Citation- 2024 SCC OnLine Del 813
| PARTICULARS | APPELLANT/OPPONENT | RESPONDENTS/APPLICANT |
| PARTY NAME | SUN PHARMA LABORATORIES LTD | DABUR INDIA LTD. & ANR |
| CORAM | JUSTICE PRATHIBA M. SINGH | |
| CONFLICTING MARKS | GLUCORED Application No.- 681897 Filing Location- Mumbai | DABUR GLUCORID KP (LABEL) Application No.- 1309040 Filing location – CHANDIGARH |
| PUBLISHED IN JOURNAL NO/ DATE OF PUBLICATION | 1334-1 15/09/2005 | 1328-4 28/02/2005 |
| ISSUE | Whether the time limit for filing of evidence in support of Opposition to Trade Mark can be extended beyond the period prescribed in Rule 50 of the 2002 Rules? | |
| HELD | If the evidence is not filed within the two months’ period, the opposition would be deemed to have been abandoned | |
INTRODUCTION
This Appeal is challenging the order passed by the Trade Mark Registry dated 21.07.2022 which dismisses the Opposition filed by the Appellant against the Trade Mark Application 1309040 of the Respondent No. 1 for the mark ‘DABOURGLUCORDID KP (LABEL)”
IMPUGNED ORDER
The extension of time sought by the Appellant for taking the evidence on record under Rule 50(3) of the Trade Marks Rules, 2002, (hereinafter, ‘2002 Rules’), after delay in service of evidence to the Respondent No.1, was rejected by the Registrar of Trade Marks. In effect the Opposition was deemed to have been abandoned under Rule 50(2) of the 2002 Rules.
ISSUE
Whether the time limit for filing of evidence in support of Opposition to Trade Mark can be extended beyond the period prescribed in Rule 50 of the 2002 Rules?
PROCEDURAL HISTORY – CAUSE OF ACTION
- The CS was served on the Opponent/ Appellant on 12.06.2007.
- Evidence in Opposition was filed by the Opponent with the Trade Marks Registry on 10.08.2007 (limitation of 2 months was to expire on 13.08.2007).
- Before filing the hard copy of the evidence in support of the opposition in the Trade Marks Registry, a copy of the same was not served inadvertently on the Respondent No.1 within the prescribed time by the Appellant.
- The same was only served via courier on 14.08.2007 and received by the Applicant on 16.08.2007 (delay of 3 days).
- The Respondent No.1 then sought an extension of one month on 16.10.2007 to file its evidence
- The Appellant then wrote a letter dated 30.01.2008 to the Registrar of Trade Marks that despite service of Evidence under Rule 50 of the 2002 Rules, the Evidence under Rule 51 of the 2002 Rules was not filed by Respondent No.1. Subsequently, the Appellant submitted a letter dated 15.02.2008 to the Registrar of Trade Marks to close the Evidence and put the matter for hearing. However, there was no communication from any party.
- On 14.08.2017, after nine years, the Appellant again wrote a letter to the Registrar of Trade Marks informing the Registry of the status of the case- i.e., pendency of Opposition. The Appellant in the said letter requested the Registrar of Trade Marks to close the evidence and fix the matter for hearing.
- During the rehearing the Respondent No. 1 took an objection that Rule 50 Evidence as per the 2002 Rules was filed belatedly, as it was sent to the Respondent No.1 one month late.
- The Registrar vide order dated 21.07.2022 held that the opponent shall be deemed to have been abandoned his opposition.
CONTENTIONS OF THE APPELLANT/OPPONENT
The counsel for the Appellant submitted that the intention of the legislature while deleting “further period not exceeding one month” of the Rule 50 of 2002 Rules, in clause 45 of 2017 Rules and the absence of “unless the Registrar otherwise directs” which was there in Rule 53(2) of the 1959 Rules, was not to make the two month period for filing of Evidence as a mandatory period.
The counsel contented that the deletion of the specific clause means that the discretion of the registrar to extend the period is not curtailed to one month and it can further go beyond the period of one month if a case is made out.
CONTENTIONS OF RESPONDENT / APPLICANT
The Counsel for the Respondent No.1 stated that the aforesaid deletion of the clause in Rule 45 of the 2017 Rules take out the discretion of the Registrar for extension.
The Counsel stated that the Rules cannot go beyond the statue or cannot contradict the statue.
Section 21(2) provides for time prescription of filing of evidence and no deemed fiction is contained in it.
QUERIES ANSWERED BY THE TRADE MARKS REGISTRY
Query (i) – Whether it would be permissible for the Opponent to file the evidence along with the notice of opposition itself, so as to avoid ‘deemed abandonment’.
The Act envisages the following steps in respect of an Application for a Trademark:
- The Applicant makes an application for a Trademark.
- Such and Application is advertised by the Registry.
- A person who wishes to oppose the same files his opposition.
- A counter-statement is filed to the said opposition.
- Upon receipt of the counterstatement, evidence m support of the opposition is filed. ….
The filing of evidence is a distinct event and cannot be filed along with the Opposition
Query (ii) – Even if the notice of opposition is treated as ‘abandoned’ under Rule 45, whether the grounds contained in the notice of opposition can be considered for the purposes of registration of the mark in terms of Section 19 of the Trade Marks Act, 1999 with the overall object of maintaining purity of the Register.
Rule 45(2) states as under:
45. Evidence in support of opposition. – (1) ……………………. . (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.” …….
The grounds contained in the notice of opposition once treated as deemed abandoned cannot used further or generally relied upon.
Court’s conclusion to the Queries
The evidence in an Opposition proceeding cannot be filed along with the Notice of Opposition as the filing of evidence is a different stage of Opposition proceeding and is considered a distinct event after the Opposition filing.
If an Opposition is deemed abandoned, the grounds taken in the Opposition would be irrelevant to the examination of the mark and is not relied upon by the Registry.
ANALYSIS
The court made a distinction between the act of 1958 and 1999, regarding the Notice of Opposition, Counter Statement and evidence by opponent.
| ACT OF | NOTICE OF OPPOSITION | COUNTER STATEMENT | EVIDENCE BY OPPONENT |
| 1958 | 3 month time to file Opposition + 1 month in aggregate. Opposition to be served by Registrar to the Appellant | To be filed within 2 months of receiving notice of Opposition. CS to be filed by the Registrar to the Opponent. | To be submitted in prescribed manner within prescribed time. |
| 1999 | Filing Opposition in Consolidated 4 months | To be filed within 2 months from receiving notice of Opposition. CS to be filed by the Registrar to the Opponent. | To be submitted in prescribed manner within prescribed time. |
Analyzing Rules of 1959/2002/2017 for filing of Evidences
1959 Rules: After the service of counter statement, evidence has to be filed by the opponent as prescribed. If evidence is not filed by the Opponent within the time prescribed, then the opposition is deemed to have been ABANDONED.
2002 Rules: Evidence has to be filed by the Opponent within 2 months upon the copy of the CS being served. The time period for filing of CS is 2 months from service or within such further period not exceeding 1 month in aggregate i.e. total of 3 months. To avail of the 1 month extension for filing of evidence, the same is to be filed within the first 2 months’ period, else the opposition is deemed to have been ABANDONED.
2017 Rules: The additional 1 month extension has been deleted and thus, the evidence has to be filed within 2 months after service of copy of the CS, which would be by the Applicant itself and not by the Registrar.
CONCLUSION
Upon the receipt of the CS by the Opponent, the 2 month’s period beings to run. . If the evidence is not filed within the two months’ period, the opposition would be deemed to have been abandoned as the Registrar has no discretion either under Rule 50 of the 2002 Rules or Rule 45 of the 2017 Rules or Rules 101 and 109 of the 2002 Rules and the 2017 Rules respectively, to extend the time period
