Technical Delay Cannot Lead to Trademark Opposition Abandonment

Summary

The Delhi High Court has set aside an order by the Trade Marks Registry that deemed an opposition abandoned due to a technical lapse in filing an original affidavit within the stipulated timeline. The Court clarified that where parties act in good faith and no prejudice is caused, minor procedural errors should not override substantive justice. The judgment criticised the Registry’s insistence on original documents despite acceptance of electronic filings under the rules. The Court held that the opposition must proceed on merits and ordered cancellation of the respondent’s trademark registration. This decision strengthens the principle that procedural compliance should not defeat substantive rights in trademark disputes.

Introduction

In a significant ruling reinforcing the balance between procedural compliance and substantive justice, the Delhi High Court set aside an order of the Trade Marks Registry that had deemed an opposition “abandoned” due to the non-filing of an original affidavit within the prescribed time. The Court emphasized that minor procedural lapses should not override the substantive rights of parties, particularly when there is a clear intent to comply and no prejudice is caused to the other side.

Background

The dispute arose from a trade mark opposition filed by Raj Vardhan Patodia (HUF) (Appellant), against a trade mark application (No. 3426674) filed by Signature Global (India) Private Limited (Respondent No. 2). Key timelines are as follows:

• • The opposition was filed on 20^th February 2020.
  • The counter-statement was served to the Appellant on 13^th February 2023.
  • The Evidence in Support of Opposition (EISO) was sent via courier on 30^th March 2023, and received by the Trade Marks Registry (Respondent No.1) on 3^rd April 2023.
  • The Registry returned the EISO, citing the absence of an original signed copy, and requested that it be refiled. The original was subsequently submitted and acknowledged on 30^th June 2023, and uploaded on the Registry’s portal by 3^rd July 2023.
  • Meanwhile, upon receipt of the EISO, Respondent No. 2 filed its Evidence Affidavit in support of Application (EISA) on 8^th June 2023.
  • A hearing was scheduled for 31^st October 2023 based on the contention that the EISO had not been filed within the prescribed time. In response, a letter and affidavit dated 20^th October 2023 were submitted by the Appellant, asserting that the EISO was timely filed and already on record with the Trade Marks Registry.
  • Despite this, the Trade Marks Registry treated the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, 2017, prompting the appeal.

Issues Considered

The Court addressed the following questions:

1. 1. Was the EISO filed within the timeline stipulated by Rule 45(1)?
   2. Can a technical lapse—such as submission of a photocopy instead of the original—result in abandonment under Rule 45(2)?

Court’s Reasoning

1. 1. Citing V-Guard Industries v. Registrar of Trademarks, the Court reaffirmed that procedural norms should not defeat substantive rights especially where the party has acted in good faith and within a reasonable timeframe.
   2. The Court found that although the Appellant initially sent a photocopy, the intent to comply was evident, especially as the original was promptly filed once the issue was highlighted.
   3. The Court criticized the Registry’s reliance on an internal “standard practice” requiring original documents, especially in light of the Trade Marks Rules’ acceptance of e-filing.
   4. It was undisputed that Respondent No. 2 had received the EISO and had even filed its EISA, indicating full knowledge of the opposition and active participation in the process.

Decision

The impugned order was set aside with the following directions:

1. 1. The EISO was to be taken on record, and opposition proceedings  must continue on merits
   2. The trade mark registration granted to Respondent No. 2  is cancelled.

Citation: Raj Vardhan Patodia (Huf) vs Registrar Of Trade Marks & Anr, High Court of Delhi, [C.A.(COMM.IPD-TM) 13/2024 & I.A. 3379/2024] 21 April, 2025. Available at: https://indiankanoon.org/doc/91434316/

Article Review by Dr. Kalyan C. Kankanala

Accessibilty Review by Ms. Kavya Sadashivan