Major League Baseball Properties Inc vs Registrar of Trade Marks

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Major League Baseball Properties Inc vs Registrar Of Trade Marks on 17 March, 2026

Author: Tushar Rao Gedela

Bench: Tushar Rao Gedela

•      IN THE HIGH COURT OF DELHI AT NEW DELHI
        %                                        Judgment delivered on: 17.03.2026
        +          C.A.(COMM.IPD-TM) 53/2025 & I.A. 21010/2025
  
                   MAJOR LEAGUE BASEBALL PROPERTIES INC                    .....Appellant
  
                                    versus
  
                   REGISTRAR OF TRADE MARKS                             .....Respondent
        Advocates who appeared in this case:
        For the Appellant :         Mr. Mr. Urfee Roomi, Mr. Jaskaran Singh, Ms.
                                    Janaki Arun and Ms. Adhya S., Advocates.
  
        For the Respondent :        Ms. Nidhi Raman, CGSC with Mr. Om Ram and Ms.
                                    Nikita Singh, Advocates.
        CORAM:
        HON'BLE MR. JUSTICE TUSHAR RAO GEDELA
                                 JUDGMENT TUSHAR RAO GEDELA, J. (ORAL)
  

1.     This is an appeal under [Section 91](https://indiankanoon.org/doc/413630/) of the Trade Marks Act, 1999,
         (hereinafter referred to as "the Act") challenging the order dated 22.05.2026
         passed by the learned Assistant Registrar of Trade Marks cancelling
         Registration No. 5245655 for the mark "CHICAGO" device, in Class 41, in the
         name of the appellant.
   

2.     The appellant had filed for the registration of the device mark
         "CHICAGO" in a distinctive style on 13.12.2021 in Class 41 i.e.- "education;
         providing of training; entertainment; sporting and cultural activities, education
         services; education information; organization of educational competitions,
         organization of exhibitions for cultural, educational; organization of sports
         competitions; entertainment services; providing sports facilities; entertainment
   
          information; providing information relating to sports; presentation of live
         performances, sports camp services, instruction and coaching (training)
         services; preparation of entertainment programmes for broadcasting;
         organization of live shows; conducting of live sports events; production and
         rental of video tapes and DVDs featuring recorded baseball programs;
         recording, production and distribution of films, video and audio recordings,
         radio and television programs; providing on-line electronic publications; online
         game services; providing online newsletters in the fields of sports
         entertainment." The said mark is being extracted hereunder:
   

3.     The Trade Marks Registry had issued an examination report on
         22.01.2022 raising the following objections under [Sections 9(1)(a)](https://indiankanoon.org/doc/1288548/) and [11(1)](https://indiankanoon.org/doc/696256/) of
         the Act:
   

"a. That the Appellant's CHICAGO Mark is a geographical name and, as
per Section 9(1)(a) of the Act, is not capable of distinguishing the goods or
services of one person from those of others; and

b. That the Appellant's CHICAGO Mark is identical/similar to one (1)
prior mark already existing on the Register of Trade Marks (hereinafter
the "Register") for same/similar goods, due to which, there existed a
likelihood of confusion on the part of the public under Section 11 ( 1) of the
Act."
4. The appellant filed a response thereof on 20.05.2022 in respect of both
the objections. So far as the objection under Section 11(1) of the Act is
concerned, the appellant had stated that the cited mark of the NBA Properties
Inc. cannot bar the registration of the appellant mark, as the said NBA
Properties Inc. had consented to registration of the appellant's mark and in

           support, thereof, furnished a copy of the order of consent signed by the NBA in
          the appellant's favour. So far as the objection in respect of [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of
          the Act is concerned, the appellant had submitted that its mark is inherently
          distinctive on account of unique stylization of the word CHICAGO in a
          distinctive bold font depicted in a radial arch. In addition thereto, the appellant
          had also brought to the learned Assistant Registrar's notice that it already
          owned registration for a few other marks consisting solely of names of
          cities/states/geographical locations in the United States of America, depicted in
          stylized manners, covering services in Class 41. Those marks were also
          registered by the very same Trade Marks Registry. Thus, the appellant stated
          that the objection under [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act could not be maintained
          against the appellant.

1.     Subsequently, the show cause notice for hearing dated 10.01.2024 and
         19.02.2024 were issued, where the appellant was heard by the Registry.
   

2.     Consequent upon the hearing, the Trade Mark Registry accepted the
         trade mark application on 24.02.2024. As a result thereof, on 19.07.2024 a
         registration certificate too was issued in favour of the appellant for the device
         mark "CHICAGO", which is the subject matter of the present appeal.
   

3.     After almost about six months, on 06.12.2024, the Registrar issued a
         retraction notice under [Section 57(4)](https://indiankanoon.org/doc/803090/) of the Act, ostensibly under the provisions
         of [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act, though such reference to the exact provision was
         not mentioned.
   

4.     In order to appreciate the controversy, it would be appropriate to extract
         the said retraction notice hereunder:
   

[Emphasis supplied]
9. It is stated that on 23.12.2024, the appellant had filed its detailed reply to
the said retraction notice, giving the references to previously registered marks
in the names of cities and geographical places existing in the United States of
America. That apart, certain more registrations of cities in United States of
America in favour of the appellant itself, in Class 25 and 41 too, were referred

           and specifically mentioned in the said reply. Various third party city names
          registered in Class 41 in India also were referred to by the appellant in its
          aforesaid reply.

1.    After having afforded an opportunity to the appellant to make
         appropriate submissions in respect of the retraction notice, by the impugned
         order dated 22.05.2025, the learned Assistant Registrar rejected the said
         submissions and passed the impugned order retracting the registration
         certificate granted to the appellant. In view thereof, the present appeal was
         preferred.
   

2.    This Court has heard Mr. Urfee Roomi, learned counsel appearing on
         behalf of the appellant as also Ms. Nidhi Raman, learned CGSC for the
         respondent and perused the documents on record.
   

3.    Without entering into the merits of the case, this Court is of the
         considered opinion that the appeal can be allowed on a preliminary issue as to
         whether any order by a quasi judicial authority can include within its ambit
         issues which were not subject matter of the show cause notice which was issued
         to the appellant, to essentially base the reasoning behind such impugned order.
         The law in respect of aforesaid is well-settled and no more res integra. The
         learned Single Judge of the High Court of Gujarat in the case of [Pradeep
         Kumar Thakur vs. State Bank of India & Ors.](https://indiankanoon.org/doc/868342/): 2024 SCC OnLine Guj 905 in
         the context of the aforesaid issue, had examined the [ratio](https://indiankanoon.org/doc/868342/) [laid down in](https://indiankanoon.org/doc/868342/) various
         judgments of the High Court as referred to in para 14 of [the said judgment](https://indiankanoon.org/doc/868342/) ([Janardan Jaishankar Jokharkar vs. State of Gujarat](https://indiankanoon.org/doc/348689/): 2008 SCC OnLine
         Guj 5 and Vijaykumar Muljibhai Jasani vs. Gujarat State Road Transport
         Corporation Rajkot: (1987) IGLH 195). The ratio which can be culled out
         from conjoint reading of the said judgments is that an authority while passing
         an order of adjudication cannot take into account the grounds or circumstances
   
          which are not alleged in the notice or in respect of which the individual is not
         put to notice. It was observed that in the absence of such procedure the purpose
         of issuing notice and inviting response would itself be frustrated apart from it
         constituting violation of principles of natural justice. It is trite that orders
         passed by quasi judicial authorities can clearly not contain extraneous
         considerations which are beyond the show cause notice. As a corollary, it
         mandates that every show cause notice needs to clearly specify the objection
         sought to be responded to in clear terms failure whereof, would disentitle the
         quasi judicial authorities from passing orders on considerations which are
         extraneous to the objections or charges raised in the show cause notice. This
         action, if undertaken, would render such an order liable for interference and
         consequent setting aside.
   

4.    It is clear that while the show cause notice is being issued, the mandate
         of the authority issuing such show cause notice is to put the exact charges
         which are being levied or raised against the noticee. Unless such notice consists
         of the exact charge, it is not expected that the noticee would have any reason to
         give explanations in respect of an issue which was not raised therein. In the
         present case, it is clear that in the notice issued under [Section 57(4)](https://indiankanoon.org/doc/803090/) of the Act,
         dated 06.12.2024, the only objection appears to have been raised is in respect of [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act, though there is no specific mention of the said
         Section therein. However, the language employed is very clear by itself. It
         would be appropriate to extract the said para hereunder:
   

"The impugned mark is devoid of distinctiveness and hence not capable of
distinguishing the goods and services of the applicant from those of others.
Therefore an opportunity to be heard may be given to the party."
14. In order to conclude that the notice under Section 57(4) of the Act
proceeded only under Section 9(1)(a) of the Act, it would be apposite to
juxtapose the language used above in the said notice, with that of the language

           employed in [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) which is as under:

"9. Absolute grounds for refusal of registration.-(1) The Trade marks-

(a) which are devoid of any distinctive character, that is to say, not
capable of distinguishing the goods or services of one person from
those of another person;"
15. As is evident from the above, the language employed in Section 9(1)(a) of the Act and the language used in the notice under Section 57(4) of the Act
issued to the appellant is identical. In other words, undoubtedly, the notice of
retraction under Section 57(4) of the Act, restricts its objections to the
provisions of Section 9(1)(a) of the Act. Thus, the impugned order proceeding
on the presumption that an objection under Section 9(1)(b) of the Act has been
raised against the appellant, is completely erroneous and cannot be
countenanced.

1.    It appears that after the registration was granted on 19.07.2024
         consequent upon the objections under [Sections 11(1)](https://indiankanoon.org/doc/696256/) and [9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act
         having been overcome by the appellant, the only issue again raised by the
         Trade Marks Registry was in respect of [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act. Whether this
         objection was still available to the respondent to initiate the retraction process
         or not, is not being considered by this Court at this stage.
   

2.    However, what is required for consideration is as to whether once the
         Trade Mark Registry issues a notice under [Section 57(4)](https://indiankanoon.org/doc/803090/) of the Act on an
         objection premised on the provisions of [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act, whether the
         order passed by the Registrar dated 22.05.2025 could be based on any ground
         other than [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) of the Act. A perusal of the impugned order clearly
         bring to fore that the learned Registrar has engaged himself with the objections
         in respect of 'geographical location' and predicated his reasoning purely on the
         aforesaid aspect. His conclusion that the said mark "CHICAGO" is not
         distinctive is not premised on the provision of [Section 9(1)(a)](https://indiankanoon.org/doc/1288548/) but Section
   
          9(1)(b) of the Act involving "geographical origin" of the said mark. This
         objection having not been raised in the notice under [Section 57(4)](https://indiankanoon.org/doc/803090/) of the Act,
         could not have been made the subject matter for the basis of the reasoning
         contained in the impugned order.
   

3.    Having regard to the fact that no specific charge or specific objection
         under [Section 9(1)(b)](https://indiankanoon.org/doc/382675/) of the Act was raised in the notice under [Section 57(4)](https://indiankanoon.org/doc/803090/) of
         the Act, the said notice suffers from legal defect and lacuna which cannot be
         covered by any explanation or submissions offered by learned counsel for the
         respondent. Consequently, the impugned order also suffers from same vice.
   

4.    In that view of the matter, without passing any observations or
         comments on the merits of the matter, this Court is of the considered opinion
         that the impugned order having been based on the objections which were not
         put to the appellant in the notice dated 06.12.2024 under [Section 57(4)](https://indiankanoon.org/doc/803090/) of the
         Act, is unsustainable and liable to be set aside.
   

5.    Ergo, the appeal is allowed. The impugned order dated 22.05.2025
         passed by the learned Assistant Registrar of Trade Marks is set aside.
   

6.    However, the authority is at liberty to re-issue any notice, if warranted
         under law, on the clearly set out and specified grounds of objection, which the
         appellant would be entitled to answer.
   

7.    As a consequence, the registration no. 5245655 is restored to its original
         status of having been registered in the Register of Trade Marks.
   

8.    It is informed that the re-entry of the aforesaid registration has already
         been complied with under the interim order dated 27.08.2025.
   

9.    Be that as it may, the aforesaid appeal is allowed in the aforesaid terms
         with no order as to costs.
   

TUSHAR RAO GEDELA, J
MARCH 17, 2026/anj