Once Trademarks are accepted, the Registrar of Trade Marks advertisesthese acceptedtrade mark applications in the Trade Marks Journal after following due process every Monday, 4 or 5 times a month. Such applications can be opposed by any person within four months from the date of publication in the Trade Marks Journal. If someone files an opposition proceeding against a trade mark, the Notice of Opposition is served to the applicant by the Registrar. Following which the applicant has the opportunity to file a Counter-Statement in response to the Notice within a specified period of two months from the date of receiving it.If the Counter-Statement is not filed on time the trademark is deemed to be abandoned.This Counter Statement is served by the Registry to the Opponent. The Opponent then has to file itsEvidence Affidavit under Rule 45 in support of the opposition or furnish a letter of reliance within two months from the date of receipt of the Counter Statement.A copy of this evidence or letter has to be served to the Applicant. In reply to this the Applicant gets an opportunity to file its Evidence Affidavit under Rule 46 within a period of two months or furnish a letter of reliance. Pursuant to which if the Opponent feels the need to, it can file an Additional Affidavit under Rule 47 in support of the Opposition within a period of one month from the date of service of the Rule 46 evidence of the Applicant.
In some cases, the Trademark Registry may schedule a hearing to allow both parties to present their case orally. However, hearings are not always necessary, and many opposition proceedings are resolved based on written submissions alone.After considering the arguments and evidence presented by both parties, the Trademark Registry will issue a decision on the opposition. This decision may involve rejecting the opposition and allowing the trademark application to proceed to registration, partially accepting the opposition (e.g., by restricting the goods or services covered by the trademark), or rejecting the trademark application in its entirety.
The relevant provisions of the Trade Marks Act, 1999 are reproduced as below:
Section 21(4) of the Act:
Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.
Rule 45:Evidence in support of opposition— (1) Within two months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.
Rule 46:Evidence in support of application.— (1) Within two months on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. In case the applicant adduces any evidence or relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies of the same, including exhibits, if any, and shall intimate the Registrar in writing of such delivery.
(2) If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.
The prescribed time of two months to file the opponents’ or the applicants’ evidence or letter of reliance were considered as extendable by the Registrar of Trade Marks under Section 131 of the Act but recently the Hon’ble Delhi High Court in SUN PHARMA LABORATORIES LTD. Vs. DABUR INDIA LTD. & ANR. C.A.(COMM.IPD-TM) 146/2022(order dated 09/02/2024)has held that the prescribed time limit provided under Rule 45 (old Rule 50) is not extendable.
The court held that:
“32.The scheme of the Trade Marks Act, 1999 is clearly to provide strict timelines for the purpose of opposition proceedings. Repeated extensions to delay the process of registration through extension of time limits can hold up grant of trade mark registrations for a substantial period of time. The legislative intent behind the prescribed timelines in the Act and the Rules is to ensure that the registration of trade marks is not unduly delayed and Opponents are not able to delay the registration of marks.
- If extension of time is granted for filing either pleadings or evidence in Opposition proceedings, without an outer deadline, the purpose of the Act and the Rules would be set at naught, inasmuch as the Opponents could indefinitely hold-up grant of registration of marks.
- In the opinion of this Court, use of the term “one month aggregate” in Rule 50 of the 2002 Rules and removal of discretion “unless the Registrar otherwise directs,” in Rule 50(2) of the said Rules clearly points to the time limit prescribed as being mandatory. This position would not be different in the 2017 Rules, inasmuch as even if the one month extension period has been deleted from the said Rules, the discretion with the Registrar also continues to be deleted.
- The sum and substance of the above discussion is that upon the counter statement being received by the Opponent from the Applicant, the two months’ period begins to run. If the evidence is not filed within the two months’ period, the opposition would be deemed to have been abandoned asthe Registrar has no discretion either under Rule 50 of the 2002 Rules or Rule45 of the 2017 Rules or Rules 101 and 109 of the 2002 Rules and the 2017Rules respectively, to extend the time period.
- This interpretation is also in line with the stand of the Trade Marks Registry i.e., to have strict timelines for opposition proceedings so that the Opponents cannot unduly and infinitely delay the processing of trade mark applications towards registration.”
The above said finding also applies to compliances under Rule 46.
Considering the above said ruling of the Hon’ble High Court of Delhi, all stakeholders are required to comply with the prescribed procedure within the prescribed time as provided under Rule 45 and Rule 46 of the Trade Marks Rules, 2017.
Under Rule 47 of the Trade Marks Rules, 2017, the opponents can file evidence in reply to rebut or to deal with the evidence filed by the applicants under Rule 46 and if the opponents do not file its reply under Rule 47, the Registrar of Trade Marks may consider that the averments made and documents relied upon by the applicants in support of their application as admitted by the opponents as the same can not be denied or challenged or commented upon during the hearing in the absence of such pleadings on record.
In THANGAM AND ANOTHER VERSUS NAVAMANI AMMAL, Citation: 2024 LiveLaw (SC) 188, Hon’ble Supreme Court held as follows:
“The requirement of Order VIII Rules 3 and 5 CPC are specific admission and denial of the pleadings in the plaint. The same would necessarily mean dealing with the allegations in the plaint para-wise. In the absence thereof, the respondent can always try to read one line from one paragraph and another from different paragraph in the written statement to make out his case of denial of the allegations in the plaint resulting in utter confusion. In case, the defendant/respondent wishes to take any preliminary objections, the same can be taken in a separate set of paragraphs specifically so as to enable the plaintiff/petitioner to respond to the same in the replication/rejoinder, if need be. The additional pleadings can also be raised in the written statement, if required. These facts specifically stated in a set of paragraphs will always give an opportunity to the plaintiff/petitioner to respond to the same. This in turn will enable the Court to properly comprehend the pleadings of the parties instead of digging the facts from the various paragraphs of the plaint and the written statement.
The matter was further considered by the Supreme Court in Lohia Properties (P) Ltd., Tinsukia, Dibrugarh, Assam Vs. Atmaram Kumar after the 1976 Amendment Act in CPC whereby the existing Rule 5 of Order VIII of the CPC was numbered as sub-rule (1) and three more sub-rules were added dealing with different situations where no written statement is filed. In paras 14 and 15 of the aforesaid judgment, the position of law as stated earlier was reiterated. The same are extracted below:
“What is stated in the above is, what amount to admit a fact on pleading while Rule 3 of Order 8 requires that the defendant must deal specifically with each allegation of fact of which he does not admit the truth. Rule 5 provides that every allegation of fact in the plaint, if not denied in the written statement shall be taken to be admitted by the defendant. What this rule says that any allegation of fact must either be denied specifically or by a necessary implication or there should be at least a statement that the fact is not admitted. If the plea is not taken in that manner, then the allegation shall be taken to be admitted.”
We have made the aforesaid observations as regularly this Court is faced with the situation where there are no specific para-wise reply given in the written statement/counter affidavit filed by the defendant(s)/respondent(s).”
The above said decision of the Hon’ble Supreme Court of India can be applied in opposition proceedings before the Registrar of Trade Marks and therefore, opponents should file their evidence in reply under Rule 47 within the prescribed time if the applicants have filed their evidence in support of their applications under Rule 46 otherwise, the evidence filed by the applicants will be considered as admitted by the opponents.