In an appeal filed by Sun Pharma in Sun Pharma Laboratories Ltd. vs Dabur India Ltd. & Anr. -C.A.(COMM.IPD-TM) 146/2022, the Delhi High Court held that in a trademark opposition, the trademark registrar cannot extend the deadline for filing evidence at their discretion. The Court held that the law requires a specific and non-extendible timeframe for this purpose.
In this matter, Sun Pharma appealed to the Delhi High Court after the Registrar, vide its order dated July 21, 2022, dismissed its opposition against Dabur due to delayed service of evidence. Sun Pharma submitted evidence to the trademark registry within the two-month limit, but service on Dabur was delayed by one day. During the hearing before the Registrar of Trademark, Dabur argued that Sun Pharma’s evidence was barred by time, potentially leading to the opposition being deemed abandoned under Rule 50 of the 2002 Trade Mark Rules. The main issue before the Court was whether the period prescribed under the Trademark rules is mandatory or whether the Registrar enjoys discretionary powers to extend it.
Section 21 of the Trade Marks Act, 1999, along with the earlier Trade and Merchandise Marks Act 1958, requires that any evidence relied upon by both the opponent as well as the applicant may be submitted to the Registrar of Trademarks in the specified manner and within the specified timeframe. These timeframe/deadlines are outlined in the 1959 Trade Marks Rules (for the 1958 Act) and the 2017 Rules (for the 1999 Act), which replaced the 2002 Rules.
Under Rule 53 of the 1959 Rules, an opponent had to submit evidence within two months of receiving the counter statement; failure to do so led to the opposition being considered abandoned. Under Rule 50 of the 2002 Rules, the position was that apart from a two-month period, the Registrar could grant an extension of one month upon request.
Rule 45 of the current 2017 Rules eliminates this extension of one month. Therefore, under the 1999 Act and 2017 Rules, evidence must be filed within two months of receiving the counter statement. The Court stated that “the position in the 2017 Rules becomes much more clear towards the elimination of delays – i.e., the feature of the 2002 Rules with regard to the service of the counter statement by the Applicant has been retained, the discretion vested with the Registrar has been taken away, and the period of extra one month has also been deleted.”
The Court also pointed out that Rules 106 of the 1959 Rules, 105 of the 2002 Rules, and 109 of the 2017 Rules, respectively, make it clear that an application for an extension of time can be filed before the Registrar in respect of such time periods for which no specific provision has been made in the Rules.
Rule 53(2) of the 1959 Rules stated that if an opponent did not take action within the specified time, their opposition would be deemed abandoned unless the Registrar decided otherwise. Rule 53 of 1959 Rules lays down – “(2) If an opponent takes no action under sub-rule (1) within the time therein prescribed, he shall unless the Registrar otherwise directs, be deemed to have abandoned his opposition”. The Court viewed the phrase “unless the Registrar otherwise directs” as giving flexibility to the above rule. However, this phrase was removed from the corresponding provisions in the 2002 and 2017 Rules, indicating that the Registrar’s authority to extend the time for filing evidence has been eliminated under the current rules.
In the past, the Delhi High Court’s interpretation of Rule 50 of the 2002 Rules in Sunrider Vs. Hindustan Lever (2007 SCC Online Del 1018) emphasised the mandatory nature of the deadline extension, citing the use of the term “aggregate” in Rule 50 (1) and the absence of the phrase “unless the Registrar otherwise directs” seen in earlier rules. It stated, “It is obvious that the Legislature wanted to make the provision mandatory and did not want to give any discretion to the Registrar in this connection. It is apparent that the delays be cut down in deciding the application for registration of a trade mark”.
Similarly, in Mahesh Gupta Vs. Registrar of Trademarks (2023 SCC Online Del 1324), the Delhi High Court ruled that Rule 50(1) of 2002 Rules allowed the Registrar to extend the evidence filing period for only up to one month, as indicated by the phrase “not exceeding one month.” The judgement stated that “the learned Registrar could not, therefore, grant extension of more than one month beyond the period of two months from the date of service, on the opponent opposing the registration of a mark, of a copy of the counter-statement”. Additionally, Rule 105, which addresses discretionary extensions, was deemed irrelevant because it applies only when the statutory framework is silent on periods, which was not the case in this instance.
As per the Court, the term “one month aggregate” used in Rule 50 of the 2002 Rules, along with the removal of discretion “unless the Registrar otherwise directs”, stated in Rule 50(2), indicates that the prescribed time limit is mandatory. The shift from the 1959 Rules to the 2002 Rules and then to the 2017 Rules indicates that the discretion vested with the Registrar has been removed, and the time allotted for filing evidence has been shortened.
The Court also held that there was merely a delay in sending the copy of evidence to the Applicant (Dabur), and therefore, an opposition cannot be abandoned merely because of such delay in service of evidence (which was otherwise filed at the registry in a timely manner).
The Court, therefore, ruled that the time period for filing evidence is fixed and non-extendible, and this decision emphasises that the purpose of the statute is to ensure that strict timelines are adhered to and that repeated extensions do not stall the trademark registration process.
Authors: Manisha Singh and Gautam Kumar
First Published by: Lexology here