* IN THE HIGH COURT OF DELHI AT NEW DELHI % Judgment delivered on: 28/02/2026 + C.A.(COMM.IPD-TM) 45/2025 & IA Nos.19415/2025 & 26937/2025 INTERNATIONAL BUSINESS MACHINES CORPORATION .....Appellant Versus TIVOLI GARDENS & ANR. .....Respondents Advocates who appeared in this case For the Appellant : Mr. Peeyoosh Kalra, Mr. C.A. Brijesh &

Ms. Simranjot Kaur, Advocates.

For the Respondents : Mr. Rishi Bansal & Mr. Indraneil Choudhary, Advocates for R-1.

Ms. Nidhi Raman, Mr. Om Ram & Mr.

Arnav Mittal, Advocates for R-2.

CORAM:

HON'BLE MR. JUSTICE TEJAS KARIA

JUDGMENT

TEJAS KARIA, J

1. The present Appeal has been filed under Section 91 of the Trade Marks Act, 1999 (“Act”) assailing the order dated 23.04.2025 (“Impugned Order”) passed by the learned Assistant Registrar of Trade Marks, New Delhi.

FACTUALBACKGROUND:

2. The Appellant is a cloud platform and cognitive solutions company operating in over 170 countries. It is claimed in the present Appeal that the Mark ‘TIVOLI’ (“Subject Mark”) is one of the most recognized names in enterprise systems and IT infrastructure management. It is further claimed that the Subject Mark traces its origin to Tivoli Systems Inc. In 1996, Tivoli Systems Inc. was acquired and merged with the Appellant, making Appellant the owner of the Subject Mark.

3. It is claimed by the Appellant that the Appellant’s ‘TIVOLI’ suite represents a comprehensive collection of software products designed to provide an integrated management framework for enterprises with extensive IT infrastructure. It is further claimed that over the past three decades, the Appellant has continuously and extensively used the Subject Mark worldwide and the same has acquired distinctiveness and has become exclusively associated with theAppellant.

4. On 15.09.2003, the Appellant filed an application bearing No. 1236500 for the registration of the Subject Mark in Class 42 in respect of ‘Computer programming services, design of computer systems and software, research and consulting services, in the field of automation, computer programing, data input and organization, and computer system methodology, development and selection’. The said application was advertised in the Trade Marks Journal No. 1338-1 dated 15.01.2006.

5. Subsequently, Respondent No. 1 filed Notice of Opposition dated 29.08.2006 objecting to the aforesaid application filed for the registration of the Subject Mark. Respondent No. 1 is engaged in the business of providing hospitality and food for human consumption, and its Notice of Opposition was based on its Marks ‘TIVOLI’ and ‘TIVOLI GARDENS’, which are allegedly in use since the year 1994.

6. On 04.10.2011, the Appellant filed its Counter Statement and thereafter, on 05.05.2016, the Appellant filed a request with Respondent No. 2 for taking the said Counter Statement on record and serving the same on Respondent No. 1. It is claimed in the Appeal that the Counter Statement was served on Respondent No. 1 on 08.07.2019 by Respondent No. 2, along with a notice requiring Respondent No. 1 to file evidence in support of the Opposition filed by Respondent No. 1.

7. Under cover of letter dated 22.10.2019, the Appellant filed a request with the Registrar of Trade Marks to dismiss the Opposition filed by Respondent No. 1 under Rule 45(2) of the Trade Marks Rules, 2017 (“2017 Rules”) as Respondent No. 1 had not filed its evidence in support of the Opposition or any reliance letter, within the prescribed time under Rule 45 of the 2017 Rules.

8. Thereafter, on 05.01.2022, a hearing notice was issued affording Respondent No. 1 the opportunity to show cause as to why the Opposition shall not be deemed abandoned under Rule 45(2) of the 2017 Rules, for the failure to submit evidence in the support of the said Opposition within the prescribed time.Ahearing was fixed in the matter for 24.01.2022.

9. Respondent No. 1 under cover of letter dated 18.01.2022 filed a request seeking adjournment of the hearing fixed on 24.01.2022 on the ground that the Counsel for R