Failure To Provide Translation Vitiates Trademark Registration: Madras High Court Cancels 'THUFAN' Mark

In a judgment dated December 12, 2025, a Division Bench of Justice Dr. G. Jayachandran and Justice Mummineni Sudheer Kumar allowed appeals filed by Kolkata-based fan maker Shambhunath & Bros., which uses the mark “TOOFAN”.

The court set aside a single judge order that had upheld Jai Rajendra Impex Pvt. Ltd.'s registrations for the mark “THUFAN” in Class 11, which covers lighting, heating, and other electrical appliances.

The bench held that advertisement of a trademark without complying with the statutory requirement of providing transliteration and translation is not a mere procedural lapse but a violation of law, rendering the advertisement ineffective.

“If the advertisement is issued without affording an opportunity to the general public to understand the contents of the advertisement, the very purpose of advertisement is lost,” the Court observed.

Shambhunath & Bros. told the Court that it is a longstanding user and registered proprietor of the mark “TOOFAN” since the late 1980s and that the rival “THUFAN” registrations were granted in violation of law without providing transliteration and translation into English.

The company argued that Rule 33 of the Trade Marks Rules makes it mandatory for applicants using scripts other than Hindi or English to submit transliteration and translation and that the omission resulted in a defective trademark advertisement, preventing it from understanding the mark and filing an opposition.

Jai Rajendra Impex defended the registrations by claiming prior use of the mark and arguing that earlier proceedings had examined the dispute on merits, including documents relating to use and assignment.

After examining the material on record, the Division Bench held that compliance with Rule 33 is mandatory and foundational to the registration process. The Court emphasized that trademark advertisement serves a vital public notice function and that non-compliance with the rule vitiates the entire process.

“When admittedly the appellant is having registration of trademark “TOOFAN”, depriving the appellant to oppose the proposed registration of very same trademark in different languages in view of non-compliance with the requirement under Rule 33 is liable to be declared as the one in violation of the principles of natural justice, which also goes to the root of the matter,” the Court said.

The Court reiterated the settled principle that when a statute prescribes a particular manner for doing an act, it must be done strictly in that manner.

Terming the Single Judge's view that non-compliance with Rule 33 was inconsequential as erroneous, the Bench observed: “If such a notion or such interpretation is allowed, the same would defeat the very purpose of providing a procedure under a statute and the Rules made thereunder, thereby frustrating the checks and balances provided in matter of process of registration of a trademark.”

Accordingly, the Court set aside the earlier order and cancelled the “THUFAN” trademark registrations. However, Jai Rajendra Impex was granted liberty to revive its applications by submitting proper transliteration and translation within 30 days, failing which the applications would stand abandoned.

For Appellant: Senior Advocates Sathish Parasaran and Debnath Gosh with Advocates Gautam Ray, Jayesh Kumar Daga, Saurav Jana, Ashok Kumr J. Daga

For Respondents: Senior Advocate Rudraman Bhattacharya with Advocates Atish Ghosh, Hemant Daswani, Arindam Chandra and S. Manjula