Trademark Victory for Davidoff: Delhi High Court Reinstates Luxury Brand on Trademark Register

Summary

In a ruling that underlines both fair process and trademark owners’ rights, the Delhi High Court has wiped off the Intellectual Property Appellate Boards (IPAB) decision that erased the luxury scent label Davidoff from India’s Trademark Register. The Court ruled that IPABs earlier deletion had never been announced to Davidoff, so natural justice under Section 57 of the Trade Marks Act was ignored. By restoring the brand, the ruling reassures owners of well-known foreign marks that their registrations will be shielded from surprise cancellations.

Case Timeline

• 1994: Davidoff, owned by Zino Davidoff SA, was registered under Class 3 for perfumes and cosmetics in India.
• 2006: IPAB, in an unrelated appeal (without notice to Zino Davidoff SA), ordered the removal of the ‘Davidoff’ mark from the register.
• Post-2006: The proprietor later discovered the deletion and filed a writ petition before the Delhi High Court.
• May 2024: The Delhi High Court pronounced its decision, reinstating the ‘Davidoff’ mark on the register.

Issues Raised

• Was IPABs order to erase Davidoff’s mark valid under Section 57 of the Trade Marks Act?
• Did the removal break basic fairness rules because the owner was never warned?
• What impact does a missing notice have on the legal standing of a rectification or removal?

Petitioner’s Arguments

• The removal of the trademark was conducted without any notice, hearing, or opportunity to be heard, directly violating Section 57(4) which mandates notice to the registered proprietor before any rectification.
• Argued that the IPAB acted beyond its jurisdiction and the action was ex facie illegal.
• The brand had a longstanding presence and reputation in India, and removal had significant commercial consequences.
• The action was a clear breach of the principles of natural justice, rendering the order non-Est in law.

Respondent’s Arguments

• The removal was part of a rectification proceeding involving third parties, and the registrar complied with statutory procedures as interpreted.
• Claimed that since the mark was not being used in India at the time, it was liable to be removed under Section 47 (non-use).
• IPAB’s order, being an administrative act, could be presumed valid unless overturned by the court.

Judgment

The High Court agreed with Zino Davidoff SA and said:

• Section 57(4) clearly says the registry must notify the owner before any rectification or removal can take place.
• Because IPAB skipped that step, its previous decision was unlawful and ran counter to core principles of natural justice.
• In Indian trademark law, the right to be heard is a basic protection whenever someone’s hard-earned rights might be at stake.
• The Court restored the ‘Davidoff’ mark to the Trade Marks Register and held the IPAB order to be null and void ab initio.

Analysis

• This decision is a strong showcase of the importance of procedural fairness in IP adjudication. The Court made it clear that even administrative bodies like IPAB (now defunct) cannot bypass the statutory mandate of giving notice before passing adverse orders.
• The ruling is particularly effective for foreign trademark proprietors, many of whom may not be actively trading in India but still maintain their brand registrations. The Act clearly states that a trademark cannot be wiped off indirectly unless the owner is aware and involved.
• It also underlines that the law is mandatory, so any erasure or correction must follow proper procedure without shortcuts.