Lucas TVS Limited v. FFC Impex

The presumption of service under Rule 18(3) of Trademark Rule for email communications is rebuttable

Introduction:The case of Lucas TVS Limited versus FFC Impex and Another represents a pivotal trademark dispute adjudicated by the Madras High Court, focusing on procedural compliance under the Trade Marks Rules, 2017, and the principles of natural justice in trademark opposition proceedings. The dispute arose when the Assistant Registrar of Trade Marks allowed the opponent, FFC Impex, an opportunity to file evidence despite a lack of proof of service of the counter statement, prompting Lucas TVS to challenge the decision as a violation of statutory timelines. 

Factual Background:Lucas TVS Limited, a Chennai-based company renowned for its automotive electrical components, filed Trademark Application No. 4912372 on March 19, 2021, seeking registration of a device mark associated with starting devices and motors, claiming use since January 21, 1963. The mark was accepted for advertisement and published in Trade Marks Journal No. 2001 on May 24, 2021. FFC Impex, a Delhi-based entity, lodged a notice of opposition on August 14, 2021, challenging the registration. Lucas TVS responded by filing a counter statement on October 14, 2021. According to Rule 45 of the Trade Marks Rules, 2017, FFC Impex was required to file evidence in support of its opposition within two months from the service of the counter statement. However, FFC Impex claimed it never received the counter statement, supported by an affidavit and the correspondence/notice history from the Trade Marks Registry’s portal, which did not reflect the dispatch of the counter statement. Following a hearing on November 19, 2024, the Assistant Registrar issued an order on December 6, 2024, directing fresh service of the counter statement and allowing FFC Impex to file evidence, prompting Lucas TVS to appeal the decision before the Madras High Court.

Procedural Background: The appeal, filed as CMA(TM) No. 6 of 2025 with C.M.P. No. 8235 of 2025, was brought under Section 91 of the Trade Marks Act, 1999, by Lucas TVS against the Assistant Registrar’s order dated December 6, 2024. Lucas TVS sought to set aside the order and direct the Registrar to process its trademark application for registration, arguing that FFC Impex’s failure to file evidence within the stipulated period under Rule 45 constituted abandonment of the opposition. The first respondent, FFC Impex, was served notice but did not appear, leading to it being set ex parte on June 24, 2025. The second respondent, the Assistant Registrar of Trade Marks, Chennai, defended the impugned order, asserting that no proof of actual service of the counter statement existed. The Madras High Court, presided over by Justice Senthilkumar Ramamoorthy, heard arguments from Ms. Aanchal M. Nichani for the appellant and Mr. Rajesh Vivekananthan, Deputy Solicitor General, for the Registrar. The court examined the procedural history, including the filing of the counter statement, the opponent’s affidavit, and the Registrar’s portal records, before delivering its judgment on July 22, 2025.

Core Dispute:The core dispute centered on whether the Assistant Registrar’s decision to allow FFC Impex additional time to file evidence, despite the lack of proof of service of the counter statement, was justified under the Trade Marks Rules, 2017, and principles of natural justice. 

Lucas TVS argued that Rule 45(2) deems an opposition abandoned if evidence is not filed within two months from the service of the counter statement, and Rule 18(3) presumes service if an email is sent to the provided email ID. The appellant contended that the Registrar failed to verify successful email transmission and improperly relied on FFC Impex’s affidavit and incomplete correspondence history, which may not reflect all dispatched documents. The Registrar, however, maintained that without evidence of actual service, the timeline for filing evidence had not commenced, and allowing FFC Impex an opportunity to respond was in the interest of justice, causing no prejudice to Lucas TVS. The court had to determine whether the Registrar’s decision was procedurally sound and whether the prolonged pendency of the trademark application warranted judicial intervention.

Discussion on Judgments: The judgment does not explicitly cite specific case law from the parties, as the arguments primarily focused on the interpretation of statutory provisions under the Trade Marks Rules, 2017, specifically Rules 18 and 45. Lucas TVS relied on Rule 18(3), which establishes a presumption of service for email communications sent to the email ID provided by a party, arguing that this presumption should have been upheld unless FFC Impex provided conclusive evidence to rebut it. The appellant also invoked Rule 45(2), which states that failure to file evidence within two months from service of the counter statement results in the opposition being deemed abandoned. The Registrar’s counsel, however, emphasized the operative portion of the impugned order, which referenced Rule 45’s requirement of actual service to trigger the evidence-filing timeline. No direct judicial precedents were cited in the judgment, as the dispute hinged on procedural compliance and evidentiary assessment rather than contested legal interpretations requiring case law. The court’s analysis implicitly drew on principles of natural justice, akin to those in administrative law cases, where fairness demands an opportunity to respond, as seen in the Registrar’s reliance on FFC Impex’s affidavit and portal records to conclude non-service.

Reasoning and Analysis of the Judge: Justice Senthilkumar Ramamoorthy’s reasoning balanced the strict procedural framework of the Trade Marks Rules with the principles of natural justice. He acknowledged Lucas TVS’s contention that Rule 18(3) presumes service of an email sent to the opponent’s provided email ID, which would trigger the two-month period under Rule 45 for filing evidence. However, he noted that FFC Impex’s affidavit, supported by the Trade Marks Registry’s correspondence/notice history, indicated no record of the counter statement’s dispatch. The judge recognized the appellant’s argument that the Registry’s portal might not comprehensively log all communications, suggesting potential technical deficiencies. Nevertheless, he found the Registrar’s conclusion—that no proof of actual service existed—reasonable, given the evidence on record, including the opponent’s affidavit and portal data. The court emphasized that the timeline for filing evidence under Rule 45 only begins upon actual service, and without such proof, the opposition could not be deemed abandoned. The judge further considered the lack of prejudice to Lucas TVS if FFC Impex were allowed to file evidence, aligning with natural justice principles to ensure both parties have a fair opportunity to present their case. However, he expressed concern over the prolonged pendency of the trademark application, filed in March 2021 and unresolved for over four years, justifying a directive for expeditious disposal to prevent further delay.

Final Decision: The Madras High Court disposed of CMA(TM) No. 6 of 2025 on July 22, 2025, declining to interfere with the Assistant Registrar’s order dated December 6, 2024. The court directed the Assistant Registrar to consider and dispose of Opposition No. 1119112 and Trademark Application No. 4912372 within three months from the receipt of the order, ensuring a reasonable opportunity for both Lucas TVS and FFC Impex to present their cases. No costs were awarded, and the connected miscellaneous petition was closed.

Law Settled in This Case: This judgment reinforces the importance of verifying actual service of critical documents in trademark opposition proceedings under the Trade Marks Rules, 2017. It clarifies that the presumption of service under Rule 18(3) for email communications is rebuttable, and the absence of proof of dispatch, corroborated by affidavits and Registry records, can justify extending opportunities to file evidence. The decision underscores that Rule 45’s timeline for evidence submission is contingent on actual service, and failure to prove such service prevents deeming an opposition abandoned. It also highlights the judiciary’s role in balancing procedural strictness with natural justice, ensuring fairness without unduly prejudicing applicants. Furthermore, the case establishes that courts may intervene to expedite long-pending trademark applications, promoting efficiency in the registration process while safeguarding equitable principles.

Case Title: Lucas TVS Limited v. FFC Impex and Another

Date of Order: 22nd July, 2025

Case Number: CMA(TM) No. 6 of 2025

Name of Court: High Court of Judicature at Madras

Name of Hon'ble Judge: Senthilkumar Ramamoorthy J.

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi