

both August Ventures Private Limited and Innocenti SA and after considering

all the material and documents placed on record in accordance with the

provisions of Sections 18, 21, 47 and 57 of the Act, as may be applicable, in

the following pending Applications and Rectification Petitions:

i. Application No. 5628005 filed by Innocenti SA for the

registration of Mark, ‘ ’ in Class 12.

ii. Opposition by August Ventures Private Limited to Application

No. 5628002 filed by Innocenti SA for the registration of Mark,

‘LAMBRETTA’ in Class 12.

iii. Opposition by August Ventures Private Limited to Application

No. 5628003 filed by Innocenti SA for the registration of Mark,

‘LAMBRETTA’ in Class 25.

C.A.(COMM.IPD-TM) 76/2024 & Connected Matters Page 43 of 43

iv. Rectification Petition filed by Innocenti SA for rectification of

the Mark ‘ ’(Device) bearing Application

No. 350817.

v. Rectification Petition filed by Innocenti SA for rectification of

the Mark, ‘LAMBRETTA’ (Word) bearing Application No.

2890657.

57. It is clarified that this Court has not expressed any opinion on the

merits and the Registrar of Trade Marks shall decide all the above

proceedings on their own merits without being influenced by any

observations made in this Judgment. All the rights and contentions of the

Parties on merits are kept open, and all the objections shall be considered by

the Registrar of Trade Marks, while passing a consolidated reasoned order in

the above proceedings as expeditiously as possible, and in any event within

a period of three months from the receipt of the copy of this Judgment.

58. A copy of this Judgment shall be sent to the Registrar of Trade Marks

at e-mail address: llc-ipo@gov.in, for necessary compliance.

TEJAS KARIA, J

JANAURY 31, 2026

‘A’/ ‘ap’