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In the High Court of Judicature at Madras

Reserved on

02.01.2026

Delivered on:

06.01.2026

Coram :

The Honourable Mr.Justice N.ANAND VENKATESH

(T) OP (TM) 257 of 2023

Mr.Ranjitkumar Saklchand Jain

Prop. JR Trading

Master Mishra Estate

Hariyali Villate, Vikhroli (E)

Mumbai 400 083. ...Petitioner

.Vs.

Mr.Pratapchand (Deceased)

Hanzarimal No.165

Govindappa Naicken Street

Chennai-600 001.

1.M/s.Sanghvi Metal Corporation

Represented by its Partners

Having address at No.39 Kalathiappan Street

Choola, Chennai 600112.

2. Gunvant K Sanghvi Partner

M/s. Sanghvi Metal Corporation

Having address at No.39 Kalathiappan Street

Choolai Chennai 600112. https://www.mhc.tn.gov.in/judis

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3. Sanjay Kumar Partner

M/s. Sanghvi Metal Corporation

Having address at No.39 Kalathiappan Street

Choolai Chennai 600112.

4 Shailesh Kumar Partner

M/s. Sanghvi Metal Corporation

Having address at No.39 Kalathiappan Street

Choolai Chennai 600112.

5. The Registrar of Trade Marks

Chennai. ...Respondents

PETITION filed in Class 11 under the Provisions of Section 47, 57

and 125 of the Trade Marks Act, 1999, the registered trademark

No.1077827 in Class 11 be expunged/removed from the register.

For Petitioner: Mr.S.P.Chockalingam

For Respondents: Mr.N.Surya Senthil

Mr.Shubham M.George

for M/s.Surana & Surana

for R1 to R4

Mr.M.Karthikeyan

Special Panel Counsel for R5

ORDER

This petition has been filed seeking rectification for removal

of the registered Trademark No.1077827 for the Trademark

“SANGHVI” issued in the name of Pratapchand Hanzarimal in https://www.mhc.tn.gov.in/judis

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Class 11, under the provisions of Section 47, 57 and 125 of the

Trademarks Act, 1999 [hereinafter referred to as 'the Act'].

2.The case of the petitioner is that on 28.11.1996 the

petitioner registered his commercial establishment to manufacture

and trade various goods, which among other things included Roti

Maker. It was sold under the brand name SANGHVI. The

petitioner submitted an application for registration of the

Trademark SANGHVI on 16.03.2001. The petitioner was issued

with the Trademark Registration Certificate on 21.06.2005 with the

word mark SANGHVI under Class 11, which also included Roti

Maker. Even prior to that from the year 1996 onwards, the

petitioner was selling the Roti Maker with the Trademark

SANGHVI for more than 8 years. Thus, the petitioner enjoyed

reputation and goodwill in the market. According to the petitioner,

the respondents applied for the registration of the same Trademark https://www.mhc.tn.gov.in/judis

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SANGHVI in Class 11 on 04.02.2002 on the ground that they had

been using the mark since 01.04.1967 and among other goods, Roti

Maker was also included in the application. The respondents

managed to obtain a Certificate of Registration of Trademark for

the said Roti Maker with the same Trademark SANGHVI. The

petitioner on coming to know of the same in the year 2017,

submitted an application before the Intellectual Property Board

seeking for rectification and removal of the Trademark SANGHVI

insofar as the Roti Maker is concerned. The petition was

transferred to this Court and it was renumbered as (T)OP(TM)

No.257 of 2023.

3.The respondents have filed a counter affidavit. They have

denied that the petitioner is a prior user of the Trademark

SANGHVI. According to the respondents, the petitioner has not

conducted any business whatsoever prior to 2002 and there are https://www.mhc.tn.gov.in/judis

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absolutely no documents to establish that he is a prior user. In

view of the same, the respondents have sought for the dismissal of

this petition.

4.On considering the pleadings, this Court by an order dated

05.12.2024, drafted the following issues:

(a) Whether the respondents are prior in use of the trademark

“SANGHVI” ?

(b) Whether the registration of the trademark “SANGHVI” is

valid in law?

(c) Whether the Plaintiff is entitled for the relief sought for

by him in the rectification application ?

(d) Whether the respondents are entitled to seek protection

under Section 34 of the Trade Marks Act, 1999?

(e) To what other reliefs? https://www.mhc.tn.gov.in/judis

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5.The petitioner examined PW-1 and marked Exs.P.1 to P.12.

The respondents examined RW.1 and marked Exs.R.1 to R.10.

6.Heard both.

7.This Court has carefully considered the submissions made

on either side and the evidence let in by both sides.

8.This Court will first deal with issues (a) and (b).

9.The specific case of the petitioner is that he was using the

brand name SANGHVI for various products which includes Roti

Maker since the year 1996. Incidentally, the word SANGHVI

denotes a title that is conferred on a Jain monk, who takes Jain

people on a pilgrimage to Palitana in Gujarat. In order to establish

that the petitioner was a prior user, what has been relied upon are https://www.mhc.tn.gov.in/judis

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the invoice series marked as Ex.P.6 series from the year 2005

onwards. According to the petitioner, all the invoices prior to the

year 2005 were lost during the floods in Mumbai on 26.07.2005.

Thus, there is no document available in terms of invoices from the

year 1996 to 2004. In order to make up for the non-availability of

the invoices, the petitioner is relying upon the Quality Control

Certificate which was marked as Ex.P.3, issued for the period

between 26.12.1999 and 26.12.2002 which refers to the

petitioner’s Trademark SANGHVI. The petitioner is also relying

upon the certificate issued by the Industries, Energy and Labour

Department for the period from 2010 to 2013 marked as Ex.P.4,

which contains the mark SANGHVI. Ex.P.5 is also a Quality

Control Certificate for the period 27.10.2013 to 26.07.2016, which

also contains the mark SANGHVI. https://www.mhc.tn.gov.in/judis

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10.Even though the petitioner attempts to project that Roti

Maker, Khakhra Maker and Roti Roaster are different products,

even from the Quality Control Certificate, it is seen that these

terms have been used loosely. In one of the certificates, an Electric

Toaster has been described as a Roti Maker and in another

certificate, Electric Toaster has been shown as a Roti Maker and

Khakhra Maker. Even in the invoices that are available, only from

the year 2005, all these three terms have been used.

11.The petitioner in order to substantiate that the invoices

prior to the year 2005 were lost, relies upon an FIR that was

registered and which was marked as Ex.P.7.

12.The petitioner has also relied upon the affidavit of one

Mr.Sohanraj, which was marked as Ex.P-9 to establish that he was

purchasing goods from the petitioner since 1996 and that the https://www.mhc.tn.gov.in/judis

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invoices for the purchases were lost during the flood in Mumbai on

26.07.2005. The affidavit by itself cannot be read as an evidence

since the deponent of this affidavit did not stand the test of cross

examination. Therefore, it cannot be construed as an evidence

within the meaning of Section 3 of the Indian Evidence Act, 1872.

13.It is also relevant to take note of the fact that even in the

Trademark application, the petitioner has mentioned it as

“proposed to be used basis”. Even though the petitioner claims

that it was a mistake, the fact remains that the registration

certificate relied upon by the petitioner specifically states that it is

proposed to be used and this Registration Certificate is dated

21.06.2005.

14.On a careful analysis of the evidence available on record,

the petitioner has not established that he is a prior user of the https://www.mhc.tn.gov.in/judis

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registered Trademark SANGHVI for the Roti Maker, prior to the

year 2005.

15.Insofar as the respondents are concerned, they have filed

the application for the registration of the mark SANGHVI in the

year 2002 and obtained the Registration Certificate in the year

2006. The specific case of the respondents is that they have been

using the Trademark SANGHVI insofar as Roti Maker is

concerned from the year 2000 onwards. To substantiate the same,

the respondents have relied upon certain newspaper advertisements

marked as Ex.R.4.

16.After the application was filed by the respondents, a

search report was prepared and an examination report was issued,

wherein the mark SANGHVI registered as No.997076 was also

mentioned [Ex.P-12]. https://www.mhc.tn.gov.in/judis

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17.On a careful appreciation of evidence tendered by both

sides, it is seen that the respondents have clearly established that

they are the prior user of the mark SANGHVI for Roti Maker

atleast from the year 2000 onwards. Whereas the petitioner was

not able to establish by means of any evidence that they have used

this mark for Roti Maker before the year 2005. The non-

availability of any documents prior to the year 2005 on the ground

that they were all lost due to floods, is not convincing and the

petitioner could have easily obtained the relevant documents from

persons to whom the products were distributed from the year 1996

onwards. In view of the same, this Court holds that the

respondents are the prior users of the Trademark SANGHVI for

the product Roti Maker and hence the registration of the

Trademark SANGHVI in favour of the respondents is valid in law.

The issues (a) and (b) are answered accordingly. https://www.mhc.tn.gov.in/judis

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18.Issue (d) is taken up for consideration.

19.Two main legal grounds raised on the side of the

respondents are that there was acquiescence on the part of the

petitioner in view of their inaction for almost 12 years and that

they are the prior user of the Trademark for whom protection has

been given under Section 34 of the Act.

20.The learned counsel for the petitioner by relying upon the

judgment of the Delhi High Court in Make My Trip (India)

Private Limited .Vs. Make My Travel (India) Private Limited

reported in MANU/DE/3392/2019, submitted that mere delay in

bringing an action is insufficient to defeat the relief of rectification

sought for by the petitioner. https://www.mhc.tn.gov.in/judis

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21.The respondents had obtained the Trademark registration

in the year 2006 and was able to substantiate that they were using

the Trademark SANGHVI for Roti Maker atleast from the year

2000 onwards. Before the Registration Certificate was issued in

favour of the respondents, it was published/advertised in the

journal and the petitioner did not object to the application or

oppose the registration under Section 21 of the Act. The

rectification application has been submitted after almost 12 years

post the publication of the respondent’s mark, in the year 2017.

Thus, for the period from 2006 to 2017, the petitioner has not made

any attempt to question the usage of the Trademark by the

respondents.

22.Insofar as the ground of acquiescence which is dealt with

under Section 33 of the Act, the Court must be satisfied that there

was a long usage of the Trademark and that such Trademark was https://www.mhc.tn.gov.in/judis

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granted in favour of the respondents after publishing/advertising in

the same journal and even thereafter the respondents were using

the Trademark, which was not questioned till the year 2017. This

is more so in a scenario where both the petitioner and the

respondents are selling their product with the same Trademark at

Mumbai. There is substantial delay and laches on the part of the

petitioner. Therefore, this Court has to necessarily hold that the

rectification petition filed by the petitioner does not deserve merit

on the ground of acquiescence, delay and laches.

23.Insofar as Section 34 of the Act is concerned, it was

contended on the side of the petitioner that it will apply only in the

case of an infringement and not in the case of rectification.

24.This Court has already held while deciding issues (a) and

(b) that the petitioner did not establish that he is a prior user. Apart https://www.mhc.tn.gov.in/judis

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from that, there are lots of glaring contradictions and

inconsistencies in the evidence of PW-1. It is also seen from

Ex.P-3 that there is a mention about three independent brands

which included SANGHVI. It has also been established in the

cross examination that the petitioner is a mere trader and not a

manufacturer. That apart even as per the Registration Certificate

that was issued in favour of the petitioner, it is only stated that the

petitioner is proposing to use the Trademark SANGHVI. The

petitioner was also not able to provide any invoices atleast for the

years 2002 to 2005 and the explanation given by the petitioner was

also not found satisfactory. The petitioner did not even produce

any sales turnover to substantiate his claim. The petitioner had also

applied for registration in other popular brands like Crown and

Nova. It is therefore evident that the petitioner was not able to

establish that he is a prior user and whereas the respondents have

established clear and continuous prior user of the Trademark https://www.mhc.tn.gov.in/judis

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SANGHVI. In fact the respondents have not even sought for any

rectification of the Trademark given in favour of the petitioner and

both the petitioner and the respondents seem to be using the

Trademark SANGHVI for Roti Maker in Mumbai for a

long-time.

25.In the light of the above discussion, this Court finds that

the respondents are entitled to seek protection both under Section

33 and 34 of the Act. The issue (d) is answered accordingly.

26.Insofar as issues (c) and (e) are concerned, the answers

to those issues will depend upon the answers that were given to

issues (a), (b) and (d). Those issues have already been held against

the petitioner. Therefore, the petitioner is not entitled for the

reliefs sought for in this petition. https://www.mhc.tn.gov.in/judis

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27.In the result, this rectification petition stands dismissed.

Considering the facts and circumstances of the case, there shall be

no order as to costs.

06.01.2026

Index : Yes (or) No

Neutral Citation : Yes (or) No

kp

To

The Registrar of Trade Marks

Chennai. https://www.mhc.tn.gov.in/judis

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N.ANAND VENKATESH,J

kp

P.D.ORDER in

(T) OP (TM) 257 of 2023

06.01.2026 https://www.mhc.tn.gov.in/judis