In a judgment rendered by the Hon’ble Mr. Justice Amit Bansal of the Delhi High Court on 2nd April 2025, the appeal titled Mars Incorporated v. Registrar of Trademarks & Ors., registered as C.A. (COMM.IPD-TM) 88/2024, presented a detailed examination of procedural compliance within the Indian trademark opposition regime. The appellant, Mars Incorporated, a globally renowned American multinational, contested the abandonment of its trademark application under Section 21(2) of the Trade Marks Act, 1999. The appeal culminated in a decision that clarified the standard of “service” under Section 21 and Rule 18 of the Trade Marks Rules, 2017.
Mars Incorporated, the appellant, is the proprietor of several globally recognised brands including MARS, SNICKERS, MILKY WAY, BOUNTY, TWIX, GALAXY, PEDIGREE, WHISKAS, and M&M’s. The dispute in question related to its trademark application no. 4083355 in Class 30, filed on 11th February 2019. The mark was published in the Trade Marks Journal on 13th September 2021, and was thereafter opposed by two parties: respondent no. 2 and respondent no. 3. The Registrar of Trademarks, via despatches dated 7th March 2022, allegedly served the Notice of Opposition on Mars.
On 6th February 2023, the Registry published a list of trademark applications deemed to have been abandoned, which included the appellant’s mark, on grounds that no counter-statement had been filed in response to the opposition. Mars contended that it had not received any Notice of Opposition, and hence, the statutory two-month window for filing a counter-statement under Section 21(2) of the Act never commenced.
To address the procedural mishap, Mars submitted affidavits from its legal representatives and agents asserting that no communication—either by email, post, or courier—had been received. It then filed a review petition dated 5th September 2023, which was dismissed by the Registrar via order dated 25th October 2024, thereby confirming the abandonment. Mars challenged this order through the instant appeal under Section 91 of the Trade Marks Act.
During the proceedings, the appellant’s counsel, Mr. Pravin Anand, argued that the Registrar erred in mechanically deeming the application abandoned without verifying actual service of the Notice of Opposition. Relying on judicial precedents including Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990; Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641; and Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309, he contended that without verifiable proof of service, the mandatory timeline under Section 21(2) does not begin to run.
The learned Central Government Standing Counsel, Ms. Nidhi Raman, appearing for respondent no. 1, the Trademark Registry, submitted that while email was sent on 7th March 2022, there was no record of delivery acknowledgement. Respondent no. 3, however, argued that the notice was emailed to the official address listed in the trademark application and that service should be deemed complete under Rule 18 of the Trade Marks Rules.
The crux of the matter revolved around the interpretation of Rule 18 vis-à-vis Section 21(2) of the Trade Marks Act. Section 21(2) mandates that the Registrar serve the opposition notice on the applicant, who must then file a counter-statement within two months of receipt. Rule 18(2), however, states that service is “deemed” to have been completed at the time of sending the email. This discrepancy gives rise to an interpretational conflict: while the Act predicates the response period on actual receipt, the Rules suggest that mere dispatch suffices.
Justice Amit Bansal, after examining the statutory language, found that Rule 18 cannot override the express language of the parent statute. Referring with approval to the Madras High Court’s reasoning in Samsudeen A, he held that Rule 18 must be interpreted purposively to harmonise with Section 21(2), thereby requiring proof of actual receipt or constructive receipt for the abandonment to be valid.
The Court also noted that the impugned order of the Registrar did not adequately consider the affidavits produced by the appellant, nor did it provide any evidence of service beyond an email dispatch record. In fact, the Registrar’s own reasoning confirmed acknowledgment of service only on the part of the opponents and not the applicant. The absence of any delivery failure report does not amount to conclusive proof of service. Hence, the application could not have been legally abandoned under Section 21(2).
The decision of the Court, therefore, set aside the impugned abandonment order dated 25th October 2024 and remanded the matter to the Trademark Registry. The Registry was directed to re-serve the Notice of Opposition to Mars’ legal counsel within two weeks, and Mars was granted the opportunity to file its counter-statement as per statutory timelines.
The decision reaffirms the foundational procedural principle that abandonment of rights cannot occur without demonstrable and effective service. It emphasises that procedural rules must yield to the substantive requirement of ensuring fair opportunity and due process to trademark applicants.
This case significantly contributes to Indian trademark jurisprudence by resolving the interpretational tension between Section 21(2) of the Act and Rule 18 of the Rules, reinforcing that the statutory period for filing counter-statements must begin only upon actual receipt, not presumptive service. This interpretation will likely have a far-reaching impact on a host of trademark opposition proceedings, many of which have faced administrative setbacks due to procedural lapses or unverified email service.
In conclusion, the Delhi High Court has not only upheld the principles of natural justice and due process but has also provided judicial clarity on an increasingly relevant procedural ambiguity. The ruling strikes a balance between administrative efficiency and procedural fairness in trademark adjudication, restoring confidence in the opposition process for international and domestic applicants alike.
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Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990
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Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641
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Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309
