MAHESH GUPTA Vs. REGISTRAR OF TRADEMARKS

JUDGEMENT

(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 dtd. 3/7/2023 posed the following questions for the consideration of this Bench:

(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 applicant there having avoided abandonment bearing in mind the nature of the representation which was submitted to the Registrar of Trademarks[Registrar]. The learned Judge has in this regard held as follows: