Ambiguities in procedural rules regarding evidence submission under the Trade Marks Act should favor substantive rights and cannot lead to unfair abandonment of opposition.

JUDGMENT (Oral)

1. This appeal assails the following order dated 30th August 2018, passed by the learned Deputy Registrar of Trademarks in Application No. 2772497 filed by Respondent 2 M/s Livguard Energy Technologies Pvt Ltd. seeking registration of their mark "LIVGUARD ZING" in respect of batteries, invertors and like goods:

"Proceedings were initiated under Section 21 of the Trade Mark Act, 1999, by the above named opponent to oppose the registration of trade mark applied for by the above named applicant and whereas the Counter Statement was filed by the applicant and the same was served to the opponent on and whereas within the time prescribed under the rules, neither any evidence in support of opposition was filed nor any statement was submitted on behalf of the opponent to the effect that the opponent does not desire to adduce evidence but wants to rely on the facts mentioned in the Notice of Opposition. The above mentioned opposition is, therefore, deemed to have been abandoned under Rule 45(2) of the Trade Marks Rules 2017. The above mentioned application shall proceed further as per rules.

IT IS HEREBY FURTHER ORDERED that there shall be no order as to cost of these proceedings."

2. Given the nature of the controversy in the present case, it is not necessary to enter into the specifics of the application seeking registration.

3. Suffice it to state that the application for registration was filed by Respondent 2 on 11th July 2014, and was published in the Register of Trade Marks on 15th February 2016 inviting opposition and that, on 2nd June 2016, notice of opposition was filed by the appellant before the learned Registrar. Counter statement, in response to the notice of opposition filed by the appellant was filed by the Respondent 2 on 7th March 2018. It is an admitted position that, on the same day i.e., 7th March 2018, the notice of counter statement filed by Respondent 2 was served electronically on the appellant.

4. Rule 45 of the Trade Marks Rules reads thus:

"45. Evidence in support of opposition.-(1) Within two months from service of a copy of the counter-statement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.

If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition."

5. At a plain glance, Rule 45 is very unhappily worded. It uses the expression "leave with the Registrar". This is an expression to which no legal interpretation can possibly be given.

6. My attention has been invited to Rule 8 of the Trade Mark Rules which deals with "leaving of documents" etc. and reads thus:

"8. Leaving of documents, etc.-All applications, notices, statements or other documents or any fees authorised or required by the Act or the rules to be made, served, left or sent or paid at or to the Trade Marks Registry in relation to a trademark on the Register of trademarks on the notified date or for which an application for registration is pending on, or is made on or after the notified date, shall be made, served, left or sent or paid to the appropriate office of the Trade Marks Registry:

Provided that the Registrar may, by notificatio