ENTERO HEALTHCARE SOLUTIONS LIMITED v. REGISTRAR OF TRADE MARKS TRADE MARKS DIVISION INTELLECTURAL
Mandatory Requirement for Reasoned Orders by Registrar of Trade Marks and Independent Applicability of the Honest Concurrent Use Exception under Section 12.
Court: Bombay High Court
Citation: 2026:BHC-OS:7875
Decision Date: 23-03-2026
List of Laws
Trade Marks Act, 1999; Section 11(1) - Relative grounds for refusal of registration; Section 12 - Registration in the case of honest concurrent use; Section 18(5) - Duty to record reasons for refusal; Section 91 - Appeals to High Court; Principles of Natural Justice - Requirement of a reasoned order
- Facts: The Petitioner, Entero Healthcare Solutions Limited, applied for the registration of the device mark 'ENTERO' under Class 5. The Registrar of Trade Marks issued an Examination Report objecting to the registration under Section 11(1) of the Trade Marks Act, citing an existing registered mark 'EnteroGG'. The Petitioner responded by providing evidence of honest and concurrent use since 2018, asserting that the cited mark was not in use and that the Petitioner had established significant goodwill and turnover. Despite this evidence, the Respondent issued an order rejecting the application, stating the marks were deceptively similar and likely to cause confusion.
- Procedural Posture: The Petitioner filed a Commercial Miscellaneous Petition before the Bombay High Court challenging the rejection order dated 19th May 2025.
- Issue: Whether the Registrar's order was legally sustainable given that it failed to provide reasons for rejecting the Petitioner's evidence of honest and concurrent use under Section 12, and whether the Registrar is mandated to record reasons for refusal.
- Holding: No, the order is not sustainable. The High Court set aside the impugned order and remanded the application back to a different Registrar for fresh consideration.
- Reasoning: The Court reasoned that the impugned order was "ex facie unreasoned" and passed in a mechanical manner without application of mind. It held that Section 18(5) of the Trade Marks Act specifically mandates the Registrar to record reasons for refusal. Furthermore, Section 12 of the Act provides an independent exception for honest and concurrent use, which the Registrar completely ignored. The Court rejected the Respondent's argument that the Petitioner's only remedy was a rectification proceeding under Section 47, stating that such an interpretation would render Section 12 otiose and do "violence to the plain letter and spirit" of the Act. Relying on Supreme Court precedents, the Court emphasized that reasons are the "soul" of judicial and quasi-judicial decisions, especially when they are appealable under Section 91.
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