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Introduction
On 31 January 2026, the High Court of Delhi delivered a common judgment in C.A. (COMM.IPD – TM)76/2024 and connected matters concerning the trademark “LAMBRETTA.” The proceedings included an appeal filed by Innocenti SA, a Swiss entity, against the Registrar of Trademarks’ refusal of its device mark application, and two writ petitions filed by August Ventures Private Limited, an Indian company that had acquired rights in the mark through an e-auction conducted by Scooters India Limited (SIL). The dispute raised important questions about the scope of Section 19 of the Trademarks Act, 1999, particularly whether third parties have a statutory right to seek withdrawal of acceptance of a trademark application, and whether writ jurisdiction under Article 226 of the Constitution can be invoked when statutory remedies such as opposition proceedings under Section 21 are available.
Fact of the Case
The origins of the “LAMBRETTA” mark date back to 1948 when Innocenti SG, an Italian company, obtained registration in Italy, followed by registration in India in 1949 for motor vehicles under Class 12. In 1972, through a tripartite agreement between the Government of India, Automobile Products of India Limited, and Innocenti SG, the Government acquired machinery, know-how, and trademark rights in “LAMBRETTA.” These rights were subsequently assigned to Scooters India Limited (SIL), which became the proprietor of the mark. SIL faced financial difficulties and was declared sick under the Sick Industrial Companies Act during 1992–2000 and again between 2010–2015, but the mark continued to be used worldwide through licensees.
In 2007, Brandconcern B.V. attempted to usurp the brand by filing applications for “LAMBRETTA.” In 2015, Heritage Licensing SA changed its name to Innocenti SA. In September 2022, August Ventures participated in SIL’s e-auction and acquired worldwide rights in “LAMBRETTA” and “LAMBRO” for approximately ₹6.86 crores. Around the same time, Innocenti SA filed three applications in India: Application No. 5628005 for a device mark in Class 12, which was refused by the Registrar on 28 May 2024, and Application Nos. 5628002 and 5628003 for word marks in Classes 12 and 25, which were accepted and advertised in June and July 2025 despite prior marks of August Ventures being cited in the examination reports.
August Ventures filed applications under Section 19 of the Trade Marks Act in June 2025, seeking withdrawal of acceptance of Innocenti’s word marks on the ground that they had been accepted in error. When the Registrar failed to act, August Ventures filed two writ petitions: WP 54/2025 seeking a writ of mandamus to compel the Registrar to decide its Section 19 applications, and WP 56/2025 seeking a writ of certiorari to quash the acceptance orders. Meanwhile, Innocenti SA filed an appeal against the refusal of its device mark application.
Argument in Favour
August Ventures argued that the Registrar’s acceptance of Innocenti’s word mark applications was contrary to Section 11 of the Trade Marks Act, 1999, which prohibits registration of marks identical or similar to existing registered marks where confusion is likely. Since August Ventures’ marks had been cited in the examination reports, the Registrar ought to have rejected Innocenti’s applications at the threshold. It contended that Section 19 provides a valuable right to rectify erroneous acceptance of applications and is intended to save rightful owners from the burden of lengthy opposition proceedings under Section 21 or rectification under Sections 47 and 57.
August Ventures maintained that the Registrar’s power under Section 19 is not purely suo moto. Once an error is brought to the Registrar’s notice, the authority is obligated to act to maintain the purity of the Register. It characterized Innocenti as a habitual infringer and “pirator,” attempting to create a false association with the original Italian company. It relied on several precedents to support its case. In Tikkam Chand v. Dy. Registrar of Trade Marks, 1998 SCC OnLine Del 478, the Court held that the Registrar must hear both the applicant and the objector under Section 19. In S.C. Advocates-On-Record Association v. Union of India, (1993) 4 SCC 441, it was held that mandamus can compel a public authority to perform statutory duties. In Jai Bhagwan Gupta v. Registrar of Trade Marks, 2020:DHC:1532, the Court emphasized the Registrar’s duty to apply its mind before advertisement. The principles were reaffirmed in Kaira District Cooperative Milk Producers Union Ltd. v. Registrar of Trademarks, WP(C)-IPD 14/2021. August Ventures also referred to Kamdhenu Limited v. Union of India, W.P.(C)-IPD 29-33/2025, where acceptance orders were remanded for de novo adjudication due to abuse of jurisdiction.
Argument Against
Innocenti SA contended that it enjoys immense international reputation, with registrations in over forty countries and operations in sixty jurisdictions. It argued that SIL, the predecessor of August Ventures, had not used the mark in India for decades, leading to expiry or removal of several registrations. Innocenti claimed that the Registrar’s refusal of its device mark application was arbitrary and inconsistent, particularly since its word mark applications were accepted.
Innocenti and the Registrar argued that Section 19 is discretionary and suo moto, allowing only Registrar-applicant interaction. Third parties have no statutory right to be heard at this stage. They emphasized that Section 21 provides an efficacious remedy for aggrieved parties to oppose registration after advertisement. Allowing writ petitions at the acceptance stage would paralyze the trademark system and open floodgates for litigation.
They relied on Rajkumar Sabu v. Sabu Trade Pvt. Ltd., W.P. (IPD) No. 34/2025, where the Court held that Section 19 does not grant third parties a right to be heard. They distinguished Jai Bhagwan Gupta v. Registrar of Trade Marks, 2020:DHC:1532, as it dealt with advertisement before acceptance. They also relied on Kaira District Cooperative Milk Producers Union Ltd. v. Registrar of Trademarks, WP(C)-IPD 14/2021, to argue that parties must exhaust opposition remedies under Section 21 rather than invoking writ jurisdiction.
Court’s Decision
The Court dismissed both writ petitions filed by August Ventures and allowed Innocenti SA’s appeal. It held that Section 19 confers discretionary power on the Registrar to withdraw acceptance of a trademark application if accepted in error, but this power is based on the Registrar’s subjective satisfaction and does not create a statutory right for third parties to be heard. Rule 38 of the Trade Marks Rules, 2017, contemplates only Registrar-applicant interaction.
The Court emphasized that Section 21 provides an efficacious statutory remedy for third parties to oppose registration. Since August Ventures had already filed oppositions, writ jurisdiction under Article 226 was not warranted. The Court clarified that writ of certiorari or mandamus is reserved for grave jurisdictional errors, and mere disagreement with the Registrar’s preliminary satisfaction under Section 18 does not justify High Court intervention.
However, the Court found that the Registrar had taken contradictory stands by refusing Innocenti’s device mark application while accepting its word mark applications, despite all three involving the same parties and the same mark. Such inconsistency could not coexist. The Court therefore allowed Innocenti’s appeal, setting aside the refusal order. It directed the Registrar to pass a consolidated, reasoned order within three months after fresh hearing of both Innocenti SA and August Ventures, covering all pending applications and rectification petitions.
Conclusion
The Delhi High Court’s judgment in Innocenti SA v. Registrar of Trade Marks & August Ventures Pvt. Ltd. provides clarity on the scope of Section 19 of the Trade Marks Act, 1999. The Court held that Section 19 is a discretionary power vested in the Registrar to withdraw acceptance of a trademark application if accepted in error, but it does not confer a statutory right on third parties to demand such withdrawal. The appropriate remedy for aggrieved parties remains opposition proceedings under Section 21, which ensure due process and balance between applicants and objectors.
At the same time, the Court recognized the Registrar’s inconsistent treatment of Innocenti’s applications, which necessitated judicial correction. By setting aside the refusal of Innocenti’s device mark and directing a consolidated order, the Court sought to ensure consistency, fairness, and transparency in trademark adjudication.
This decision underscores the importance of maintaining the purity of the Register while respecting statutory remedies and procedural safeguards. It highlights the judiciary’s role in correcting administrative inconsistencies without undermining the statutory framework of trademark law. Ultimately, the case reinforces that while third parties cannot invoke Section 19 directly, they retain robust remedies under opposition and rectification proceedings, ensuring that rightful proprietors can protect their marks through established legal channels.
