Mars Incorporated Vs. Registrar of Trademarks

Introduction

This case arose from the abandonment of a trademark application filed by Mars Incorporated, a well-known multinational company, by the Indian Trade Marks Registry. The application was deemed abandoned under Section 21(2) of the Trade Marks Act, 1999, due to an alleged failure to file a counter-statement following opposition notices. Mars challenged the abandonment on grounds of non-receipt of the opposition notices.

Background

Mars Incorporated filed an application for registration of a mark in Class 30 on 11 February 2019. This application was published in the Trade Marks Journal in September 2021. Two parties, including Cadbury UK Ltd., filed oppositions in January 2022. The Registry claimed that notices of opposition were served on Mars in March 2022 via email. However, the company argued that it never received any such notices through email or any other communication mode.

In February 2023, Mars discovered that its application had been marked as abandoned in a public notice issued by the Registry. Mars immediately filed a representation and later a formal review petition seeking restoration of the application. Despite an earlier directive by the Registry withdrawing similar abandonment notices in other cases, Mars’ application remained marked as abandoned. The review petition was rejected in October 2024, prompting the present appeal.

Legal Arguments and Court’s Analysis

Mars contended that there was no proof of effective service of the opposition notices, and therefore the statutory period to file a counter-statement had not begun. They submitted affidavits affirming non-receipt and relied on various precedents including Rishabh Jain, Purushottam Singhal, and Samsudeen A, where courts had interpreted Rule 18 of the Trade Marks Rules harmoniously with Section 21(2) of the Act.

The Registrar relied on email success reports and claimed that notices were sent to the registered email addresses. However, the Court noted that there was no acknowledgment or confirmation of delivery to Mars or its agents.

The Court emphasized that a literal reading of Rule 18 would lead to procedural inconsistency. It concluded that actual receipt of the notice is essential for the limitation period to start, as required under Section 21(2). Thus, the court found that Mars had not been properly served and had therefore not defaulted.

Conclusion and Directions

The Court set aside the order of abandonment dated 25 October 2024. It remanded the matter to the Trade Marks Registry, directing it to serve fresh opposition notices to Mars’ counsel and allow Mars to file its counter-statement within the statutory period thereafter. The case was disposed of accordingly.

Case Title: Mars Incorporated vs. Registrar of Trademarks & Ors.

Date of Order: 2nd April, 2025

Case No.: C.A.(COMM.IPD-TM) 88/2024

Neutral Citation: 2025:DHC:2463

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal