Mr. Manish Agarwal vs. The Registrar of Trademarks and Ors.
Mr. Manish Agarwal, the Applicant, filed four trademark applications for the mark “SATYA GROUP” on 11th March, 2013. The said marks were advertised in the Trademark Journal dated 21st May, 2018, and an Opposition was filed against the said marks by the Opponent, M/s APJ Satya Knowledge LLP. The Applicant filed his counter statement on 19th January 2019, however the Opponent claimed that it was served to him on 7th June 2019. The Opponent claimed that the evidence in support of the Opposition was filed electronically on 5th August 2019, u/r 45 and the hard copy was received by the Registry on 13th August, 2019. The Applicant claimed that the evidence in support of affidavit in accordance to rule 45 ought to have been filed by the Opponent before 7th August, 2019, which was not done. The Applicant assumed the opposition to be abandoned for not complying with Rule 45 and did not file any evidence u/r 46, until the Applicant received a show cause notice stating that the Applicant’s applications were liable to be treated as abandoned, as the Opponent had filed the evidence in support of oppositions u/r 45 and the Applicant had not filed his evidence in support of application u/r 46. The Registrar of Trademarks, the Respondent No. 1, directed the Opponent to supply the copies of the evidence in support of the oppositions to the Applicant within 1 week. The writ petition arose out of this impugned order passed by the Respondent No. 1.
Whether the delayed submission of physical evidence because of inability to file online due to upload limits of trademark registry may be accepted as valid filing of evidence under trademark rules?
Whether the evidence wrongfully submitted u/r 45 may be admitted?
Whether the Opposition is deemed to be abandoned for non-compliance of Trademark Rules?
The Court took into consideration the following legal provisions:
- Section 21(4) of the Trade Marks Act, 1999: Evidence upon which the Opponent and the Applicant may rely shall be submitted in the prescribed manner and within the specified time to the Registrar
- Rule 45(1) of the Trade Marks Rules, 2017: The Opponent shall file evidence in support of his Opposition within two months from service of the copy of the counter statement.
The counsel for the Applicant contended that evidence was not served upon the Applicant u/r 45 and further submitted that as per section 21(4) of the Trade Marks Act, the evidence must be filed within the prescribed time. Rule 45(1) of the Trade Marks Rule provides that the stipulated time for filing the evidence is two months. Any delay in filing of evidence cannot be condoned, and hence the Opposition should have been considered to be abandoned. The Applicant also pointed out that as per Rule 112 of the TM Rules, irregularities in procedures could only be removed when it was not detrimental to the interests of any person. Reliance was also placed on Rule 14 (3) of the TM Rules, which provided that it was sufficient if the letter was addressed correctly and put to post. In this case, the letter was delivered to the Applicant on 09th August, 2019, i.e. after the time of 2 months had expired. The Applicant relied on Surinder Corporation v. Hindustan Level Limited & Anr., 2007, which stated that the Registrar has no authority or discretion to condone the delay in filing. Thus, the Applicant submitted that the Opposition must be deemed as abandoned.
In response, the Opponent submitted that the evidence u/r 45 was filed well within the prescribed time but was unintentionally titled wrong. However, as the Trademark Registry website had a limit of up to 5 MB for uploading documents, the Opponent had to serve physical copies which reached the Registry on 13th August 2019. Further, the Opponent contended that in any event, under Rule 45 (1) of the TM Rules, once the filing was made, there was no specific timeline fixed for service of the copy on the Applicant and in any case, the same ought to be done simultaneously as long as it was done immediately or within a reasonable time after the filing.
The Court after understanding the facts, asked the Registrar of Trademarks to submit an affidavit stating date on which the documents were uploaded and its reasoning for considering such wrongful filing under Rule 45.
The Court opined that Rule 45 clearly provided a two-month period for filing of the evidence in support of oppositions. However, in the present case, the Registrar itself stated in the affidavit that the evidence was filed under Rule 45 on 5th August, 2019, the Court could not hold that the evidence was not filed in time. The Court permitted the delayed submission of evidence by the Opponent caused due to upload limits of E-filing portal. The Court considered that applications of the Applicant had been delayed for a long period due to the confusion created on behalf of the Respondents and improper filing made by the Opponent.
The Court held that the evidence by the Opponent was submitted on time and ruled that the rebuttal evidence in support of the applications under Rule 45 of TM Rules should be filed on record subject to costs of Rs.5,000/- in each of the applications i.e., a total cost of Rs.20,000/- to be paid by the Opponent, within one month. The Court also commented that an endeavor should be made to dispose of the oppositions within a period of six months from the date of filing of the evidence in support of the applications.
Relevant Paragraphs from the Judgement:
“16. After having perused the records and the specific stand of Respondent No.1, this Court is of the opinion that the legal position in terms of Rule 45 is clear that here is a two months period for filing of the evidence in support of oppositions. However, in the present case, since Respondent No.1 itself submitted that the evidence was filed under Rule 45 on 5th August, 2019 and at best, there must have been some delay in the dispatch of the final documents which were received on 13th August, 2019, this is not a case where the evidence can be held to have not been filed under Rule 45. There is some doubt as to why the evidence were not served upon the Applicant initially, and some documents were finally served in hardcopy upon the Applicant only on 17th August, 2019, as per the Opponent’s affidavit. However, the doubt which has arisen here cannot result in a situation where the legal rights of the parties are prejudiced in a manner so as to render the oppositions themselves as having been abandoned.
17. Thus, in view of the peculiar facts of this case and the submissions made by the parties, and especially, the categorical stand of Respondent No.1 being that the evidence was filed on 5th August, 2019, this Court is unable to hold that the evidence was not filed in time. Accordingly, the evidence in support of oppositions are directed to be taken on record. The rebuttal evidence in support of the applications under Rule 45 be now filed by the Applicant within the timelines prescribed under Rule 46 of TM Rules. Upon the filing of the evidence in support of the applications, the oppositions shall proceed for hearing. An endeavor shall be made to dispose of the oppositions within a period of six months from the filing of the evidence in support of the applications.
18. However, under these circumstances where the applications of the Applicant have been delayed for a long period due to the confusion created on behalf of the Respondents and improper filing made by them, the evidence in support of oppositions are taken on record subject to costs of Rs.5,000/- in each of the applications i.e., a total cost of Rs.20,000/- to be paid by the Opponent, within one month. ”
Citation: Mr. Manish Agarwal vs The Registrar of Trade Marks and Ors., decided by the Delhi High Court, on 7 July 2022; available at: https://indiankanoon.org/doc/48921/, visited on 12th July 2022.
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