Timelines in opposition proceedings under the Trade Marks Act are mandatory; failure to comply results in deemed abandonment of opposition, and written arguments cannot substitute for required evidence submissions.

JUDGMENT :

TEJAS KARIA, J.

1. The present Appeal has been filed against the Order dated 22.05.2018 (“Impugned Order”) passed by Respondent No. 2 in Opposition No. MAS- 868102 filed by the Appellant against the Application No. 2466657 bearing Trade Mark “CEOFSPEY” (“Impugned Trade Mark”).

FACTUAL BACKGROUND

2. The Appellant claims to be the proprietor of the Trade Mark “CEOF”, bearing Application No. 2206900 in Class 5 in respect of Medical and Pharmaceutical preparations (“Appellant’s Trade Mark”). The Appellant has been using the Appellant’s Trade Mark continuously and uninterruptedly since December 2011. It is submitted by the Appellant that the Appellant’s Trade Mark is exclusive and associated only with the Appellant and has gained substantial popularity and goodwill in the market. The Appellant’s Trade Mark is associated in the market solely with the Appellant.

3. Respondent No. 1 applied for the Impugned Trade Mark under Class 5 in respect of Medicinal and Pharmaceutical preparations on a proposed to be used basis. The Impugned Trade Mark has simply copied the prefix of the Appellant’s Trade Mark by adding the word “SPEY”, which does not in any way confer any distinctiveness, as the prefix gains importance in Trade Marks and the Impugned Trade Mark is only an extension and a copycat of the Appellant’s Trade Mark.

4. The Impugned Trade Mark was advertised in Journal No. 1768 on 24.10.2016. The Appellant filed its Opposition before Respondent No. 2. The Respondent No. 2 issued a notice on the Appellant’s Opposition on 22.06.2017, directing Respondent No. 1 to file its Counter Statement within two months. On 30.08.2017, the Counter Statement to the Appellant’s opposition was filed by Respondent No. 1, after the expiry of a period of two months. However, the said Counter Statement filed by Respondent No. 1 was never served upon the Appellant. Consequently, the Appellant was deprived of the right to file its Evidence.

5. On 19.04.2018, Respondent No. 2 issued a notice of hearing fixed for 04.05.2018. When the Appellant was notified about the date of hearing, the Appellant filed its Written Arguments on 30.04.2018 in support of its Opposition before Respondent No. 2, categorically pointing out that the Appellant had been deprived of the right to file its Evidence, as the Counter Statement filed by Respondent No. 1 was not served upon the Appellant, who came to know about the filing of the Counter Statement only when it received the notice of hearing. The Appellant, accordingly, requested Respondent No. 2 to consider the submissions made in the Written Arguments.

6. However, vide the Impugned Order, Respondent No. 2 disposed of the Opposition filed by the Appellant as deemed to have been abandoned on account of non-filing of the evidence, without considering the Written Arguments filed by the Appellant.

7. Being aggrieved by the Impugned Order, the Appellant has filed the present Appeal.

SUBMISSIONS ON BEHALF OF THE APPELLANT

8. Mr. Mayank Bughani, the learned Counsel for the Appellant has submitted that the Appellant had filed the Opposition against the Application No. 2466657 for the Impugned Trade Mark filed by Respondent No. 1 on 08.11.2016. Respondent No. 2 issued a notice pursuant to Section 21(1) of the Trade Marks Act, 1999 (“Act”) on 22.06.2017