Mars Incorporated Vs. Registrar of Trademarks

Introduction

This case arose from the abandonment of a trademark application filed by Mars Incorporated, a well-known multinational company, by the Indian Trade Marks Registry. The application was deemed abandoned under Section 21(2) of the Trade Marks Act, 1999, due to an alleged failure to file a counter-statement following opposition notices. Mars challenged the abandonment on grounds of non-receipt of the opposition notices.

Background

Mars Incorporated filed an application for registration of a mark in Class 30 on 11 February 2019. This application was published in the Trade Marks Journal in September 2021. Two parties, including Cadbury UK Ltd., filed oppositions in January 2022. The Registry claimed that notices of opposition were served on Mars in March 2022 via email. However, the company argued that it never received any such notices through email or any other communication mode.

In February 2023, Mars discovered that its application had been marked as abandoned in a public notice issued by the Registry. Mars immediately filed a representation and later a formal review petition seeking restoration of the application. Despite an earlier directive by the Registry withdrawing similar abandonment notices in other cases, Mars’ application remained marked as abandoned. The review petition was rejected in October 2024, prompting the present appeal.

Legal Arguments and Court’s Analysis

Mars contended that there was no proof of effective service of the opposition notices, and therefore the statutory period to file a counter-statement had not begun. They submitted affidavits affirming non-receipt and relied on various precedents including Rishabh Jain, Purushottam Singhal, and Samsudeen A, where courts had interpreted Rule 18 of the Trade Marks Rules harmoniously with Section 21(2) of the Act.

The Registrar relied on email success reports and claimed that notices were sent to the registered email addresses. However, the Court noted that there was no acknowledgment or confirmation of delivery to Mars or its agents.

The Court emphasized that a literal reading of Rule 18 would lead to procedural inconsistency. It concluded that actual receipt of the notice is essential for the limitation period to start, as required under Section 21(2). Thus, the court found that Mars had not been properly served and had therefore not defaulted.

Conclusion and Directions

The Court set aside the order of abandonment dated 25 October 2024. It remanded the matter to the Trade Marks Registry, directing it to serve fresh opposition notices to Mars’ counsel and allow Mars to file its counter-statement within the statutory period thereafter. The case was disposed of accordingly.

Case Title: Mars Incorporated vs. Registrar of Trademarks & Ors.

Date of Order: 2nd April, 2025

Case No.: C.A.(COMM.IPD-TM) 88/2024

Neutral Citation: 2025:DHC:2463

Name of Court: High Court of Delhi

Name of Judge: Hon’ble Mr. Justice Amit Bansal

Mars Incorporated Vs. Registrar of Trademarks

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.

Neutral Citation: Mars Incorporated v. Registrar of Trademarks & Ors., 2025:DHC:2463

Court: High Court of Delhi

Coram: Hon’ble Mr. Justice Amit Bansal

Date of Judgment: 2nd April 2025:C.A.(COMM.IPD-TM) 88/2024

Relevant Statutes: Trade Marks Act, 1999 – Section 21(2); Trade Marks Rules, 2017 – Rule 18

Citations Relied Upon:

• Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990

• Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641

• Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309