The Registrar’s “Undo” Button: The Lambretta case and Section 19 of India’s Trademark Act

Summary: The Delhi High Court’s recent Lambretta ruling clarifies that trademark acceptance in India is a procedural step, not a final endorsement. The Court affirmed that Section 19 allows the Registrar to correct errors but isn’t a shortcut for rivals. Ultimately, parties must follow statutory opposition routes rather than rushing to court mid-stream.

Trademark disputes rarely move in straight lines. Sometimes, well before a mark becomes opposition-worthy, disputes around ownership may emerge. The Delhi High Court’s recent decision related to the iconic scooter brand LAMBRETTA brings this aspect of trade mark prosecution into focus. The decision clarifies the scope of challenges before the opposition stage, who can mount such challenges, when, and through which legal route.

Background

The controversy revolved around competing claims over the trademark LAMBRETTA, a brand with a complex, global, and long commercial history. On one side stood Innocenti SA, asserting international goodwill and overseas registrations. On the other side was August Ventures Private Limited, claiming rights flowing from brand acquisition.

The origins: Innocenti’s applications

The trademarks in question were a bunch of trademark applications filed by Innocenti, which did not meet a uniform fate before the Trade Marks Registry (TMR). Two applications were accepted and advertised, while a third was refused outright. This inconsistent treatment of similar marks became the starting point of multiple suits filed at the Delhi High Court.

The Delhi High Court issued a common judgement in all three matters, i.e., C.A.(COMM.IPD-TM) 76/2024 (“Appeal”), W.P.(C)-IPD 54/2025 (“WP 54”) and W.P.(C)-IPD 56/2025 (“WP 56”), by way of its decision dated 31 January 2026.

WP54: Interpreting Section 19

Section 19 of the Trade Marks Act, 2019 (the Act), was in focus here, which reads thus:

Section 19. Withdrawal of acceptance

Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied—

1. that the application has been accepted in error; or
2. that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

Section 19, read with Rule 38 of the Trade Marks Rules, allows the Registrar to withdraw an acceptance before registration, but only if the Registrar is satisfied that the acceptance was granted in error or that the mark ought not to be registered.

August Ventures’ grievance was that Innocenti’s applications were accepted, despite (1) earlier conflicting marks, and (2) an earlier refusal of a similar application. It invoked Section 19 before the Registrar, but when no action was taken, it filed WP 54, seeking a direction to the Registrar to exercise its powers under Section 19.

Its argument was as follows: The Section 19 remedy is independent, and not alternative to opposition under Section 21. Once a mark is accepted under Section 18(4) and advertised under Section 20, opposition under Section 21 only determines whether registration should ultimately be granted under Section 23. Since Section 23 itself is subject to Section 19, both remedies operate in distinct fields and can coexist.

The Court rejected this outright, holding that Section 19 and Rule 38 provide that the power to withdraw acceptance can be exercised only by the Registrar, when the Registrar is satisfied that the acceptance was erroneous. The phrase “where the Registrar is satisfied” was decisive, implying that “satisfaction” is an administrative concern, and cannot be triggered by external representations. Importantly, Section 19 contemplates only two parties, i.e., the Registrar and the applicant, and thus the Registrar has no statutory obligation to entertain third parties.

Accordingly, the Court rejected the plea for a writ of mandamus, pointing out that such a writ can compel the performance of a statutory duty, but not the exercise of discretion. Since Section 19 merely enables the Registrar to act and does not impose any duty to do so upon a third party’s request, no mandamus could be issued.

WP56: Acceptance Orders

The second writ petition challenged the acceptance and advertisement of Innocenti’s applications. Here again, the Court declined to interfere.

The Court held that August Ventures was ‘forum shopping’, having filed successive writ petitions arising from the same cause of action, i.e., the passing of the Acceptance Orders. In WP 54, August Ventures sought a writ of mandamus directing the Registrar to exercise powers under Section 19, while, in WP 56, it sought a writ of certiorari to set aside the very same Acceptance Orders.

The Court also held that a writ of certiorari can be issued only in cases of grave jurisdictional error, violation of natural justice, or an error apparent on the face of the record. Here, the Acceptance Orders were passed under Section 18, and were not jurisdictional errors. Mere disagreement with the Registrar’s decision cannot justify invocation of writ jurisdiction, especially when a complete statutory remedy (opposition under Section 21) is already provided for.

The Appeal

While August Ventures’ writ petitions failed, Innocenti’s appeal succeeded, primarily because of the inconsistent positions taken by the TMR across different applications involving similar marks and the same parties.

The Court was evidently troubled by the Registrar’s contradictory approach. In the Acceptance Orders, the Registrar permitted the marks to proceed to advertisement, whereas, in the Refusal Order, a similar mark was refused without explanation for the differential treatment. In the Court’s view, these two sets of Orders could not logically coexist. The Court also observed that the Registrar’s submissions, variously while opposing the writ petitions and the appeal, were “self-contradictory and mutually destructive”. On this ground alone, the Court set aside the Impugned Order and allowed the Appeal.

However, the Court did not take any position on the merits of the marks themselves, or the pending disputes between the parties. Instead, it directed the Registrar to independently reconsider the matters afresh, after giving both parties a full hearing. This exercise would cover Innocenti SA’s pending applications, August Ventures’ oppositions, as well as the Innocenti’s rectification petitions against August Ventures’ marks, ensuring that all related disputes are addressed comprehensively.

Key takeaways

The Lambretta decision has some important lessons for businesses and brand owners navigating Indian trade mark prosecution:

Firstly, the administrative act of acceptance of a trademark is a procedural step. It is not an endorsement of ownership or registrability. Businesses should not assume that acceptance means that a mark cannot be challenged. Equally, they should not panic when a competing mark is accepted.

Secondly, Section 19 is not to be treated as a shortcut, and is certainly not available to a rival proprietor, who cannot force the Registrar to reopen acceptance because they believe it to be wrong.

Thirdly, parties should not be impatient in getting to the finish line. Courts are generally reluctant to interfere mid-stream when the statute already provides a complete remedy. In practice, rival parties, upon spotting a conflicting trademark application, might be tempted to file Interlocutory Petition objections at the examination stage to alert the examiner, and might even rush to court for interventions before the trademark is advertised. In reality, this may not solve much, although it may give the rival owner temporary satisfaction that they “raised a point”.

As clarified by the Court, opposition routes should be pursued instead, being the statutorily correct path to follow. If this is missed for any reason, the rectification stage remains open. The trademark system is designed logically, with opportunities for challenge and dispute resolution at key milestones of the prosecution process. Parties that try to bypass the statute may not be looked upon kindly.