RPG Enterprises Limited v. The Registrar of Trademarks and Ors.

High Court of Judicature at Madras, Single Judge | Date of Decision: 28.09.2026 (Reserved on: 02.06.2026) Case Number: (T)OP(TM) No. 482 of 2023 Bench: Hon’ble Mr. Justice K. Kumaresh Babu

BACKGROUND

The Petitioner, RPG Enterprises Limited, filed the present petition under Section 57 of the Trade Marks Act, 1999 seeking rectification of Trade Mark Registration No. 1474334 for the mark “RPG MARBLE PVT. LTD.” (device), registered in Class 42 on 28.07.2006 in the name of Respondent No. 2 (RPG Marble Pvt. Ltd.), with Respondents 3 to 6 being directors of Respondent No. 2. The Petitioner claimed to be the proprietor and registered owner of the trademark “RPG,” continuously, extensively and uninterruptedly used since 1979 across a wide range of goods and services, asserting that the mark had acquired immense goodwill, reputation and exclusive association with the Petitioner and its group companies and had attained the status of a well-known trademark, including recognition and reputation both in India and abroad. The Petitioner also claimed registered ownership of several “RPG”-containing trademarks, copyright in the RPG Enterprises Logo and domain names incorporating “RPG.” During the pendency of the present proceedings, by notification published in Trade Marks Journal No. 2106 dated 29.05.2023, the Trade Marks Registry declared the Petitioner’s mark “RPG” a well-known trademark, including it in the Registrar’s list of well-known marks.

The Petitioner’s case was that the impugned mark wholly incorporated and reproduced “RPG” as its most dominant, essential and distinctive feature, rendering it visually and phonetically identical and deceptively similar, likely to cause confusion and deception, dilute the distinctive character of the Petitioner’s mark and allow Respondent No. 2 to take unfair advantage of the Petitioner’s goodwill. The Petitioner further contended that the impugned registration suffered from a classification defect the Respondents’ business (manufacture and sale of marbles, granites and allied products) properly fell under Class 19 of the NICE Classification rather than Class 42, an objection the Petitioner said had in fact been raised by the Examiner of Trade Marks but left uncorrected, constituting an erroneous entry on the Register liable to removal under Section 57(2).

Respondent No. 2 (through Respondents 2 to 5) resisted the petition, contending that “RPG Marble Pvt. Ltd.” had been its corporate name and trading style since the year 2000, with “RPG” honestly and independently coined from the initials of its directors Rajkumar Ladha (Laddha), Pawan Kumar Gupta and Giriraj Ladha without reference to the Petitioner’s business; that use of the impugned mark commenced from 07.04.2000, predating the registration application (28.07.2006); that the Respondents’ registration (Class 42) and the Petitioner’s registrations (Classes 5, 9, 12, 16 and 30) covered entirely distinct and unrelated goods/services; and, significantly, that the Petitioner had been aware of the Respondents’ adoption and use of the impugned mark as early as 2002 evidenced by a legal notice dated 13.02.2002 sent by the Petitioner through the law firm M/s. Mulla & Mulla and Craige, Blunt & Caroe yet remained inactive for nearly fifteen years before instituting the present rectification petition only in 2017, such that the petition was barred by waiver, delay, laches and acquiescence under Section 33 of the Trade Marks Act, 1999. The Respondents also pointed to a separate suit, O.S. No. 805 of 2018, filed by the Petitioner before the Civil Court at Bengaluru seeking permanent injunction in respect of the “RPG” mark, which had been dismissed for non-prosecution, with a restoration petition pending.

By order dated 26.04.2024, the Court framed eight issues for determination, including whether the impugned registration was liable to be rectified under Section 57, whether the adoption was fraudulent/dishonest, whether the Petitioner’s mark was known and prevalent at the time of the Respondents’ adoption, whether the Petitioner was a “person aggrieved” under Section 57, whether the petition was barred by waiver, delay, laches and acquiescence under Section 33, whether the well-known status declaration had retrospective effect and the entitlement to relief. Oral evidence was led, with the Petitioner’s authorised signatory examined as PW1 and documents Ex. P1 to Ex. P18 marked on the Petitioner’s side and Ex. R1 to Ex. R3 marked through cross-examination of PW1 on the Respondents’ side.

ISSUES FOR DETERMINATION

Whether Respondent No. 2’s trademark registration bearing No. 1474334 under Class 42 is liable to be rectified/cancelled and removed from the Trade Marks Register under Section 57 of the Trade Marks Act, 1999, for being wrongly remaining on the Register.
Whether Respondent No. 2 had fraudulently and dishonestly adopted the impugned trademark, which is similar/identical to the Petitioner’s prior-used trademarks, including “RPG.”
Whether the Petitioner’s trademarks, including “RPG,” were known to the public and prevalent at the time of Respondent No. 2’s subsequent adoption of the impugned mark and whether Respondent No. 2 was justified in adopting an identical/similar trademark.
Whether the Petitioner is a “person aggrieved” within the meaning of Section 57 of the Trade Marks Act, 1999.
Whether the present petition is barred by the doctrine of waiver, delay, laches and acquiescence (Section 33 of the Act).
Whether the well-known status of the Petitioner’s trademark has retrospective effect on Respondent No. 2’s trademark.
Whether the Petitioner is entitled to the relief sought in the petition.
Whether the Petitioner is entitled to any other relief.

KEY HOLDINGS OF THE COURT

The Court first addressed Issue (v) whether the petition was barred by waiver, delay, laches and acquiescence as a threshold matter, before considering the remaining issues, on the view that its resolution would determine whether the other issues required detailed deliberation.
On the evidence relevant to this issue, the Court found that although PW1 (the Petitioner’s authorised signatory), during cross-examination, initially feigned ignorance of the legal notice allegedly sent in 2002 and of the law firm (M/s. Mulla & Mulla and Craige, Blunt & Caroe) said to have issued it, PW1 admitted that Ex. R2 the Annual Report of the Petitioner’s subsidiary company for 2016–2017 listed the same law firm as the Petitioner’s legal advisor. When confronted with this document, PW1 did not categorically deny the law firm’s name but responded only that it “might be right,” which the Court held was inconsistent with his earlier testimony feigning ignorance. The Court held that this evasive response, read together with Ex. R2 and the contradiction in cross-examination, supported the Respondents’ contention that the Petitioner had prior knowledge of Respondent No. 2’s adoption of the impugned trademark as early as 2002.
The Court applied the distinction between acquiescence, delay and laches articulated by the Supreme Court in Union of India and Others v. N. Murugesan and others, (2022) 2 SCC 25, which the Court quoted at length holding that acquiescence denotes tacit or passive acceptance or implied/reluctant consent, inferable from a party’s knowledge of relevant circumstances combined with its conduct or failure to object within a reasonable period and that acquiescence followed by delay may constitute laches.
Applying this framework, the Court held that the Petitioner had prior knowledge of the adoption and use of the impugned trademark by Respondent No. 2 as early as 2002, but instituted the present rectification petition only in 2017 nearly fifteen years later. The Court held that such prolonged inaction despite knowledge constituted acquiescence on the Petitioner’s part, bringing the petition squarely within the ambit of Section 33 of the Trade Marks Act, 1999.
Issue (v) was accordingly answered against the Petitioner.
Having so found, the Court held that the remaining issues did not require detailed deliberation and the petition was dismissed on this ground.
Final operative order: The Transfer Original Petition was dismissed; the connected Miscellaneous Application was consequently closed; no order as to costs.

STATUTORY PROVISIONS INVOLVED

Section 57 of the Trade Marks Act, 1999, empowering the Appellate Board (or High Court, in the exercise of such jurisdiction) to cancel or vary registration of a trademark on the ground, inter alia, of its wrongly remaining on the Register, was the provision under which the rectification petition was filed; the Court did not reach a final determination on the substantive merits of this ground (Issue (i)), the petition being dismissed instead on the threshold finding under Issue (v).

Section 33 of the Trade Marks Act, 1999, embodying the principles of waiver, delay, laches and acquiescence as a bar to relief, was the dispositive provision applied by the Court: having found that the Petitioner had knowledge of the Respondents’ adoption and use of the impugned mark from 2002 but delayed instituting proceedings until 2017, the Court held the petition barred under this provision and this finding alone was treated as sufficient to dispose of the petition without further examination of the remaining framed issues.

Section 11(10) of the Trade Marks Act, 1999, concerning relative grounds for refusal where a mark is adopted with dishonest intent and Sections 11(1) and 11(2) of the Act, concerning refusal on grounds of similarity to an earlier (including well-known) mark, were invoked by the Petitioner’s counsel in support of the substantive case for cancellation, but were not the subject of a final ruling by the Court given its disposition on the Section 33 point.

Section 57(2) of the Trade Marks Act, 1999, concerning rectification for errors or defects in an entry on the Register (invoked in relation to the alleged incorrect classification of the Respondents’ goods/services under Class 42 rather than Class 19), was similarly argued by the Petitioner but not the subject of a final determination.

Section 35 of the Trade Marks Act, 1999 (the “own name” defence to infringement), was argued by the Petitioner’s counsel to be inapplicable to Respondent No. 2’s adoption of the mark (being neither a natural person’s full name nor a bona fide use), but this issue too was not finally resolved given the Court’s disposition on the threshold acquiescence point.

REASONING OF THE COURT

The Court’s reasoning was structured around a deliberate prioritization of the acquiescence/delay issue (Issue (v)) ahead of the merits-based issues, on the basis that a finding adverse to the Petitioner on this threshold question would dispose of the petition without need for further analysis a reasoning approach the Court made explicit at paragraph 32, where it stated that it would be “apropos to deal with the said issue before taking up the other issues.”

On the factual question of the Petitioner’s knowledge, the Court’s reasoning relied heavily on the evidentiary value of PW1’s inconsistent testimony under cross-examination: having initially denied any knowledge of the 2002 legal notice or the issuing law firm, PW1’s subsequent equivocal response (“might be right”) upon being shown the Petitioner’s own 2016-2017 Annual Report which named the same law firm as legal advisor was treated by the Court as undermining the credibility of the initial denial and as corroborating the Respondents’ version of events. The Court’s approach here reflects a standard evidentiary technique of drawing an adverse inference from a witness’s shift from categorical denial to equivocation when confronted with documentary evidence inconsistent with that denial.

Having resolved the factual predicate (prior knowledge from 2002) in the Respondents’ favour, the Court turned to the legal framework for acquiescence, relying on the Supreme Court’s articulation in N. Murugesan of acquiescence as tacit or passive acceptance inferable from knowledge combined with a failure to object within a reasonable time and the further principle that sustained acquiescence followed by delay may ripen into laches. The Court’s application of this framework to the facts was relatively direct: given a gap of approximately fifteen years between the Petitioner’s established 2002 knowledge and the 2017 institution of proceedings, the Court held this delay, combined with the established knowledge, satisfied the acquiescence standard, without engaging in extended balancing of competing considerations (such as the Petitioner’s countervailing argument that dishonest adoption ordinarily negates the defence of delay or that no limitation period applies to rectification proceedings) these countervailing arguments, though recorded in the submissions, do not appear to have been separately addressed or distinguished in the Court’s operative reasoning on Issue (v), the Court’s analysis proceeding directly from the finding of prior knowledge to the conclusion of acquiescence under Section 33.

Having found the threshold bar established, the Court exercised judicial economy by declining to examine the remaining seven issues framed at the commencement of trial (including the substantive deceptive-similarity analysis, the “person aggrieved” question, the well-known-mark retrospectivity question and the classification-error argument), reasoning that these did not warrant detailed deliberation once the acquiescence bar was established.

DOCTRINAL SIGNIFICANCE

Within the bounds of what was actually decided, this judgment is narrow in its ultimate holding: the petition was dismissed solely on the ground that it was barred by acquiescence under Section 33 of the Trade Marks Act, 1999, following a factual finding (based substantially on the Petitioner’s own witness’s inconsistent testimony under cross-examination, corroborated by a documentary admission in the Petitioner’s own Annual Report) that the Petitioner had knowledge of the Respondents’ adoption of the impugned mark from 2002 but delayed institution of rectification proceedings until 2017. The Court did not reach and expressly declined to deliberate upon, the substantive merits of the rectification claim including the questions of deceptive similarity, dishonest adoption, the effect (if any) of the Petitioner’s subsequent well-known-mark declaration on a registration predating that declaration, the alleged classification error and the “person aggrieved” threshold all of which remain, as a matter of this judgment, undetermined. The decision’s doctrinal significance accordingly lies principally in its application (rather than extension) of the Supreme Court’s framework in Union of India v. N. Murugesan distinguishing acquiescence from mere delay/laches and in illustrating how documentary inconsistencies surfaced through cross-examination of a petitioner’s own witness can be determinative of an acquiescence defence in trademark rectification proceedings a fact-specific application rather than a pronouncement of new legal principle. Given that the substantive issues (particularly the effect of a well-known-mark declaration on an earlier competing registration and the classification-error argument) were left unaddressed, this judgment should not be read as authority on those questions; it is confined to its holding that the particular petition before the Court was time-barred in equity by the Petitioner’s own fifteen-year delay despite established knowledge.

RPG Enterprises Limited v. The Registrar of Trademarks and Ors.

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