Trademark Refused or Patent Rejected? Appealing to the Delhi High Court

What changed in 2021, and where these appeals go now

Until 2021, appeals against orders of the Registrar of Trade Marks and the Controller of Patents went to the Intellectual Property Appellate Board. The Tribunals Reforms Act 2021 abolished the IPAB and transferred that work to the High Courts. Section 91 of the Trade Marks Act 1999 and Section 117A of the Patents Act 1970 now say that the appeal lies to the High Court.

The Delhi High Court responded by creating an Intellectual Property Division and framing the Delhi High Court Intellectual Property Rights Division Rules 2022. Trade mark appeals are registered as C.A.(COMM.IPD-TM) and patent appeals as C.A.(COMM.IPD-PAT), and they are heard by single judges assigned to the Division. Appeals from Design Office orders, and orders under the Geographical Indications and Plant Varieties laws, also come to the High Court now. Our guide on the Intellectual Property Division of the Delhi High Court explains how the Division is organised.

An appeal is a challenge to an order that has already been passed. If your problem is a registered mark belonging to someone else that should not be on the register, you can also file a rectification petition directly in the High Court, explained on our page on trademark rectification and cancellation. If your problem is that a rival is copying your patented product, the remedy is a suit, covered on our page on patent and design disputes.

The appeal provisions

Grounds on which Registry and Patent Office orders are commonly set aside

The ground that succeeds most often is not the merits of the mark or the invention. It is a defective order. The High Court expects the Registrar and the Controller to give reasons that deal with the applicant's submissions and evidence, not a one-line conclusion. An order that ignores written submissions, relies on a cited mark or prior art document that was never put to the applicant, or simply repeats the examination report is routinely set aside and sent back for a fresh hearing.

The second common ground is breach of natural justice in procedure: a hearing notice sent to an old address or email, an application treated as abandoned for a missed deadline when the examination report or opposition notice was never served, or an order passed without hearing an applicant who asked to be heard. The Delhi High Court has corrected many such orders, particularly in abandonment cases where the Registry's own records showed no proper service.

On the merits, trade mark appeals turn on whether the cited marks are really similar, for similar goods, in a way likely to confuse; whether a word said to be descriptive has acquired distinctiveness through use; and whether the Registrar applied the right tests. Patent appeals turn on inventive step against the cited prior art, the scope of the exclusions in Section 3, sufficiency of disclosure, and whether amendments go beyond the original filing. On computer-related inventions, the Delhi High Court in Ferid Allani v. Union of India (2019) emphasised that an invention producing a technical effect or technical contribution is not excluded merely because it uses software.

When Advocate B.K. Singh is asked whether an appeal is worth filing, he reads the hearing notice, the written submissions filed afterwards and the final order side by side. If the order does not answer the submissions, that gap is usually the strongest point in the appeal, even where the merits are arguable.

Trade mark orders: refusals, oppositions and abandonment

A refusal after a show cause hearing is the most frequent trade mark appeal. The usual objections are that the mark is descriptive or lacks distinctive character (Section 9) or that it is similar to an earlier mark for similar goods (Section 11). An appeal can bring evidence of use, consent from the earlier owner, a limitation of the goods, or a careful comparison showing the marks differ as a whole. Where the cited mark is itself unused, a rectification petition against it can be filed in parallel.

Opposition orders can be appealed by either side. The applicant who loses can show that the opponent failed to prove its reputation or use; the opponent who loses can show that the Registrar ignored its evidence of prior use or bad faith. In both cases the evidence filed before the Registrar matters most, because the High Court does not usually allow a party to build a fresh case on appeal without good reason.

Orders treating an application or opposition as abandoned, for example under Section 21(2) where a counter statement was not filed within two months, are often the easiest to set right if service was defective. Bring the Registry's correspondence record from the online file, which often shows whether and where notices were sent.

Orders on registered marks are appealable too. If the Registrar removes your mark for non-renewal, the first question is whether the renewal reminder required by the Act and Rules was actually sent to the address on record; if it was not, removal is open to challenge. Where the Registrar decides a cancellation or rectification application, whether in your favour or against you, the losing side can appeal under Section 91 instead of starting a fresh petition in the High Court. Recording of assignments, changes in ownership and corrections of the register are also orders that can be brought to the court if wrongly refused.

Patent orders: refusals, oppositions and restoration

A refusal under Section 15 after the hearing is the commonest patent appeal. The applicant has usually received a first examination report, filed a reply and amended claims, attended a hearing and filed written submissions. The appeal argues that the Controller misread the prior art, combined documents without explaining why a skilled person would do so, ignored the technical effect shown, or applied a Section 3 exclusion wrongly. Amended claims filed before the Controller are generally the claims considered on appeal.

Decisions in post-grant opposition under Section 25(4) can be appealed by the patentee or the opponent. An opponent whose pre-grant opposition is rejected and the patent granted generally cannot appeal against the grant; the Delhi High Court has pointed such opponents to post-grant opposition or a revocation petition instead. Orders refusing restoration of a lapsed patent under Section 61 are appealable, and they often turn on whether the failure to pay the renewal fee was unintentional and the application was made promptly.

Two procedural points catch foreign applicants. Section 8 requires disclosure of corresponding foreign applications, and refusals or revocations for non-compliance are frequent. And time limits under the Patent Rules are strict; extensions are limited and must be sought before the deadline in most cases.

Which High Court hears the appeal

For patent appeals, the Delhi High Court has held that the appeal goes to the High Court with jurisdiction over the 'appropriate office' of the Patent Office under Rule 4 of the Patents Rules, which is generally the office where the application was first filed. In Filo Edtech Inc v. Union of India (2023), an appeal against an order on an application filed at the Mumbai office was held to belong to the Bombay High Court, following the earlier Dr. Reddy's Laboratories decision. The Delhi office of the Patent Office covers Delhi and much of north India, so most applications from Delhi, Haryana, Punjab, Uttar Pradesh, Rajasthan and the hill states come to the Delhi High Court.

For trade mark appeals, the same logic generally applies: the appeal goes to the High Court with jurisdiction over the Registry office that is the appropriate office for the application, which for Indian applicants depends on their principal place of business. The Delhi office of the Trade Marks Registry covers Delhi and much of north India. The related question of where rectification petitions may be filed has been referred to a larger bench of the Delhi High Court (The Hershey Company v. Dilip Kumar Bacha, 2024), so check the current position where there is any doubt.

Filing in the wrong High Court wastes months and can push you outside the time limit. The appeal is filed on the original side of the Delhi High Court through e-filing, registered under the IPD Rules, and listed before the IP Division.

Step by step: filing an appeal in the Delhi High Court

1. Get the order and the date it reached you

   Download the order from the official online file and note the date it was communicated to you, by email or post. The three month period runs from communication, so keep proof of that date.

2. Collect the record

   Download the complete file: application, examination report, your replies, hearing notice, written submissions, evidence, and, in opposition cases, the other side's pleadings and evidence. The appeal is decided mainly on this record.

3. Decide between review, appeal and fresh filing

   A review before the Registrar or Controller is possible in some cases, but it does not always protect you against the appeal period running. A fresh application may be cheaper if the refusal was on a narrow point. In most contested cases, the appeal is the right step.

4. Draft the appeal memorandum

   The memorandum sets out the facts, the order challenged, the grounds of appeal and the relief sought, with a statement of truth. The Registrar or Controller is made a respondent, along with any opponent. An application for condonation of delay is added if the appeal is late.

5. File, pay court fee and serve

   The appeal is e-filed with the impugned order and the record. Check the current court fee for IP appeals. Advance copies are served on the respondents, including the government counsel who appears for the Registry or Patent Office.

6. First hearing

   The court may issue notice, call for the official record, or, where the order is plainly unreasoned, set it aside and remand at an early hearing with the respondents' agreement. Stay of a consequential step, such as advertisement of a competing mark, can be sought.

7. Hearing and decision

   After replies, the court hears arguments on the record. It may allow the appeal and direct registration or grant, dismiss it, or send the case back to the Registrar or Controller with directions and a timeline.

After a remand, the fresh hearing before the Registry or Patent Office is often the decisive stage. Prepare for it as carefully as for the appeal itself, with updated evidence and submissions that answer every point the court flagged.

Time and cost at each stage

Our professional fees are discussed at the first meeting and agreed in writing, stage by stage. An appeal against an unreasoned refusal that is remanded at the first hearing costs much less than a contested opposition appeal with large evidence.

Documents for a trade mark or patent appeal

Appeal, review, writ or a fresh application: choosing the remedy

An appeal is the ordinary remedy, but not the only one. The Registrar of Trade Marks has a power of review under Section 127, and the Controller of Patents can review decisions under Section 77 read with the Patents Rules. A review is useful for an obvious error, such as a hearing missed because the notice went to the wrong address. It is not a second round on the merits, and you should not let the appeal period run out while waiting for it.

Where no appeal lies, or the problem is inaction rather than an order, a writ petition under Article 226 may be the remedy. The Delhi High Court has entertained writs where the Registry did not decide an application for years, wrongly showed a mark as abandoned, or failed to act on a court's direction. The general route for writs is covered on our page on writ petitions in the Delhi High Court.

Sometimes the practical answer is a fresh application with a narrower specification of goods, a different device, or narrower claims, together with an appeal or instead of it. That decision depends on how much the original filing date matters. For a trade mark that is already in use, the filing date is often valuable; for a patent, the original priority date is almost always worth fighting for.

Mistakes that lose appeals before they are heard

• Counting from the order date instead of proving communication. The three month period runs from communication, but if you cannot prove when the order reached you, the order date will be used against you.
• Filing in the wrong High Court. The appropriate office of the Registry or Patent Office usually decides the forum. A Delhi applicant whose application was filed at the Mumbai office may have to appeal in Bombay.
• Adding new evidence without explanation. The appeal is decided mainly on the record. New evidence needs a reason why it could not be filed earlier.
• Ignoring the opponent. In opposition appeals, the other party must be made a respondent and served, or the appeal can be delayed or dismissed.
• Relying on a review alone. A pending review does not always stop the clock for an appeal.
• Leaving the remand hearing unprepared. Winning a remand and then repeating the same submissions before the Registrar or Controller usually ends in a second refusal.

Foreign applicants and NRIs

A large share of patent appeals and many trade mark appeals in Delhi are filed by foreign companies. The process does not require anyone to travel. The appeal is signed under a power of attorney, which must be notarised and apostilled or legalised if signed abroad, and the matter is argued by counsel in Delhi, with hearings available by video. Our page for NRI and overseas clients in the Delhi High Court covers the paperwork.

Foreign applicants should watch the date of communication closely. Orders sent to the Indian agent's address are treated as communicated when the agent receives them, and delays in forwarding are not usually a good reason for condonation. Where an Indian agent has been changed, check that the Registry or Patent Office records show the new address for service.

After the High Court's decision

If the appeal is allowed outright, the court directs the Registry to proceed with advertisement or registration, or the Patent Office to grant the patent, and the office acts on the order. If the matter is remanded, a fresh hearing follows, usually within a time fixed by the court.

If the appeal is dismissed, the further remedy depends on the order. Whether an intra-court appeal lies to a Division Bench against a single judge's decision in a statutory IP appeal has been debated, and the answer can affect the time available, so it should be checked quickly; otherwise the route is a special leave petition to the Supreme Court. For general guidance on commercial appeals in the Delhi High Court, see our page on commercial appeals.

What to do this week

Find the order and record the date it reached you; mark the last date for appeal in your calendar, with a margin. Download the full file from the official online portal. If you used an agent before the Registry or Patent Office, ask for every document filed and every notice received.

If you are not yet at the appeal stage and want to avoid it, our guide on protecting a trademark before going to court covers clearance searches and filing strategy. Advocate B.K. Singh's usual first step on an appeal brief is to check the forum and limitation before anything else, because a strong appeal filed in the wrong court or a day late may never be heard on its merits. For advice on your order and papers, or for an update on the jurisdiction questions still pending, contact Advocate B.K. Singh.