Trademark Case Analysis: Sun Pharma Laboratories Ltd Vs. Dabur India Ltd. & Anr

Trademark Case Analysis: Sun Pharma Laboratories Ltd Vs. Dabur India Ltd. & Anr. Summary
Sun Pharma Laboratories Limited, the Appellant in this case filed an opposition against Dabur India Limited, the Respondent, for using a similar mark. However, the service of the evidence in support of opposition to the Respondent was delayed by three days from the prescribed duration of two months. Owing to this, the opposition was deemed abandoned by the Registrar under Rule 50 of the Trademark Rules, 2002. Hence, the present appeal to the High Court of Delhi.
The undue delay in the trademark registration process comes with a great cost to the brand value and the expenditure of the Applicant, this judgement is imperative as it accords priority to the fixed time frame as prescribed by the statute. The judgement further answers the various questions about opposition which will be of great assistance in subsequent hearings.
Facts of the Case:
Sun Pharma Laboratories Ltd, the Appellant in the present case filed an Opposition against Respondent No.1 i.e., Dabur India Ltd for using the mark “DABURGLUCORID KP (Label)” in class 5 as Appellant’s mark ‘GLUCORED’ filed under the same class was already registered.
The Opposition was filed within the prescribed time of four months from the date of advertisement as mentioned under Section 21 of the Trademarks Act, 1999 (hereinafter, the 1999 Act), following which the counter statement was filed and served upon the Appellant by the Respondent within the timeframe of two months. At this stage, though the Appellant filed the evidence in support of opposition within the period of two months (which was to expire on 13th August 2007) as under Rule 50(1) of the 2002 Rules, the same was served to the Respondent after a delay of three days from the end of the prescribed time of two months i.e., on date 16th August 2007.  
The chronology of events following this is somewhat confounding as it shows a lack of adherence to the fixed timeline under the 1999 Act on the part of the Appellant, Respondent and the Registry. After the delay of three days, Respondent No.1 sought an extension of one month to file evidence under Rule 51 of the 2002 Rules but did not file anything. Later, the Appellant via letter submitted to the Registry sought for hearing to finally close the evidence. However, there was no communication from any party.
After a lapse of almost nine years, on a subsequent letter to the Registry by the Appellant, the matter was fixed for hearing wherein, the Registry deemed the opposition of the Appellant as abandoned due to it being time barred as the service of the evidence to the Respondent under Rule 50 of the 2002 Rules was not made within the prescribed period of two months. Aggrieved by this order, the Appellant appealed under Section 91 of the 1999 Act. Hence, the present appeal before the High Court of Delhi.
Issues of the Case:
(a) Can the time limit for filing of evidence in support of trademark opposition to be extended beyond the period prescribed in Rule 50 of the 2002 Rules i.e., whether the duration is mandatory or directory?
(b) Whether the opposition stands abandoned due to it being time-barred.
Submissions by the Respective Counsels:
1. Submissions by the Appellant
The counsel of the Appellant pointed out the difference in the language of Rule 53 of the 1959 Rules, Rule 50 of the 2002 Rules and Rule 45 of the 2017 Rules. The counsel submitted that the absence of sentences in Rule 45 of the 2017 Rules, like “further period not exceeding one month” as mentioned under Rule 50 of the 2002 Rules and deletion of “unless the Registrar otherwise directs” as provided under Rule 53(2) of the 1959 Rules lean towards the intention of the legislature to make the two-months timeline for filing evidence in support of opposition as being non-mandatory.
Such deletion rather implies that the period of filing the evidence extends beyond the period of two months.
2. Submissions by the Respondents
The counsel for Respondent 1 submits that the deletion of the clauses so stated by the counsel of the Appellant largely connotes a strong intention on the part of the legislature to make the period as specified under Rule 45 of the 2017 Rules mandatory and not a directory.
Relying on the case of Wyeth Holdings Corp. v. Controller General of Patents (2006 SCC Online Guj620) as cited by the counsel of the Appellant in their argument, the counsel of the Respondent made a different interpretation of the term ‘prescribed’ defined under section 2(1)(s) of the 1999 Act as opposed to the above case wherein timeframe prescribed in the Rules were held non-mandatory. The Respondents noted that ‘prescribed’ would mean ‘prescribed in the Rules made under this Act’. Rules are to be read in consonance with the Act and thus, the period prescribed in the Rules will be taken as the period prescribed in the Act itself. 
3. Submissions by Counsels Assisting the Court:
Various Learned Counsels assisting the court made the following submissions, somewhat contradictory to each other:

The Gujarat High Court in Wyeth Holdings (supra) erred in its judgement by presuming that an application for extension of time under Section 131 of the 1999 Act will also apply to Rule 50(3) of the 2002 Rules. The above statement is contrary to Rule 105 of the 2002 Rules which denies extension if the period is expressly provided in the Act or the Rules. Thus, the provision of form TM-56 under Rule 50(3) of the 2002 Rules which was the requisite form to be filed for seeking a one-month extension negates the provision of Section 131 of the 1999 Act.

One Ld. Counsel submitted that Rules cannot go against the Act i.e., cannot contradict it and cannot deem an opposition to be abandoned, referred to as the “deeming fiction”, unless expressly mentioned in the parent act. Section 21(4) of the 1999 Act merely states that the evidence must be filed within the prescribed period while not deeming the opposition abandoned if not followed. Thus, this being the parent section cannot override Rule 45 of the 2017 Rules wherein the Opposition will be deemed abandoned.

Another Ld. Counsel stated that Rule 45 of the 2017 Rules is directory (time limit not being mandatory) in nature and an extension of one month can be sought under Rule 109 of the 2017 Rules, provided it is done within the period of two months from the date of filing of the Counter Statement.

Brief on the Affidavit by the Registrar Dated 05/12/2023
During the hearing, there were a substantial number of queries raised to the Registrar which were answered in an affidavit dated 05/12/2023.  
(a) Can the evidence in support of the Opposition be filed along with the Notice of Opposition?
The Registrar denied the same stating that registering a trademark goes through multiple stages, each being separate from the other. Filing of Opposition and submission of evidence are distinct events, the same cannot be allowed to be filed together.
(b) If the Opposition has been deemed abandoned, can the grounds of Opposition be still considered a reason for withdrawal of acceptance under Section 19 of the 1999 Act?
The Registrar stated that once deemed abandoned under Rule 45 of the 2017 Rules, the grounds contained in the Notice of Opposition cannot be relied upon for withdrawal under Section 19 of the 1999 Act.
Analysis of the Court on Various Provisions of the Trademarks Act and Rules:
1. Analysis of Section 21 of the 1958 Act and the 1999 Act:
Herein, the findings of the court about the major provisions of Section 21 of the 1958 Act and 1999 Act, as applicable in the present case are analysed below. 
Opposition to Registration

Section 21 of the 1958 Act

Section 21 of the 1999 Act

Notice of Opposition to be filed within 3 months from the date of advertisement of the mark plus a 1-month extension (aggregate) provided an application is made on this behalf.

Notice of Opposition is to be filed within 4 months from the date of advertisement of the mark with no provision of extension.

Counter statement to be filed within 2 months from the receipt by the applicant of the notice of opposition else the application shall be deemed to be abandoned.

Copy of the Counter Statement to be served by the Registrar to the Opponent.

Evidence in support of the Opposition and Counter statement is to be submitted in the prescribed manner and prescribed time to the Registrar who shall later accord a hearing opportunity to both parties if they so desire.‘Prescribed’ means as provided under the 1959 Rules.

Evidence in support of the Opposition and Counter statement is to be submitted in the prescribed manner and time to the Registrar who shall later accord a hearing opportunity to both parties, if they so desire. ‘Prescribed’ means as provided under the 2002 Rules. Now, after the amendment, as prescribed under the 2017 Rules.

2. Analysis of the Rules Dealing with Evidence and the Prescribed Time Under the 1959, 2002 and 2017 Rules:
Herein, the major provisions of Rule 53 of the 1959 Rules, Rule 50 of the 2002 Rules and Rule 45 of the 2017 Rules are analysed to ascertain the intention of the legislature concerning the power of the Registrar being mandatory or directory, following the amendments.

Rule 53 of 1959 Rules

Rule 50 of 2002 Rules

Rule 45 of 2017 Rules

The prescribed time for filing the evidence in support of opposition is 2 months from the service of a copy of the counter statement.

The prescribed time for filing the evidence in support of opposition is 2 months plus a 1-month aggregate extension allowed on request to the Registrar, from the service of a copy of the counter statement.

The prescribed time for filing the evidence in support of opposition is 2 months from the service of a copy of the counter statement.

The Opponent can either file the evidence by way of an affidavit or intimate the Registrar and the applicant that he does not wish to adduce any evidence.

The Opponent can either file the evidence by way of affidavit or intimate the Registrar and the applicant that he does not wish to adduce any evidence

Copies of such evidence are to be given to the applicant by the Opponent.

Copies of such evidence are to be given to the applicant by the Opponent which should be informed to the Registrar as well.

Copies of such evidence including exhibits to be given to the applicant by the Opponent which should be informed to the Registrar as well.

If no action, as stated above, is taken by the Opponent within the prescribed time, the opposition will be deemed to have been abandoned unless the Registrar directs otherwise.

If no action, as stated above, is taken by the Opponent within the prescribed time, the opposition will be deemed to have been abandoned. This rule is absent on the discretionary power of the Registrar to allow the filing of evidence even after the lapse of the prescribed time.

If no action, as stated above, is taken by the Opponent within the prescribed time, the opposition will be deemed to have been abandoned. This rule is also absent on the discretionary power of the Registrar to allow the filing of evidence even after the lapse of the prescribed time.

This rule provides for no extension of time.

Form TM-56 is to be filed within the expiry of 2 months to seek an extension of 1 month. However, the opposition will be deemed abandoned if such a request for extension is not made within the period of 2 months.

This rule provides for no extension of time.

The Court here stated that the 2-month period for filing evidence commenced when the counter statement was served on the Opponent by the Registrar.

The Court here stated that service of the counter statement would have to be made by the Applicant and not the Registrar, the duration of 2 months would start from the service thereof.

Further, the court opined that Rule 106 of the 1959 Rules, Rule 105 of the 2002 Rules and Rule 109 of the 2017 Rules respectively, is clear on the extension of time being allowed only in cases where no specific period is provided in the Rules.
Judgment of the Court 
To address the first issue at hand, the court accentuated the language used by the legislation for Rule 53 of the 1959 Rules, Rule 50 of the 2002 Rules and Rule 45 of the 2017 Rules to ascertain the power of the Registrar. Rule 50 and Rule 45 of the 2002 and the 2017 Rules respectively absent the discretionary power of the Registrar to allow the filing of evidence even after the lapse of the prescribed time as opposed to Rule 53. Further, the one-month extension of the time so provided under Rule 50 is absent under Rule 45 of the 2017 Rules. This clear shift of limiting the time for filing the evidence in support of opposition and curtailing the discretionary power of the Registrar marks the intention of the legislature to make the time limit prescribed under Rule 50 as being mandatory and not a directory. The Opposition will be deemed abandoned under Rule 50 of the 2002 Rules if the evidence is not submitted within the prescribed time. Further extension cannot be granted under Rules 101 and 109 of the 2002 Rules and the 2017 Rules respectively.
The court via this judgement is stressing the need to follow a strict adherence to the timelines so prescribed under the 1999 Act read with the current 2017 Rules. Such adherence will ensure the timely processing of trademark applications through each stage and will protect the Applicants against unethical delay of their application.
To address the second issue of admissibility of the present opposition, the court differed from the order of the Registrar and reinstated the Opposition to be decided by the Registrar on merits. The court declared that the Opposition was filed with the Registrar within the prescribed period of two months and a mere delay of one day on sending the copy thereof to the Applicant cannot render the Opposition as “deemed abandoned”.
Conclusion
The judgement is indeed commended for its acknowledgement of the strict adherence to the period so prescribed under the statute to avoid indefinite delay of trademark applications. However, the interpretation that the Applicant must serve the counter statement onto the Opponent under Rule 50 and Rule 45 of the 2002 and 2017 Rules respectively is contradictory to the very provision of Section 21(3) of the 1999 Act which states clearly that-
“If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition”.
Rule 50 and Rule 45 of the 2002 and 2017 Rules respectively nowhere mentions by whom the service of counter statement is to be made. Whereas Rule 49 and 44 of the 2002 and the 2017 Rules respectively mention, “A copy of the counter statement shall be ordinarily served by the Registrar to the opponent within two months from the date of the receipt of the same’.
Thus, Section 21(3) of the 1999 Act read in consonance with Rules 49 and 44 of the 2002 and the 2017 Rules respectively, clearly mentions the service of counter statement by the Registrar onto the Opponents. If the service of the same is done by the Applicant onto the Opponent as interpreted in this judgement, the said Rule 50 and 45 will be ultra vires to the parent statute i.e., Section 21(1) of the 1999 Act.
Frequently Asked Questions:
Q1. What is the time limit for filing trademark opposition?
Ans. The duration for filing trademark opposition is four months from the date of advertisement.
Q2. What is the current rule governing the Trademarks Act, of 1999?
Ans. The Trademarks Rule, 2017 is the current rule governing the 1999 Act.
Q3. What rules govern the submission of evidence in an opposition case under the 2017 Rules?
Ans. Rule 45- dealing with evidence in support of opposition
         Rule 46- dealing with evidence in support of the application
         Rule 47- dealing with evidence in reply by an opponent
         Rule 48- No further evidence will be submitted unless permitted by the Registrar  
Q4. What will happen if the Opponent does not give any evidence under Rule 45 of the 2017 Rules?
Ans. If the Opponent does not give any evidence under Rule 45 of the 2017 Rules within the set period of two months, he should inform the Registrar and the Applicant in writing that he does not wish to adduce any evidence and wishes to rely on the grounds of the opposition. If no action is taken by him, the opposition will deemed abandoned.
Q5. When can an extension of time be allowed under Rule 109 of the 2017 Rules?
Ans. An application for an extension of time will be made only in cases where no specific period is provided in the Rules.

Summary

Sun Pharma Laboratories Limited, the Appellant in this case filed an opposition against Dabur India Limited, the Respondent, for using a similar mark. However, the service of the evidence in support of opposition to the Respondent was delayed by three days from the prescribed duration of two months. Owing to this, the opposition was deemed abandoned by the Registrar under Rule 50 of the Trademark Rules, 2002. Hence, the present appeal to the High Court of Delhi.

The undue delay in the trademark registration process comes with a great cost to the brand value and the expenditure of the Applicant, this judgement is imperative as it accords priority to the fixed time frame as prescribed by the statute. The judgement further answers the various questions about opposition which will be of great assistance in subsequent hearings.

Facts of the Case:

Sun Pharma Laboratories Ltd, the Appellant in the present case filed an Opposition against Respondent No.1 i.e., Dabur India Ltd for using the mark “DABURGLUCORID KP (Label)” in class 5 as Appellant’s mark ‘GLUCORED’ filed under the same class was already registered.

The Opposition was filed within the prescribed time of four months from the date of advertisement as mentioned under Section 21 of the Trademarks Act, 1999 (hereinafter, the 1999 Act), following which the counter statement was filed and served upon the Appellant by the Respondent within the timeframe of two months. At this stage, though the Appellant filed the evidence in support of opposition within the period of two months (which was to expire on 13^th August 2007) as under Rule 50(1) of the 2002 Rules, the same was served to the Respondent after a delay of three days from the end of the prescribed time of two months i.e., on date 16^th August 2007.

The chronology of events following this is somewhat confounding as it shows a lack of adherence to the fixed timeline under the 1999 Act on the part of the Appellant, Respondent and the Registry. After the delay of three days, Respondent No.1 sought an extension of one month to file evidence under Rule 51 of the 2002 Rules but did not file anything. Later, the Appellant via letter submitted to the Registry sought for hearing to finally close the evidence. However, there was no communication from any party.

After a lapse of almost nine years, on a subsequent letter to the Registry by the Appellant, the matter was fixed for hearing wherein, the Registry deemed the opposition of the Appellant as abandoned due to it being time barred as the service of the evidence to the Respondent under Rule 50 of the 2002 Rules was not made within the prescribed period of two months. Aggrieved by this order, the Appellant appealed under Section 91 of the 1999 Act. Hence, the present appeal before the High Court of Delhi.

Issues of the Case:

(a) Can the time limit for filing of evidence in support of trademark opposition to be extended beyond the period prescribed in Rule 50 of the 2002 Rules i.e., whether the duration is mandatory or directory?

(b) Whether the opposition stands abandoned due to it being time-barred.

Submissions by the Respective Counsels:

1. Submissions by the Appellant

The counsel of the Appellant pointed out the difference in the language of Rule 53 of the 1959 Rules, Rule 50 of the 2002 Rules and Rule 45 of the 2017 Rules. The counsel submitted that the absence of sentences in Rule 45 of the 2017 Rules, like “further period not exceeding one month” as mentioned under Rule 50 of the 2002 Rules and deletion of “unless the Registrar otherwise directs” as provided under Rule 53(2) of the 1959 Rules lean towards the intention of the legislature to make the two-months timeline for filing evidence in support of opposition as being non-mandatory.

Such deletion rather implies that the period of filing the evidence extends beyond the period of two months.

2. Submissions by the Respondents

The counsel for Respondent 1 submits that the deletion of the clauses so stated by the counsel of the Appellant largely connotes a strong intention on the part of the legislature to make the period as specified under Rule 45 of the 2017 Rules mandatory and not a directory.

Relying on the case of Wyeth Holdings Corp. v. Controller General of Patents (2006 SCC Online Guj620) as cited by the counsel of the Appellant in their argument, the counsel of the Respondent made a different interpretation of the term ‘prescribed’ defined under section 2(1)(s) of the 1999 Act as opposed to the above case wherein timeframe prescribed in the Rules were held non-mandatory. The Respondents noted that ‘prescribed’ would mean ‘prescribed in the Rules made under this Act’. Rules are to be read in consonance with the Act and thus, the period prescribed in the Rules will be taken as the period prescribed in the Act itself.

3. Submissions by Counsels Assisting the Court:

Various Learned Counsels assisting the court made the following submissions, somewhat contradictory to each other:

The Gujarat High Court in Wyeth Holdings (supra) erred in its judgement by presuming that an application for extension of time under Section 131 of the 1999 Act will also apply to Rule 50(3) of the 2002 Rules. The above statement is contrary to Rule 105 of the 2002 Rules which denies extension if the period is expressly provided in the Act or the Rules. Thus, the provision of form TM-56 under Rule 50(3) of the 2002 Rules which was the requisite form to be filed for seeking a one-month extension negates the provision of Section 131 of the 1999 Act.
One Ld. Counsel submitted that Rules cannot go against the Act i.e., cannot contradict it and cannot deem an opposition to be abandoned, referred to as the “deeming fiction”, unless expressly mentioned in the parent act. Section 21(4) of the 1999 Act merely states that the evidence must be filed within the prescribed period while not deeming the opposition abandoned if not followed. Thus, this being the parent section cannot override Rule 45 of the 2017 Rules wherein the Opposition will be deemed abandoned.

Another Ld. Counsel stated that Rule 45 of the 2017 Rules is directory (time limit not being mandatory) in nature and an extension of one month can be sought under Rule 109 of the 2017 Rules, provided it is done within the period of two months from the date of filing of the Counter Statement.

Brief on the Affidavit by the Registrar Dated 05/12/2023

During the hearing, there were a substantial number of queries raised to the Registrar which were answered in an affidavit dated 05/12/2023.

(a) Can the evidence in support of the Opposition be filed along with the Notice of Opposition?

The Registrar denied the same stating that registering a trademark goes through multiple stages, each being separate from the other. Filing of Opposition and submission of evidence are distinct events, the same cannot be allowed to be filed together.

(b) If the Opposition has been deemed abandoned, can the grounds of Opposition be still considered a reason for withdrawal of acceptance under Section 19 of the 1999 Act?

The Registrar stated that once deemed abandoned under Rule 45 of the 2017 Rules, the grounds contained in the Notice of Opposition cannot be relied upon for withdrawal under Section 19 of the 1999 Act.

Analysis of the Court on Various Provisions of the Trademarks Act and Rules:

1. Analysis of Section 21 of the 1958 Act and the 1999 Act:

Herein, the findings of the court about the major provisions of Section 21 of the 1958 Act and 1999 Act, as applicable in the present case are analysed below.

Opposition to Registration

Section 21 of the 1958 Act	Section 21 of the 1999 Act
Notice of Opposition to be filed within 3 months from the date of advertisement of the mark plus a 1-month extension (aggregate) provided an application is made on this behalf.	Notice of Opposition is to be filed within 4 months from the date of advertisement of the mark with no provision of extension.
Counter statement to be filed within 2 months from the receipt by the applicant of the notice of opposition else the application shall be deemed to be abandoned.	Counter statement to be filed within 2 months from the receipt by the applicant of the notice of opposition else the application shall be deemed to be abandoned.
Copy of the Counter Statement to be served by the Registrar to the Opponent.	Copy of the Counter Statement to be served by the Registrar to the Opponent.
Evidence in support of the Opposition and Counter statement is to be submitted in the prescribed manner and prescribed time to the Registrar who shall later accord a hearing opportunity to both parties if they so desire.‘Prescribed’ means as provided under the 1959 Rules.	Evidence in support of the Opposition and Counter statement is to be submitted in the prescribed manner and time to the Registrar who shall later accord a hearing opportunity to both parties, if they so desire. ‘Prescribed’ means as provided under the 2002 Rules. Now, after the amendment, as prescribed under the 2017 Rules.

2. Analysis of the Rules Dealing with Evidence and the Prescribed Time Under the 1959, 2002 and 2017 Rules:

Herein, the major provisions of Rule 53 of the 1959 Rules, Rule 50 of the 2002 Rules and Rule 45 of the 2017 Rules are analysed to ascertain the intention of the legislature concerning the power of the Registrar being mandatory or directory, following the amendments.

Rule 53 of 1959 Rules	Rule 50 of 2002 Rules	Rule 45 of 2017 Rules
The prescribed time for filing the evidence in support of opposition is 2 months from the service of a copy of the counter statement.	The prescribed time for filing the evidence in support of opposition is 2 months plus a 1-month aggregate extension allowed on request to the Registrar, from the service of a copy of the counter statement.	The prescribed time for filing the evidence in support of opposition is 2 months from the service of a copy of the counter statement.
The Opponent can either file the evidence by way of an affidavit or intimate the Registrar and the applicant that he does not wish to adduce any evidence.	The Opponent can either file the evidence by way of an affidavit or intimate the Registrar and the applicant that he does not wish to adduce any evidence.	The Opponent can either file the evidence by way of affidavit or intimate the Registrar and the applicant that he does not wish to adduce any evidence
Copies of such evidence are to be given to the applicant by the Opponent.	Copies of such evidence are to be given to the applicant by the Opponent which should be informed to the Registrar as well.	Copies of such evidence including exhibits to be given to the applicant by the Opponent which should be informed to the Registrar as well.
If no action, as stated above, is taken by the Opponent within the prescribed time, the opposition will be deemed to have been abandoned unless the Registrar directs otherwise.	If no action, as stated above, is taken by the Opponent within the prescribed time, the opposition will be deemed to have been abandoned. This rule is absent on the discretionary power of the Registrar to allow the filing of evidence even after the lapse of the prescribed time.	If no action, as stated above, is taken by the Opponent within the prescribed time, the opposition will be deemed to have been abandoned. This rule is also absent on the discretionary power of the Registrar to allow the filing of evidence even after the lapse of the prescribed time.
This rule provides for no extension of time.	Form TM-56 is to be filed within the expiry of 2 months to seek an extension of 1 month. However, the opposition will be deemed abandoned if such a request for extension is not made within the period of 2 months.	This rule provides for no extension of time.
The Court here stated that the 2-month period for filing evidence commenced when the counter statement was served on the Opponent by the Registrar.	The Court here stated that service of the counter statement would have to be made by the Applicant and not the Registrar, the duration of 2 months would start from the service thereof.	The Court here stated that service of the counter statement would have to be made by the Applicant and not the Registrar, the duration of 2 months would start from the service thereof.

Judgment of the Court

To address the first issue at hand, the court accentuated the language used by the legislation for Rule 53 of the 1959 Rules, Rule 50 of the 2002 Rules and Rule 45 of the 2017 Rules to ascertain the power of the Registrar. Rule 50 and Rule 45 of the 2002 and the 2017 Rules respectively absent the discretionary power of the Registrar to allow the filing of evidence even after the lapse of the prescribed time as opposed to Rule 53. Further, the one-month extension of the time so provided under Rule 50 is absent under Rule 45 of the 2017 Rules. This clear shift of limiting the time for filing the evidence in support of opposition and curtailing the discretionary power of the Registrar marks the intention of the legislature to make the time limit prescribed under Rule 50 as being mandatory and not a directory. The Opposition will be deemed abandoned under Rule 50 of the 2002 Rules if the evidence is not submitted within the prescribed time. Further extension cannot be granted under Rules 101 and 109 of the 2002 Rules and the 2017 Rules respectively.

The court via this judgement is stressing the need to follow a strict adherence to the timelines so prescribed under the 1999 Act read with the current 2017 Rules. Such adherence will ensure the timely processing of trademark applications through each stage and will protect the Applicants against unethical delay of their application.

To address the second issue of admissibility of the present opposition, the court differed from the order of the Registrar and reinstated the Opposition to be decided by the Registrar on merits. The court declared that the Opposition was filed with the Registrar within the prescribed period of two months and a mere delay of one day on sending the copy thereof to the Applicant cannot render the Opposition as “deemed abandoned”.

Conclusion

The judgement is indeed commended for its acknowledgement of the strict adherence to the period so prescribed under the statute to avoid indefinite delay of trademark applications. However, the interpretation that the Applicant must serve the counter statement onto the Opponent under Rule 50 and Rule 45 of the 2002 and 2017 Rules respectively is contradictory to the very provision of Section 21(3) of the 1999 Act which states clearly that-

“If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition”.

Rule 50 and Rule 45 of the 2002 and 2017 Rules respectively nowhere mentions by whom the service of counter statement is to be made. Whereas Rule 49 and 44 of the 2002 and the 2017 Rules respectively mention, “A copy of the counter statement shall be ordinarily served by the Registrar to the opponent within two months from the date of the receipt of the same’.

Thus, Section 21(3) of the 1999 Act read in consonance with Rules 49 and 44 of the 2002 and the 2017 Rules respectively, clearly mentions the service of counter statement by the Registrar onto the Opponents. If the service of the same is done by the Applicant onto the Opponent as interpreted in this judgement, the said Rule 50 and 45 will be ultra vires to the parent statute i.e., Section 21(1) of the 1999 Act.

Frequently Asked Questions:

Q1. What is the time limit for filing trademark opposition?

Ans. The duration for filing trademark opposition is four months from the date of advertisement.

Q2. What is the current rule governing the Trademarks Act, of 1999?

Ans. The Trademarks Rule, 2017 is the current rule governing the 1999 Act.

Q3. What rules govern the submission of evidence in an opposition case under the 2017 Rules?

Ans. Rule 45- dealing with evidence in support of opposition

Rule 46- dealing with evidence in support of the application

Rule 47- dealing with evidence in reply by an opponent

Rule 48- No further evidence will be submitted unless permitted by the Registrar

Q4. What will happen if the Opponent does not give any evidence under Rule 45 of the 2017 Rules?

Ans. If the Opponent does not give any evidence under Rule 45 of the 2017 Rules within the set period of two months, he should inform the Registrar and the Applicant in writing that he does not wish to adduce any evidence and wishes to rely on the grounds of the opposition. If no action is taken by him, the opposition will deemed abandoned.

Q5. When can an extension of time be allowed under Rule 109 of the 2017 Rules?

Ans. An application for an extension of time will be made only in cases where no specific period is provided in the Rules.