The court established that the timelines for submitting evidence in support of trademark applications are mandatory and cannot be extended by later procedural rules, affirming the principle of deemed abandonment for failures to comply with such deadlines.

JUDGMENT

Yashwant Varma, J. -

INTRODUCTION

BRIEF FACTUAL BACKGROUND

SUBMISSIONS OF SAP SE

SUBMISSIONS OF THE FIRST RESPONDENT - SWISS AUTO PRODUCTS IN THE SAP SE REFERENCE

SUBMISSIONS OF MAHESH GUPTA

SUBMISSIONS OF THE SECOND RESPONDENT IN THE MAHESH GUPTA APPEAL

ANALYSIS OF THE TRADEMARK STATUTORY FRAMEWORK

THE IMPACT OF THE PHRASE "NOT EXCEEDING"

THE QUESTION RELATING TO APPLICABLE RULES

EPILOGUE

A. INTRODUCTION

1. The present reference has been placed before us consequent to a learned Judge of the Court expressing a doubt with respect to the correctness of the view expressed in Mahesh Gupta v. Registrar of Trademarks & Anr, 2023 SCC Online Del 1324] and which forms subject matter of challenge in the connected LPA 429/2023. The learned Judge has in terms of the order dated 03 July 2023 posed the following questions for the consideration of this Bench:

"(i) Whether the rules dealing with procedural aspects, including those relating to the filing of evidence introduced by the Trademarks Rules, 2017, would apply retrospectively to proceedings initiated under the Trademarks Rules, 2002.

(ii) Whether failure to file evidence in support of the trademark application would tantamount to 'anything done under the TRADE MARKS RULES , 2002', which is saved by Rule 158 of the TRADE MARKS RULES , 2017 and would continue to be governed by the TRADE MARKS RULES , 2002."

2. The questions themselves arise in the backdrop of Rules 45 and 46 of the Trade Mark Rules, 2017[2017 Rules] and which speak of a deemed abandonment of the right to adduce evidence in support of opposition and in support of the trade mark application, as a consequence of a failure to comply with the timelines prescribed therein. Rule 45 enables an opponent to lead evidence in support of opposition subject to the prescription that the same must be filed within two months from the service of a copy of the counter statement. In terms of sub-rule (2) thereof, if an opponent takes no action in terms of the substantive provision made in sub-rule (1), it shall be deemed to have abandoned the opposition. A similar right to lead evidence is conferred upon the trademark applicant while responding to evidence in support of opposition. Here too, the trade mark applicant is enabled to adduce evidence in support of the application and thus seek to overcome the opposition which stands mounted. However, the applicant faces a similar specter of deemed abandonment if evidence is not submitted within the time prescribed.

3. According to the opinion rendered by the learned Judge in SAP SE, the 2017 Rules have introduced procedural changes and would thus apply retrospectively to ongoing proceedings including those which may have been initiated under the TRADE MARKS RULES , 2002[2002 Rules]. The learned Judge in SAP SE while framing the order of reference has essentially held that actions validly initiated under the 2002 Rules would be governed by the 2017 Rules upon their promulgation. The learned Judge was further of the opinion that since the decision taken upon SAP SE's application to lead evidence in support of the trademark application came to be rejected in 2019 and thus at a time when the 2017 Rules had come into force, it should have been examined as per the 2017 Rules. The aforesaid foundational premise is based upon the concept of deemed abandonment having been introduced only by virtue of the 2017 Rules and the app