V-Guard Industries Ltd vs The Registrar Of Trademarks

Introduction  

This case study analyzes a judgment from the Delhi High Court that interprets procedural provisions under the Trade Marks Rules, 2017, particularly Rule 45 concerning the filing of evidence in opposition to trademark registration. The appellant challenged an order deeming its opposition abandoned due to alleged non-compliance with timelines for submitting evidence. The court adopted a liberal approach to the phrase "leave with the Registrar," emphasizing that procedural rules should not be construed so rigidly as to undermine substantive rights. This decision highlights the balance between strict adherence to timelines and practical considerations in intellectual property proceedings, allowing for extensions where justified and with party consent.

Factual Background  

The respondent, M/s Livguard Energy Technologies Pvt Ltd, filed an application on July 11, 2014, seeking registration of the trademark "LIVGUARD ZING" for batteries, inverters, and similar goods. The application was published in the Trade Marks Journal on February 15, 2016. The appellant, M/s V-Guard Industries Ltd, filed a notice of opposition on June 2, 2016. In response, the respondent submitted a counterstatement on March 7, 2018, which was served electronically on the appellant the same day. Under Rule 45(1) of the Trade Marks Rules, 2017, the appellant was required to submit evidence in support of its opposition within two months, by May 7, 2018. Due to technical issues with the Trade Marks Registry website, the appellant could not upload the evidence online and instead sent it via courier on May 7, 2018. The evidence was received by the Registry on May 10, 2018. Despite this, the Deputy Registrar issued an order on August 30, 2018, deeming the opposition abandoned under Rule 45(2) for failure to file evidence or submit a statement within the prescribed time.

Procedural Background  

Following the publication of the trademark application, the appellant's opposition led to the exchange of pleadings, with the counterstatement served on March 7, 2018. The appellant attempted to comply with the evidence submission deadline but resorted to courier due to website malfunction. The Deputy Registrar's order of August 30, 2018, abandoned the opposition, prompting the appellant to file an appeal under Section 91 of the Trade Marks Act, 1999, before the Delhi High Court. The appeal, C.A.(COMM.IPD-TM) 39/2022, was accompanied by an interlocutory application I.A. 179/2023. The court heard arguments from both parties, with the respondent expressing no objection to taking the evidence on record. The judgment was delivered orally on January 6, 2023.

Core Dispute  

The primary contention was whether the appellant's opposition should be deemed abandoned under Rule 45(2) for failing to "leave" evidence with the Registrar within the two-month period after service of the counterstatement. The appellant argued that sending the evidence via courier on the due date constituted compliance, given the website's non-functionality, and that the three-day delay in receipt was excusable. The Registrar maintained that no evidence was filed or statement submitted timely, justifying abandonment. A secondary issue was whether the Registrar could extend the time under Rule 109, especially with the respondent's consent, to accommodate the minor delay.

Discussion on Judgments  

No judgments were cited by the parties or the court in this case, as the decision turned on statutory interpretation of the Trade Marks Rules, 2017, without reference to prior precedents.

Reasoning and Analysis of the Judge  

The judge, C. Hari Shankar, critiqued the phrasing of Rule 45(1), noting that "leave with the Registrar" lacks clear legal meaning but should be interpreted liberally to ensure evidence availability within the timeline, rather than rigidly enforcing formal filing methods. Referencing Rule 8, which allows leaving documents at the Registry, the judge held that dispatching evidence by courier on the due date satisfied the requirement, deeming it "left" on May 7, 2018, despite receipt on May 10. Even assuming a delay, the judge invoked Rule 109(3), empowering the Registrar to extend time for evidence submission with the other party's consent, which the respondent provided. Emphasizing that procedural rules serve justice and not defeat rights over technicalities, the judge found the website issue a genuine reason, warranting relief without prejudicing the respondent.

Final Decision  

The appeal was allowed, setting aside the impugned order of August 30, 2018. The court directed the Registrar to take the appellant's evidence on record and proceed with the opposition in accordance with law, with no order as to costs.

Law Settled in This Case  

This judgment establishes that the expression "leave with the Registrar" in Rule 45(1) of the Trade Marks Rules, 2017, merits a broad interpretation, encompassing dispatch of evidence by reliable means like courier when online filing fails, provided it aligns with the timeline's intent. It affirms the Registrar's discretion under Rule 109 to extend time for opposition evidence with consenting parties, prioritizing substantive justice over procedural rigidity in trademark oppositions.

Case Details – Case Title: M/S V-Guard Industries Ltd vs The Registrar Of Trademarks & Anr, Date of Order: 06.01.2023, Case Number: C.A.(COMM.IPD-TM) 39/2022, Neutral Citation: 2023/DHC/000137, Name of Court: High Court of Delhi at New Delhi, and Name of Judge: C. Hari Shankar.

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

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

Here are various suitable titles for this article for publication in a Law Journal: "Liberal Interpretation of Procedural Timelines in Trademark Oppositions: Insights from V-Guard v. Registrar", "Deeming Oppositions Abandoned: Delhi High Court's Flexible Approach to Rule 45", "Evidence Submission in IP Proceedings: Balancing Technicalities and Justice in V-Guard Case", "Extending Time under Trade Marks Rules: Judicial Discretion and Party Consent", "Overcoming Online Filing Hurdles: Courier as Valid 'Leaving' in Trademark Law".