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February 16, 2024

Court Case Bulletin (CCB): Filing Evidence Within Prescribed Period In A Trademark Opposition Proceeding Is Mandatory

Anurathna Mathivanan

In the matter of Sun Pharma Laboratories Ltd. v. Dabur India Ltd. & Anr. [2024:DHC:946], Single Judge [Pratibha M. Singh, J.] of the High Court of Delhi, vide decision dated February 9, 2024, held that the Trade Marks Registrar has no discretionary powers under Rule 50 of the Trade Marks Rules, 2002 (hereinafter, ‘2002 Rules’) and Rule 45 of the Trade Marks Rules, 2017 (hereinafter, ‘2017 Rules’) to extend the time period for filing evidence in an opposition proceeding at the TM Registry.  

Section 21 the Trade Marks Act, 1999 states that “(4) Any evidence upon which the opponent and the applicant may rely shall be submittedwithin the prescribed time to the Registrar….” The corresponding Rule 45 of the 2017 Rules require that the Opponent file evidence by way of affidavit “within two months from the service of the copy of the counterstatement…”. Likewise, the corresponding Rule 50 of the erstwhile 2002 Rules require that the Opponent file its affidavit of evidence “within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter”. The issue that arises is, whether the time-period as prescribed under the Trade Marks rules mandatory or the Registrar enjoys discretionary powers to extend the time-period.

The Appellant filed the instant appeal against an adverse order of the Registrar of Trade Marks deeming an opposition filed by the Appellant as abandoned due to delay in service of evidence upon the Applicant. The Appellant, while seeking extension of time for service of evidence, contended that the two-month period for the filing and service of evidence is not a mandatory period. The Respondent contended that the deletion of the clause “unless the Registrar otherwise directs” (which was present in Rule 53 (2) of the Trade Marks Rules, 1959) from the 2002 Rules and the 2017 Rules would mean that the discretion of the Registrar has been taken away.

The Court, while holding that an opposition cannot be ordered as abandoned owing only to delay in service of evidence (which was otherwise filed at TM Registry in time), also held that the time-period prescribed under 2017 and 2002 Rules for filing evidence is strict and mandatory. The Court, while comparing the corresponding provisions under the 1959 Rules, 2002 Rules and 2017 Rules, observed that  “…the discretion, which was vested with the Registrar, has been taken away and the time period for filing of evidence has also been reduced…The above transition and evolution of the Rules points to a clear intention to ensure that strict timelines are prescribed for conclusion of pleadings/evidence in opposition proceedings… extensions cannot be granted, when the time periods are specifically prescribed in the Rules”

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