The dispute in S.S. White Burs Inc. v. The Registrar of Trade Marks & Anr., decided by the Delhi High Court on 25 April 2026, arose out of cross-rectification petitions over the mark S.S. WHITE, used on dental and allied medical products.
Background of the case
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The petitioner, S.S. White Burs Inc., traced the mark to Dr Samuel Stockton White, who began using it in Philadelphia in 1844. Through a chain of assignments, including amendments executed in 1986 and 1989, global rights in the mark, excluding a handful of specified territories, vested in the petitioner along with the associated goodwill. The petitioner held Indian Trademark Registration No. 609897 in Class 10 for S.S. WHITE BURS INC., applied for on 19 October 1993 and granted on 15 October 2001. It claimed continuous commercial presence in India since 1991 through authorised distributors.
The respondent, S.S. White Dental Private Limited, was incorporated in India in March 1992. It held Trademark Registration No. 2147676 for S.S. WHITE in Classes 5 and 10, applied for on 20 May 2011 and granted on 13 November 2013. The petitioner discovered the respondent’s use in 2012, issued a cease-and-desist notice on 11 September 2012, and, on finding that the respondent’s application had already been accepted and advertised with the opposition window closed, filed a protest petition before the Registrar followed by writ proceedings. The registration went through regardless. Rectification proceedings under Section 57 of the Trade Marks Act, 1999 followed, met by a counter-rectification petition from the respondent targeting the petitioner’s own registration.
Petitioner’s Case
The petitioner argued that it was the prior and rightful proprietor of S.S. WHITE, that the respondent’s adoption of an identical mark and an identical stylised device could not be coincidence, and that the registration had been obtained by misleading the Registry, including by escaping proper examination in Class 10. It pointed to 1993 correspondence establishing that the respondent knew of the petitioner’s rights well before seeking registration, and argued that the respondent’s failure to disclose this history to the Registrar amounted to suppression.
Respondent’s Case
The respondent’s account was that a director of S.S. White UK had proposed a collaboration around 1991, pursuant to which it adopted the corporate name and mark in 1991-92 and began importing goods from S.S. White UK until around 1999, building independent goodwill in India thereafter. It raised a preliminary objection that the petitioner, having failed to oppose the application at the advertisement stage, was not a “person aggrieved” entitled to seek rectification, and separately pleaded prior use, honest concurrent use under Sections 12 and 34, and a challenge to the petitioner’s claimed trans-border reputation.
The Court’s Analysis
Prior Rights and Chain of Title
The Court found S.S. WHITE to be a coined, inherently distinctive mark, not a descriptive term available for anyone to adopt. The documentary record, running from Dr White’s original use through the 1986 asset purchase agreement to the 1989 amendments, established an unbroken chain of title vesting global rights, including India, in the petitioner. Registrations in more than ninety jurisdictions and a commercial presence in India since 1991, acknowledged even in the respondent’s own documents, supported a finding of prior, continuous, and bona fide use well before the respondent’s adoption.
Respondent’s Adoption Was Unauthorised and Dishonest
The Court then turned to the respondent’s own account of how it came to use the mark. No written authorisation from S.S. White UK was ever produced, and S.S. White UK denied granting any. The Court added that even if such permission had been given, S.S. White UK had no right to grant it for India, since that territory belonged to the petitioner under the 1989 assignment. A second problem compounded the first: the respondent had told the Registrar of Companies that “S.S.” stood for “Surgical” and “Scientific,” a claim flatly inconsistent with its later plea of adoption through a UK collaboration. The Court treated these as mutually destructive positions, pointing to dishonesty rather than coincidence. It further held that the respondent’s imports and sales of goods bearing the mark amounted to passing off, since the respondent was trading on goodwill built by the petitioner’s UK-linked supply rather than goodwill of its own making.
Knowledge of the Petitioner’s Rights
The 1993 correspondence carried real weight in the analysis. It showed that the respondent had been made aware of the petitioner’s rights over the mark at a stage well before it sought registration, and had proceeded regardless. Knowledge at the point of adoption, not merely at the point of registration, is what turned the respondent’s conduct from a competitive risk into bad faith.
Imitation of the Stylised Device
Beyond the word mark, the Court examined the respondent’s device mark and found it copied the petitioner’s font, colour, and overall presentation. It described this as a slavish imitation, not an independent design choice, and treated it as reinforcing the conclusion that the adoption was calculated to create an association with the petitioner’s international brand rather than to build a distinct identity.
Suppression of Material Facts and Bad Faith Under Section 11(10)(ii)
Having found the adoption dishonest, the Court asked what the respondent had told the Registry about it. The answer was: not much. The respondent had known of the petitioner’s prior rights and of the 2012 cease-and-desist notice, yet disclosed neither during the pendency of its application. The Court held that an applicant, and its authorised trademark attorney, owe a duty of candour to the Registrar and cannot stay silent on material facts while hoping to benefit from the Registry’s own procedural gaps. That omission, on top of the dishonest adoption already found, amounted to bad faith within the meaning of Section 11(10)(ii), rendering the registration liable to be set aside on this ground independently of the others.
The Registrar’s Rule 33 Duty Was Not Optional
A separate, and separately significant, finding concerned the Registry’s own conduct. The Court found that the mandatory search and examination required under Rule 33 of the Trade Marks Rules, 2017 had not been carried out for the respondent’s Class 10 application. Had it been, the petitioner’s earlier registration would necessarily have surfaced and the application would have faced refusal under Section 11(1). Relying on Ashiana Ispat Ltd. v. Kamdhenu Ltd., the Court treated Rule 33 examination as a substantive and mandatory exercise, not a formality the Registrar can skip without consequence, and held that a failure to cite a prior identical mark confers a real right on the aggrieved proprietor to challenge the resulting registration. The Court noted this omission was serious enough to warrant costs against the Registrar personally, but declined to impose them given the time that had since elapsed.
Rejection of the Sections 12 and 34 Defences
The respondent’s reliance on prior use and honest concurrent use under Sections 12 and 34 fell away once the adoption itself was found dishonest. The Court held that derivative use, meaning use that originates from someone else’s goodwill rather than the user’s own effort, cannot found a defence of honest concurrent use. It distinguished Toyota v. Prius Auto on the basis that the petitioner here had shown actual use and presence in India in addition to reputation, unlike the purely reputation-based claim that failed in Toyota. The trans-border reputation challenge was held immaterial once the respondent’s own documented knowledge of the petitioner’s rights was established; the case did not need to rest on reputation alone.
The Court’s Final Order
The Court held that Registration No. 2147676 for S.S. WHITE in Classes 5 and 10 was an entry made without sufficient cause and an entry wrongly remaining on the register within the meaning of Section 57(2), and ordered it removed. The respondent’s counter-rectification petition against the petitioner’s registration did not survive this finding and was dismissed. The respondent was permitted a one-month window to sell off existing stock bearing the mark, subject to filing an affidavit and maintaining accounts before the Single Judge in the pending commercial suit. Costs of Rs 10 lakh in each petition, aggregating to Rs 20 lakh, were awarded to the petitioner.
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Implications of this case
For rectification strategy, the case is a template for building a bad-faith challenge on more than one leg at once: dishonest adoption, an internally inconsistent account of that adoption, copying of a stylised device, and suppression before the Registry, each pleaded and proved separately so that the case does not depend on any single finding surviving appeal. The Rule 33 finding gives petitioners a distinct procedural ground to raise wherever a later, conflicting registration appears to have slipped through examination in a class where an earlier identical mark already existed. And the treatment of the 1993 correspondence is a reminder that trans-border reputation arguments land hardest not as a general claim of international fame, but as proof that this particular respondent knew of this particular right at the time it chose the mark.
