Raj Vardhan Patodia (HUF) Vs. Registrar of Trade Marks

Raj Vardhan Patodia (HUF) Vs. Registrar of Trade Marks & Anr.:21st April 2025:Case Number: C.A.(COMM.IPD-TM) 13/2024 :2025:DHC:3153:High Court of Delhi:Hon'ble Mr. Justice Amit Bansal

Facts:

Respondent No. 2 filed a trademark application on 6th December 2016, which was opposed by the appellant on 20th February 2020. A counter-statement was served to the appellant on 13th February 2023. The appellant claims to have sent the Evidence in Support of Opposition (EISO) on 30th March 2023 within the statutory time, albeit in photocopy form. The Trade Marks Registry, however, returned the documents requesting the original. The appellant subsequently filed the original EISO on 28th June 2023, which was uploaded to the Registry’s portal on 3rd July 2023. Despite this, the Registrar deemed the opposition abandoned for not filing the EISO in original within time.

Procedural History:Opposition filed: 20 February 2020,Counter-statement served: 13 February 2023,Photocopy EISO sent: 30 March 2023,Original EISO filed: 28 June 2023,Registrar’s order (impugned): 3 November 2023, treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, 2017,Appeal filed under Section 91 of the Trade Marks Act, 1999

Issues:

Whether the Registrar of Trade Marks erred in treating the opposition as abandoned under Rule 45(2) due to non-filing of original EISO within the prescribed timeline? 

Decision:

The Delhi High Court held that:The appellant had demonstrated intent to contest by timely sending a photocopy of the EISO.Upon notification of the error, the original EISO was promptly submitted and accepted on the e-portal.The Registrar's insistence on original copies without prior intimation or flexibility contradicted the intent and procedural fairness.The impugned abandonment order was arbitrary.

Final Order:

The Court set aside the impugned order and directed the Registrar to take the EISO on record and proceed with the opposition proceedings. The registration granted to Respondent No. 2 was also cancelled.

Raj Vardhan Patodia (HUF) vs. Registrar of Trade Marks

Fact of the Case:

The case involves an appeal by Raj Vardhan Patodia (HUF) against the Registrar of Trade Marks and another respondent. The appellant opposed trade mark application no. 3353986, but the opposition was deemed abandoned by the Registrar under Rule 45(2) of the Trade Marks Rules, 2017, for allegedly not filing evidence within two months of receiving the counter statement. The appellant claimed it had sent the evidence affidavit on time, supported by courier receipts, while the respondents argued non-delivery.

Procedural Background in Brief: 

The appellant filed opposition no. 1024552 against trade mark application no. 3353986. The Registrar served the counter statement on December 15, 2021, and later, on September 12, 2023, deemed the opposition abandoned for non-submission of evidence, despite a hearing on September 5, 2023. The appellant appealed under Section 91 of the Trade Marks Act, 1999, challenging this order, asserting the evidence was dispatched within the statutory period.

Provisions of law Referred in Case:

The court relied on statutory provisions: Rule 45 of the Trade Marks Rules, 2017, which mandates filing evidence within two months of receiving the counter statement, and Rule 14, which deems a document served if properly addressed and posted, requiring only proof of dispatch, not delivery.

Reasoning of Court:

The court found the Registrar’s order flawed, as it misinterpreted the appellant’s stance as denying service of the counter statement, whereas the appellant admitted receipt and claimed timely dispatch of evidence on February 1, 2022, within the two-month limit. Supported by a notarized affidavit, cover letter, and courier receipts, the court held that Rule 14 only requires proof of posting, not receipt, and the appellant met this standard. Principles of natural justice further supported considering the opposition on merits, as the evidence was sent during the COVID era, possibly lost in transit.

Decision:  

The court set aside the Registrar’s order of September 12, 2023, restored the opposition, directed the appellant to refile the evidence within one week, allowed the respondent to file its evidence, and cancelled the trade mark registration granted to respondent no. 2. The appeal was disposed of accordingly.

 

Case Title: Raj Vardhan Patodia Vs. Registrar of Trade Marks

Date of Order: March 18, 2025  

Case Number: C.A.(COMM.IPD-TM) 3/2024   

Name of Court: High Court of Delhi at New Delhi  

Name of Hon’ble Judge: Justice Amit Bansal