The central legal point established in the judgment is the option given to the opponent to adduce evidence or communicate in writing the intention to rely on the facts stated in the notice of opposition, and the court's emphasis on substantial compliance with the legal mandate despite procedural errors.

JUDGMENT

(Prayer: This Transfer Civil Miscellaneous Appeal (Trademarks) filed under Section 91 of the Trade Marks Act, 1999 to (i) quash set aside the impugned order dated 09.08.2019, passed by Respondent No.1 in Opposition No.891715 filed by the Appellant to the trademark Application of the Respondent No.2 under No.2826665 in class 19 and registration certificate issued be withdrawn. (ii) Summon the records in respect of Opposition No. 891715 filed by the Appellant to the trademark Application of the Respondent No. 2 under 2826665 in class 19 from the office of the Respondent No.1.)

1. This appeal is directed against the order dated 09.08.2019 in respect of a notice of opposition filed by the appellant herein on 24.06.2017 in relation to an application filed by the second respondent herein for registration of the mark “GOLD MEDAL PIPE” in class 19 in respect of non-metallic building materials, non-metallic rigid pipes for buildings and the like. By the impugned order, the opposition of the appellant was deemed to be abandoned and A.No.2826665 was directed to be proceeded with as per the rules. The order impugned herein was assailed by the appellant originally before the Intellectual Property Appellate Board. By order dated 16.10.2020, the impugned order was stayed and the said order of stay continues to operate as on date. Meanwhile, it appears that a certificate of registration was issued to the appellant.

2. The primary ground on which the impugned order was issued was that the appellant submitted a communication dated 05.10.2017 to the Mumbai instead of the Chennai Office of the Trade Marks Registry to the effect that the appellant/opponent does not wish to rely upon evidence in support of the notice of opposition but intends to rely upon submissions made in the notice of opposition. In those circumstances, by taking recourse to Rule 8 of the Trade Marks Rules, 2017 (the Trade Marks Rules) and Rule 45(2) thereof, the opposition was treated as abandoned.

3. Learned counsel for the appellant submitted that the appellant received the counter statement from the second respondent on 27.09.2017. The said counter statement was dispatched to the appellant by the Trade Marks Registry and the relevant e-mail set out the e-mail address of the Mumbai office of the Trade Marks Registry. Therefore, by e-mail of 05.10.2017, the appellant /opponent communicated to the said e-mail address of the Mumbai Office that it did not wish to file evidence in support of the opposition but intends to rely upon submissions made in the notice of opposition. Learned counsel also pointed out that a similar communication was sent on behalf of the 2nd respondent/applicant by communication dated 05.10.2017. Thus, he submitted that both parties decided not to rely upon evidence and to rely upon the notice of opposition and counter statement, respectively.

4. Learned counsel also pointed out that the same scenario played out in relation to trademark application No.2573910 in class 11. Upon the appellant sending a similar letter stating that it did not intend to rely upon evidence, an order was passed treating the opposition as abandoned. The said order was assailed before the Intellectual Property Appellate Board and the said appeal was allowed by order dated 12.11.2018. Assailing the said order, the second respondent filed W.P.No.5486 of 2019. By judgment dated 02.08.2019, the writ petition was dismissed by the Division Bench of this Court.

5. Learned counsel also pointed out that an infringement action was instituted by the appellant against the second respondent before the District Court in Delhi and that an order of interim injunction is in force in the said suit. In conclusion, learned counsel for the appellant submitted that the impugned order is unsustainable and that the opposition of the appellant is not liable to be treated as abandoned in terms of Rule 45 of the Trade Marks Rules.

6. In response to these contentions, learned counsel for the second respond