Court’s decision
The Delhi High Court allowed an appeal under Section 91 of the Trade Marks Act, 1999 and set aside the Assistant Registrar’s order that had condoned a delay of over two years in filing evidence in support of opposition to the mark “TIVOLI.”
Justice Tejas Karia held that Rule 45 of the Trade Marks Rules, 2017 (and Rule 50 of the 2002 Rules) prescribe strict and non-extendable timelines. Failure to file evidence within two months of service of the counter statement results in deemed abandonment. The Registrar had no discretion to revive the opposition .
Facts
The appellant, a multinational technology company operating in over 170 countries, claimed longstanding global use of the mark “TIVOLI,” tracing its origin to Tivoli Systems Inc., acquired in 1996. It filed an application in 2003 for registration of “TIVOLI” in Class 42 for IT and software services.
The mark was opposed in 2006 by Respondent No. 1, engaged in hospitality services, claiming prior use of “TIVOLI” and “TIVOLI GARDENS” since 1994.
A counter statement was filed in 2011. As per registry records, it was served on 08.07.2019. However, Respondent No. 1 did not file evidence within the prescribed period. In March 2022, more than two years later, it filed a letter of reliance and an interlocutory petition seeking condonation of delay .
Issues
The High Court examined:
- Whether the appeal was within limitation under Section 91 of the Act.
- Whether Rule 45 of the 2017 Rules or Rule 50 of the 2002 Rules applied.
- Whether service of counter statement was validly effected.
- Whether the Registrar had power to condone delay beyond the prescribed period.
- Whether negligence of counsel justified revival of opposition proceedings.
Petitioner’s arguments
The appellant argued that service of the counter statement was duly effected on 08.07.2019, evidenced by the Dispatch Register and Excel records bearing Dispatch No. 4220361. Under Rule 45, the opponent had two months to file evidence, failing which opposition stood deemed abandoned.
It contended that neither the 2002 Rules nor the 2017 Rules confer discretion on the Registrar to extend this period. The delay of nearly two years and eight months was incurable.
The appellant also submitted that blaming erstwhile counsel was not a legally sustainable ground and pointed to repeated procedural defaults by the opponent, including dismissal of another opposition for want of prosecution .
Respondent’s arguments
Respondent No. 1 contended that the 2002 Rules governed the proceedings since the opposition was filed in 2006. It alleged improper service of the counter statement and argued that limitation to file evidence would commence only upon effective receipt.
It further claimed that its erstwhile counsel failed to communicate service of the counter statement and that the delay was unintentional. The respondent invoked principles that litigants should not suffer due to advocate’s fault and argued that substantive rights should not be defeated by procedural technicalities .
Analysis of the law
The Court relied heavily on its earlier decisions clarifying the mandatory nature of opposition timelines. In Sun Pharma Laboratories Ltd. v. Dabur India Ltd., it was held that upon receipt of counter statement, the two-month clock begins, and the Registrar has no discretion to extend it.
In Mahesh Gupta v. Registrar of Trade Marks, the Division Bench affirmed that Rule 45 of the 2017 Rules embodies the “deemed abandonment” principle and prescribes a maximum period of two months. The deletion of the phrase “unless the Registrar otherwise directs” reflects legislative intent to eliminate discretion.
Thus, whether governed by Rule 50 of the 2002 Rules or Rule 45 of the 2017 Rules, timelines were strict and mandatory .
Precedent analysis
The Court referred to:
• Sun Pharma Laboratories Ltd. v. Dabur India Ltd. (2024 SCC OnLine Del 813) – Registrar has no power to extend evidence timelines.
• Mahesh Gupta v. Registrar of Trade Marks (2024 SCC OnLine Del 1750) – Two-month period under Rule 45 is maximum and non-extendable.
• Rajneesh Kumar v. Ved Prakash (2024 SCC OnLine SC 3380) – Litigants cannot escape consequences by blaming counsel.
• Nitin Mahadeo Jawale v. Bhaskar Mahadeo Mutke (2024 SCC OnLine SC 3468) – Vigilance of litigant is essential.
These authorities reinforced the strict statutory scheme.
Court’s reasoning
The Court first rejected the limitation objection, holding that the appeal was filed within three months from communication of the impugned order.
On merits, it found that Dispatch Register records established valid service under Rule 18 of the 2017 Rules. Proper addressing and dispatch sufficed to prove service.
The Court observed that Respondent No. 1 remained inactive for over two years and took steps only after a show-cause notice was issued in January 2022. This conduct did not reflect diligence.
Blaming counsel was insufficient, particularly in light of Supreme Court precedent.
The Registrar’s acknowledgment in the impugned order that grounds lacked merit further weakened the justification for condonation.
Conclusion
The Delhi High Court held that opposition proceedings stood deemed abandoned upon expiry of the statutory period. The Assistant Registrar lacked jurisdiction to condone delay of over two years.
The impugned order dated 23.04.2025 was quashed and set aside. The appeal was allowed .
Implications
This ruling strengthens procedural discipline in trademark opposition proceedings.
• Rule 45 timelines are absolute and non-extendable.
• Deemed abandonment operates automatically.
• Registrar lacks discretion to revive opposition beyond statutory window.
• Service is established upon proper dispatch.
• Advocate negligence is not a shield against statutory default.
The decision reinforces certainty and efficiency in trademark registration, preventing indefinite delays in opposition proceedings.
Case law references
- Sun Pharma Laboratories Ltd. v. Dabur India Ltd. (2024 SCC OnLine Del 813) – Strict interpretation of opposition timelines.
- Mahesh Gupta v. Registrar of Trade Marks (2024 SCC OnLine Del 1750) – Rule 45 embodies deemed abandonment principle.
- Rajneesh Kumar v. Ved Prakash (2024 SCC OnLine SC 3380) – Litigants must remain vigilant; counsel negligence no automatic condonation.
- Nitin Mahadeo Jawale v. Bhaskar Mahadeo Mutke (2024 SCC OnLine SC 3468) – Delay cannot be excused merely by blaming advocate.
FAQs
1. Can the Registrar extend time to file evidence in a trademark opposition?
No. Under Rule 45 of the 2017 Rules, the two-month period is mandatory and non-extendable. Failure results in deemed abandonment.
2. Does improper communication by counsel excuse delay in opposition proceedings?
No. Courts have consistently held that litigants must remain vigilant and cannot rely solely on counsel to avoid statutory consequences.
3. When is service of counter statement considered valid?
Service is deemed complete when properly addressed and dispatched by post or email, as per Rule 18 of the 2017 Rules.
