Case Title: Rolls-Royce PLC & Anr. Vs. Union of India & Ors.
Order Date: 08.10.2025
Case Number: W.P. No.25070 of 2018 and W.M.P. Nos.29134, 29135 and 29136 of 2018
Neutral Citation: 2025:MDHC:25070
Name of Court: High Court of Judicature at Madras
Name of Hon'ble Judge: Mr. Justice M. Dhandapani
Facts
Imagine a world-famous brand like Rolls-Royce, known for luxury cars and aircraft engines, facing a copycat in India. The petitioners, Rolls-Royce PLC and Rolls-Royce Motor Cars Limited, are giants in the global engineering scene, working in aerospace, defense, marine, and energy fields. Their iconic logo—the interlocking "double R" standing for founders Charles Rolls and Henry Royce—has been registered and used in over 80 countries for decades, symbolizing quality and prestige. This mark isn't just a design; it's a badge of trust in high-stakes industries.
Trouble knocks when the third respondent, Mr. Naveen Khatri trading as Rishi Hotels in Hyderabad, files a trademark application (No. 182490) in Class 42 for a similar mark. Class 42 covers services like scientific research, design, and legal services—areas where Rolls-Royce operates heavily. Spotting this as a potential threat to their brand's uniqueness, Rolls-Royce jumps in with a notice of opposition on August 27, 2010, before the Trade Marks Registry in Chennai. They argue the mark could confuse consumers and dilute their famous logo. The Registry notifies the applicant, who files a counter-statement served on Rolls-Royce by November 30, 2010. Under the rules, Rolls-Royce then has two months from December 20, 2010, to submit evidence supporting their opposition—like affidavits, sales data, and global registration proofs.
But gathering this isn't simple. Rolls-Royce's offices span continents, so collating documents takes time. Their lawyers request extensions: first, one month to March 20, 2011, then another to January 20, 2012. The Registry seems to grant initial nods, but by February 20, 2012, Rolls-Royce files an interlocutory petition with fees and affidavits to place evidence on record, serving a copy on the applicant. This evidence includes detailed proofs of their mark's worldwide use and reputation. Fast forward to October 17, 2014—the Registry rejects it outright, citing no power to extend beyond three months total under Rule 50 of the Trade Marks Rules, 2002. They lean on Intellectual Property Appellate Board (IPAB) orders (Nos. 120/2012 and 125/2012) binding them as a lower tribunal. Rolls-Royce claims they only got the rejection order in 2015, delaying their challenge. This writ petition follows, seeking to quash the rejection and force the Registry to accept their evidence, arguing the rules allow flexibility for good cause.
Procedural Detail
The saga starts at the Trade Marks Registry under the Trade Marks Act, 1999. After the opposition notice, the Registry issues TOP/2678 on September 20, 2010, calling for the applicant's counter-statement. Served by November 30, 2010, it triggers the two-month evidence window from December 20, 2010. Extension requests via letters (February 8, 2011, and later) push it forward, but the February 20, 2012, interlocutory petition (with fees under Rule 95) hits a wall. The Registry's October 17, 2014, order (MAS-765379) refuses recordal, deeming Rule 50's timeline absolute—no extensions past three months.
Rolls-Royce files this writ under Article 226 of the Constitution on October 2018 (W.P. No.25070/2018), with miscellaneous petitions for stay and interim relief. Heard by Justice M. Dhandapani, arguments span: petitioners' counsel Mr. Rajkumar Jhabakh pushes for directory interpretation via Gujarat High Court precedent; respondents 1-2 (Union and Registry), via Mr. Ravi Meenakshi Sundaram, defend mandatory timelines citing Delhi High Court. Third respondent absent. No affidavits exchanged; pure legal battle on rules' nature. Judgment reserved and pronounced October 8, 2025—14 pages dissecting precedents. Registry's stand: strict timelines curb delays in trademark processing. Post-order, no appeals noted; connected M.P.s closed.
Dispute
At its core, this is a timing tug-of-war in trademark battles: Can a global icon like Rolls-Royce get a grace period to prove its opposition, or does a rigid three-month cap slam the door? Petitioners say yes—rules under Section 131 of the Trade Marks Act, 1999, empower the Registrar to extend for "sufficient cause," making Rule 50 directory, not a guillotine. They highlight their genuine efforts and late notice of rejection, urging equity for a well-known mark against potential confusion. Respondents counter no—the 2002 Rules' "one month in aggregate" and dropped "unless Registrar directs" make it mandatory, aligning with IPAB and Delhi High Court to speed up registrations and prevent endless stalls. Broader stakes: In India's booming IP scene, does flexibility aid justice or clog dockets? Rolls-Royce fears brand erosion; the Registry prioritizes efficiency. The flashpoint: Interpret "shall" in rules as flexible (directory) or ironclad (mandatory), balancing opposer rights with applicant certainty.
Detailed Reasoning Including on Judgement with Complete Citation Referred and Discussed
Justice Dhandapani's judgment is a masterclass in rule interpretation, sifting precedents like a sieve to affirm mandatory timelines without mercy. He starts by framing the clash: Rule 45/50's "shall" under 2002/2017 Trade Marks Rules—directory per Gujarat's Wyeth Holdings Corpn. v. Controller General of Patents, Designs & Trade Marks (2006 SCC OnLine Guj 620), or mandatory per Delhi's Ms. Aman Engineering Works v. Registrar Trade Marks (2022/DHC/004701)? The court extracts Wyeth's key para 34-36, where Gujarat holds "shall" directory post-Salem Advocate Bar Assn., Tamil Nadu v. Union of India (2005) 6 SCC 344, as legislature left evidence filing to rules (Section 21(4)), distinguishing substantive opposition (Section 21(1)) from procedural evidence. Wyeth warns mandatory reading risks ultra vires Section 131's extension power, urging harmonious construction for fairness in global oppositions.
But Delhi's Aman dismantles this. The judge quotes paras 41-44, noting deliberate 2002 Rules shifts: Rule 50(1)'s "not exceeding one month in aggregate" caps extensions (absent in 1959 Rules' Rule 53); deleting "unless Registrar directs" from Rule 50(2) kills discretion. Citing Sunrider Corpn., U.S.A. v. Hindustan Lever Ltd. (2007 SCC OnLine Del 1018), which invokes Chief Forest Conservator (Wildlife) v. Nisar Khan (2003) 4 SCC 595 for rules as Act extensions, and Ramachandra R. v. Regional Transport Officer (2011) 1 SCC 402 for "shall" as obligatory sans leeway. Aman's para 13-20 rejects Wyeth as rewriting statute, deeming non-filing auto-abandons opposition (Rule 50(2)), no Rule 105 revival per Section 131 as Rule 50 self-limits. Echoed in Mahesh Gupta v. Registrar of Trademarks (2023 SCC OnLine Del 1324, paras 13-21), which calls Wyeth "otiose," stressing "aggregate" mandates three-month max.
IPAB's Sahil Kohli v. Registrar of Trade Mark (2018 SCC OnLine IPAB 55, paras 53-57) gets scrutiny: It deems 2017 Rule 45 directory, as omitting 2002's limits revives Section 131's broad discretion. But the judge favors Delhi: Even 2017's deletion keeps timelines inflexible, preventing "infinite delays" per Registry policy. Para 46-48 synthesizes: "One month aggregate" and discretion's ax signal mandatory; evidence runs from counter-service, direct to applicant, non-filing deems abandonment sans extension under Rules 101/109. This curbs abuse, aligning with Act's efficiency (Section 21). Wyeth/Sahil's directory view ignores legislative intent for speed post-1959 laxity. The impugned order holds: Registry bound by IPAB's own 2012 rulings (120/2012, 125/2012) limiting to three months. No laches—2014 order final; writ's 2018 filing irrelevant to merits. Result: Petition fails; evidence stays out.
Decision
Writ petition dismissed—no merits; impugned October 17, 2014, order upheld. Registry's rejection of evidence under MAS-765379 stands; opposition deemed abandoned for delay past three months. No costs. Connected miscellaneous petitions closed. Directions: None further; proceedings end.
Suggested Titles for this Legal Analytical Article:
Double R Dilemma: Mandatory Timelines in Trademark Oppositions Under the 2002 Rules
Shall or May? Decoding Directory vs. Mandatory Evidence Filing in Rolls-Royce's IP Battle
Three Months and Out: Madras High Court Locks Down Extensions in Trade Mark Disputes
From Wyeth to Aman: Evolution of Strict Timelines in India's Trademark Registry
Global Brands vs. Local Rules: The Mandatory Bite of Rule 50 in Opposition Proceedings
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
