### Introduction
This case revolves around a significant legal reference placed before a Division Bench of the High Court of Delhi concerning the applicability of procedural rules under the Trade Marks Rules, 2017 to ongoing trademark opposition proceedings that were initiated under the repealed Trade Marks Rules, 2002. The reference arose from doubts expressed by a learned Single Judge in the matter of SAP SE v. Swiss Auto Products & Anr. regarding the correctness of an earlier decision in Mahesh Gupta v. Registrar of Trademarks & Anr. The core issue pertains to whether changes introduced by the 2017 Rules, particularly those relating to timelines for filing evidence in support of oppositions or applications and the concept of deemed abandonment for non-compliance, should apply retrospectively. The Division Bench, comprising Justices Yashwant Varma and Dharmesh Sharma, examined the statutory framework, the impact of repeal provisions, and the nature of procedural amendments to resolve whether such rules alter the course of pre-existing proceedings. This judgment clarifies the interplay between old and new rules in trademark adjudication, emphasizing the preservation of actions taken under prior regimes.
### Factual Background
The factual matrix involves two separate trademark disputes consolidated for reference. In the first, SAP SE sought registration of the mark "SAP" under Class 9 on December 6, 1999. The application was advertised in the Trade Mark Journal on January 1, 2007, and opposed by Swiss Auto Products on August 14, 2007. SAP SE received notice of the opposition on October 24, 2011, and filed its counter-statement on December 21, 2011. Swiss Auto Products filed evidence in support of opposition on October 19, 2013, after seeking extensions. SAP SE then requested extensions to file evidence in support of its application on January 9, 2014, February 12, 2014, March 11, 2014, and April 9, 2014, ultimately submitting it on May 9, 2014. The Registrar rejected SAP SE's evidence on June 12, 2019, citing non-compliance with timelines under the 2002 Rules. In the second dispute, Mahesh Gupta opposed the registration of the mark "JKENT" under Class 32 filed by the second respondent on April 28, 1998. Mahesh Gupta filed opposition on September 15, 2006, and the counter-statement was submitted on April 12, 2008. Evidence in support of opposition was filed by Mahesh Gupta on June 10, 2010, with an extension request, and fully submitted on September 25, 2010. The Registrar deemed the opposition abandoned on August 7, 2019, invoking the 2017 Rules.
### Procedural Background
The proceedings in both matters commenced under the 2002 Rules. In SAP SE's case, the opposition process unfolded with filings and extensions sought prior to the 2017 Rules' enforcement on March 6, 2017. The Registrar's rejection order came post-2017, applying the old rules' strict timelines. SAP SE appealed to the High Court, where a Single Judge referred the matter to a larger bench on July 3, 2023, questioning retrospectivity. In Mahesh Gupta's case, similar delays occurred in evidence filing, and the Registrar applied the 2017 Rules to deem abandonment. Mahesh Gupta appealed, and a Single Judge in 2023 upheld the abandonment under the 2002 Rules, interpreting the repeal clause to preserve prior actions. The Division Bench heard arguments from all parties, including the Registrar, and reserved judgment on January 9, 2024, pronouncing it on March 13, 2024, in LPA 429/2023 and C.A. (COMM.IPD-TM) 130/2021.
### Core Dispute
The central controversy hinges on the retrospective application of procedural provisions in the 2017 Rules to trademark oppositions initiated under the 2002 Rules. Specifically, the dispute focuses on Rules 45 and 46 of the 2017 Rules, which introduce deemed abandonment for failing to file evidence within prescribed timelines—two months for opposition evidence, extendable by one month, and similar for application evidence. The 2002 Rules (Rules 50 and 51) had stricter language with phrases like "not exceeding one month," leading to debates on whether they embodied deemed abandonment implicitly. The reference questions whether failure to file evidence under the 2002 Rules constitutes "anything done" saved by Rule 158 of the 2017 Rules, thus continuing under the old regime, or if the new rules' procedural nature mandates retrospectivity, potentially reviving abandoned proceedings. This raises broader issues of statutory interpretation, the effect of repeal without explicit savings for pending matters, and the balance between procedural efficiency and vested rights in ongoing litigations.
### Discussion on Judgments
The parties and the court extensively referenced prior judicial precedents to argue their positions on retrospectivity and procedural rules. SAP SE relied on Garikapati Veeraya v. N. Subbiah Choudhry, AIR 1957 SC 540, to contend that procedural changes apply retrospectively unless they impair vested rights, asserting that the 2017 Rules relaxed timelines and should govern post-enforcement decisions. The first respondent in SAP SE's reference cited New India Assurance Co. Ltd. v. Shanti Misra, (1975) 2 SCC 840, in the context of procedural amendments not affecting accrued rights, arguing that the Registrar's discretion under the old rules was limited. Mahesh Gupta invoked Hitendra Vishnu Thakur v. State of Maharashtra, (1994) 4 SCC 602, to emphasize that procedural rules are retrospective only if they do not prejudice parties, highlighting the saving clause in Rule 158 as preserving 2002 proceedings. The second respondent in Mahesh Gupta's appeal referred to Commissioner of Income Tax v. Shah Sadiq & Sons, (1987) 3 SCC 516, to argue that repeal erases prior rules unless saved, but contended that "anything done" includes incomplete actions like evidence filing, thus applying old rules. The court discussed Wyeth Holdings Corporation v. Registrar of Trade Marks, 2009 (40) PTC 519 (Del), where a Division Bench interpreted Rule 50 of the 2002 Rules as not mandating abandonment if extensions were sought bona fide, but the present Bench distinguished it as contrary to statutory language. Additionally, the court analyzed Jose Paulo Coutinho v. Maria Luiza Valentina Pereira, (2019) 20 SCC 85, in the context of procedural retrospectivity not applying to substantive rights, reinforcing that deemed abandonment under 2002 Rules attains finality. The Single Judge's opinion in SAP SE v. Swiss Auto Products & Anr., 2023 SCC Online Del 1324, was critiqued for overlooking the saving clause's broad scope, while Mahesh Gupta v. Registrar of Trademarks & Anr., 2023:DHC:1623, was upheld as correctly applying the 2002 Rules to pre-2017 filings.
### Reasoning and Analysis of the Judge
The Division Bench meticulously dissected the trademark statutory framework, beginning with the evolution from the 1959 Rules to the 2002 and 2017 regimes. Justice Yashwant Varma, authoring the judgment, analyzed Rule 158 of the 2017 Rules, which repeals the 2002 Rules "without prejudice to anything done under such rules," interpreting "anything done" expansively to include all steps in ongoing proceedings, such as filing oppositions and evidence, thereby shielding them from new rules. The Bench reasoned that procedural changes, while generally retrospective, do not apply if they disrupt vested positions or finalities achieved under prior laws, drawing a distinction from pure procedural amendments like court fees. Examining the phrase "not exceeding one month" in Rules 50 and 51 of the 2002 Rules, the court held it imposes an inflexible cap, implying deemed abandonment for non-compliance, akin to the explicit provision in the 2017 Rules. The analysis rejected the SAP SE Single Judge's view that the 2017 Rules reverted to the flexible 1959 regime, noting that the 2002 Rules introduced rigidity to expedite resolutions, and repeal does not revive abandoned rights unless expressly provided. The Bench critiqued the notion that post-2017 decisions must apply new rules, emphasizing that the right to file evidence lapses irrevocably under the old timelines, unaffected by later enactments. Balancing efficiency in trademark adjudication with fairness, the court concluded that applying 2017 Rules retrospectively would undermine the legislative intent of the 2002 Rules and lead to chaos in pending matters.
### Final Decision
The Division Bench answered the reference questions in the negative, holding that procedural rules under the 2017 Rules do not apply retrospectively to proceedings initiated under the 2002 Rules. Failure to file evidence under the 2002 Rules constitutes "anything done" saved by Rule 158, continuing to be governed by the old rules. Consequently, in SAP SE's appeal, the Registrar's rejection of evidence was upheld under the 2002 Rules, and the appeal was dismissed. In Mahesh Gupta's LPA, the Single Judge's order deeming opposition abandoned was affirmed, though corrected to apply the 2002 Rules instead of 2017, and the appeal was dismissed.
### Law Settled in This Case
This judgment settles that the Trade Marks Rules, 2017 do not retrospectively govern procedural aspects like evidence filing timelines in oppositions initiated under the 2002 Rules, due to the saving clause in Rule 158 preserving prior actions. It clarifies that the phrase "not exceeding one month" in the 2002 Rules mandates strict compliance, leading to deemed abandonment, which attains irrevocability and cannot be revived by subsequent rules. The decision reinforces that procedural amendments apply retrospectively only if they do not impair finalities or vested positions under repealed laws, providing clarity for trademark registries in handling legacy proceedings.
### Case Details
Case Title: Mahesh Gupta vs Registrar Of Trademarks & Anr.
Date of Order: 13 March, 2024
Case Number: LPA 429/2023 & C.A. (COMM.IPD-TM) - 130/2021
Neutral Citation: 2024:DHC:2053-DB
Name of Court: High Court of Delhi
Name of Judge: Yashwant Varma and Dharmesh Sharma
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:
1. Retrospectivity of Procedural Amendments in Trademark Law: Analyzing the Delhi High Court's Ruling in Mahesh Gupta v. Registrar of Trademarks
2. Deemed Abandonment in Trademark Oppositions: The Interplay Between 2002 and 2017 Trade Marks Rules
3. Saving Clauses and Repealed Rules: A Critical Examination of Evidence Filing Timelines in Indian Trademark Proceedings
4. Procedural Rigour vs. Retrospectivity: The Division Bench Perspective on Trademark Rule Transitions
5. Preserving Vested Rights in Trademark Disputes: Insights from the Mahesh Gupta Reference Case
6. The Finality of Deemed Abandonment: Judicial Interpretation of Trade Marks Rules' Evolution
7. Repeal and Revival in IP Law: Delhi High Court's Stance on Applying New Rules to Old Proceedings
8. Timelines and Abandonment: Settling the Debate on Retrospective Application in Trademark Adjudication
