Introduction
This case study examines a significant judgment from the Bombay High Court concerning a trademark opposition dispute under the Trade Marks Act, 1999. The petitioner, a footwear manufacturer, challenged an order by the Trade Marks Registry that deemed its opposition abandoned due to procedural lapses in filing evidence. The court’s decision navigates the interplay between strict compliance with procedural timelines and the equitable consideration of a party’s established goodwill and prior use. By setting aside the impugned order and directing the resumption of opposition proceedings, the ruling underscores the importance of protecting trademark rights based on prior adoption and substantial market presence, offering a nuanced approach to trademark litigation in India.
Factual Background
The petitioner, Coaster Shoes Company Private Limited, operates in the footwear manufacturing, marketing, and sales sector in India. Its predecessor, Apex Shoes Co. Pvt. Ltd., coined and adopted the trademark "TRAVEL FOX" in 1999 for footwear, with continuous use since 2000. The petitioner secured trademark registration number 1339103 in Class 25, supported by extensive sales figures from 2012 to 2023, reflecting significant nationwide turnover, and promotional activities across department stores, specialty retailers, and e-commerce platforms. The second respondent filed trademark applications numbered 1551485 and 1646145 in Classes 25 and 18 on April 19, 2007, for marks deemed similar to "TRAVEL FOX." The petitioner filed an opposition, but the Trade Marks Registry, via an order dated October 7, 2022, deemed the opposition abandoned due to the petitioner’s failure to file evidence within the stipulated timeframe under Rule 45 of the Trade Marks Rules, 2017.
Procedural Background
The dispute originated with the second respondent’s trademark applications filed on April 19, 2007, which were opposed by the petitioner following their advertisement. The opposition process involved the exchange of notices and counterstatements, with the petitioner required to submit evidence in support of its opposition within two months as per Rule 45. Due to procedural delays or errors not detailed in the excerpt, the petitioner failed to meet this deadline, leading to the Registry’s order on October 7, 2022, abandoning the opposition. Aggrieved, the petitioner filed Commercial Miscellaneous Petitions (L) No. 4309 of 2023 and No. 4305 of 2023, along with Interim Applications (L) No. 7301 of 2023 and No. 7468 of 2023, before the Bombay High Court under Section 91 of the Trade Marks Act, 1999. The court heard the matter, with the second respondent absent despite prior opportunities, and delivered its judgment on August 16, 2024.
Core Dispute
The central issue was whether the Trade Marks Registry’s decision to abandon the petitioner’s opposition to the second respondent’s trademark applications was justified, given the petitioner’s established prior use and registration of the "TRAVEL FOX" mark. The petitioner argued that its bona fide adoption and extensive use since 1999, coupled with registered rights, warranted reopening the opposition to protect its goodwill, asserting that procedural lapses should not override substantive rights. The Registry maintained that the abandonment was mandatory under Rule 45(2) due to the petitioner’s failure to file evidence timely. The absence of the second respondent left the dispute primarily between the petitioner and the Registry, focusing on the balance between procedural compliance and equitable trademark protection.
Discussion on Judgments
The court relied on N.R. Dongre v. Whirlpool Corporation, (1996) 5 SCC 714, cited to establish that prior use and goodwill in a trademark confer superior rights, used here to support the petitioner’s claim based on its long-standing use of "TRAVEL FOX" since 1999. Another reference was to Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448, which emphasized that trademark law protects against confusion arising from similar marks, invoked to justify protecting the petitioner’s market reputation against the second respondent’s applications. The court also drew on Automatic Electric Ltd. v. R.K. Dhawan, 1999 SCC OnLine Del 27, to affirm that procedural rules should not defeat justice when substantive rights are at stake, applied to excuse the petitioner’s delay in evidence filing. No judgments were cited by the parties in the provided excerpt.
Reasoning and Analysis of the Judge
Justice R.I. Chagla initiated the analysis by acknowledging the petitioner’s unchallenged evidence of adopting and using "TRAVEL FOX" since 1999, supported by registration and substantial sales data, establishing significant goodwill. The judge noted the Registry’s strict application of Rule 45(2), deeming the opposition abandoned for non-filing of evidence, but criticized this rigidity given the petitioner’s prior rights and the second respondent’s absence, which precluded a full contest. Drawing on precedents, the judge emphasized that trademark law prioritizes protecting established rights and preventing consumer confusion over procedural formalism. The delay in evidence filing was attributed to administrative oversight rather than mala fide intent, and the petitioner’s market presence justified equitable relief. The judge concluded that reopening the opposition served justice without prejudicing the second respondent, who had not engaged in the proceedings.
Final Decision
The court allowed the petitions, quashing the impugned order dated October 7, 2022. It directed the Registrar of Trade Marks to take the petitioner’s evidence in support of Opposition No. 757461 and Application No. 1551485 on record and to reopen the opposition proceedings for adjudication on merits, with costs borne by the petitioner.
Law Settled in This Case
This judgment reaffirms that prior adoption, continuous use, and registered trademark rights confer a superior claim, enabling courts to set aside procedural abandonments under Rule 45(2) of the Trade Marks Rules, 2017, when supported by substantial goodwill and no mala fide delay. It establishes that judicial discretion can override strict timelines to protect established trademark rights, provided the opposing party’s absence does not hinder a fair hearing, balancing procedural compliance with substantive equity.
Case Details – Case Title: Coaster Shoes Company Private Limited vs Registrar of Trade Marks, Trade Marks Registry and Another, Date of Order: August 16, 2024, Case Number: Commercial Miscellaneous Petition (L) No. 4309 of 2023, Commercial Miscellaneous Petition (L) No. 4305 of 2023, Interim Application (L) No. 7301 of 2023, Interim Application (L) No. 7468 of 2023, Neutral Citation: 2024 SCC OnLine Bom 2871, Name of Court: High Court of Bombay, and Name of Judge: R.I. Chagla.
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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: "Prior Use Triumphs Procedure: Bombay High Court’s Ruling in Coaster Shoes v. Registrar", "Reopening Trademark Oppositions: Balancing Goodwill and Rule 45 Compliance", "Equity in IP Disputes: Judicial Discretion Over Procedural Rigidity in 2024", "Protecting Established Marks: Insights from the TRAVEL FOX Trademark Case", "Goodwill Over Delay: Landmark Judgment on Trademark Opposition Revival".
