Delhi High Court Revives Street One's Opposition To Registration Of the 'Street 9' Trademark

The Delhi High Court has overturned a Trade Marks Registry order that had rejected an objection filed by German fashion label Street One against the registration of the mark “Street 9.” The court has sent the matter back to the registry for a fresh hearing.

In a judgment dated November 28, 2025, Justice Tejas Karia held that the Registrar failed to correctly apply the law on “earlier trademarks” and the test for likelihood of confusion under Section 11(1) of the Trade Marks Act, 1999. This provision prohibits the registration of a mark if it is identical or similar to an earlier trademark in a way that could confuse consumers.

Street One had opposed the “Street 9” application, which was filed in 2020 with a claim of use since 2014, for clothing, footwear and related goods. It argued that “Street 9” was deceptively similar to its own registered mark “STREET ONE,” which it adopted in 1983 and registered in India in several classes beginning in 2003.

The Registrar dismissed the opposition after finding that Street One had not proved use of its registered mark from 2003, while the applicant for “Street 9” had filed evidence of use since 2014. On this basis, the Registrar concluded that Street One had failed to establish prior use or goodwill.

Street One challenged this reasoning and argued that the Registrar had misunderstood the statutory framework. It submitted that Section 11 requires the Registrar to consider whether the opponent holds an “earlier trademark,” which depends on the dates of registration or filing. Street One said that because its registrations pre-dated the “Street 9” application, it qualified as an earlier trademark and did not need to prove prior use.

The court agreed and held that the Registrar had applied an incorrect test. Justice Karia emphasised that determining whether a mark is an earlier trademark depends on filing dates and not on evidence of actual use. Since Street One's registrations were older than the 2020 application for “Street 9,” they clearly met the statutory definition of an earlier trademark.

It referred to the Supreme Court's ruling in American Home Products Corporation v. Mac Laboratories and to the Delhi High Court's decision in Sun Pharma Laboratories Ltd. v. Finecure Pharmaceuticals Ltd. It reiterated that a registered proprietor gains valuable statutory rights upon registration, including a presumption of validity. It added that the likelihood of confusion analysis under Section 11 does not require the opponent to show actual use of the mark in India.

The court observed, “If for filing opposition, the opponent is required to establish prior use, Section 11 (1) would be rendered otiose as held in case of Sun Pharma for the marks that are registered or the marks of which the registration has been sought on 'proposed to be used' basis. The registration of the Trade Mark is a prima facie evidence of its validity and the registered proprietor of the Trade Mark acquires valuable rights on account of the registration as held in American Home Products.”