Introduction
This case study analyzes a judgment from the Madras High Court addressing procedural fairness and the exercise of discretion by the Registrar of Trade Marks in trademark opposition proceedings under the Trade Marks Act, 1999. The appellant challenged an order allowing the opponent to file evidence in support of its opposition despite a disputed service of the counterstatement, raising questions about the reliability of electronic service records and the application of natural justice principles. The court’s decision reflects a balanced approach, prioritizing substantive resolution over technical rigidity while imposing a strict timeline to expedite the process, offering valuable insights into the administration of intellectual property disputes in India.
Factual Background
The appellant, Royal Classic Mills Private Limited, based in Tirupur, Tamil Nadu, filed a trademark application numbered 5987488 in Class 18 on June 20, 2023, with the Trade Marks Registry. The application was advertised on December 25, 2023, prompting the first respondent, The Polo/Lauren Company L.P., a U.S.-based entity, to file a notice of opposition numbered 1291723 on March 19, 2024. The appellant submitted its counterstatement on April 29, 2024, which the Trade Marks Registry recorded as successfully served electronically to the opponent’s provided email ID. However, the opponent claimed non-receipt of the counterstatement and, upon receiving a hearing notice on August 7, 2024, filed an affidavit on August 16, 2024, with annexures including a correspondence history from the Intellectual Property India portal, lacking any record of receiving the counterstatement. The Registrar, accepting this explanation, permitted the opponent to file evidence in support of the opposition via an order dated October 25, 2024, which the appellant contested as procedurally flawed.
Procedural Background
The trademark application process began with the appellant’s filing on June 20, 2023, followed by its advertisement and the opponent’s opposition on March 19, 2024. The appellant’s counterstatement, filed on April 29, 2024, triggered the opposition timeline, with the Registry noting successful electronic service. The opponent’s failure to file evidence within the stipulated period under Rule 45(1) of the Trade Marks Rules, 2017, led to a hearing notice issued on August 7, 2024. The opponent’s subsequent affidavit and the Registrar’s order on October 25, 2024, allowing evidence filing prompted the appellant to file a Civil Miscellaneous Appeal (Trade Mark) No. 18 of 2025 under Section 91 of the Trade Marks Act, 1999, before the Madras High Court. The appeal was heard and adjudicated on July 31, 2025.
Core Dispute
The primary contention was whether the Registrar erred in accepting the opponent’s claim of non-receipt of the counterstatement and allowing evidence filing, despite the Registry’s record showing successful email service. The appellant argued that Rule 14 of the Trade Marks Rules, 2017, deems service complete upon email dispatch to the registered ID, and Rule 18 reinforces this, suggesting the opponent’s claim was dubious and potentially tampered with. The appellant further alleged denial of a fair opportunity to rebut the opponent’s affidavit. The opponent and Registrar countered that the affidavit, supported by annexures, justified the exercise of discretion, aligning with natural justice to avoid abandoning a legitimate opposition due to a service glitch.
Discussion on Judgments
No specific judgments were cited by the parties or the court in the provided order, as the decision rested on the statutory interpretation of Rules 14, 18, and 45 of the Trade Marks Rules, 2017, and the Registrar’s discretionary powers, without reliance on prior judicial precedents.
Reasoning and Analysis of the Judge
Justice Senthilkumar Ramamoorthy began by reviewing the timeline, noting the Registry’s record of successful email service on April 29, 2024, against the opponent’s claim of non-receipt supported by its affidavit and annexures. The judge acknowledged the appellant’s reliance on Rules 14 and 18, which presume service upon email dispatch, but recognized the opponent’s prompt response with the affidavit shortly after the hearing notice. Considering the drastic consequence of abandonment under Rule 45(2), the judge found no evidence of tampering sufficient to discredit the opponent’s submission. The court upheld the Registrar’s discretion, exercised in the interest of natural justice, to allow evidence filing, emphasizing that the process was still in its early stages. The judge also noted the need for expeditious resolution given the application’s pendency since June 2023.
Final Decision
The appeal was disposed of, affirming the Registrar’s order dated October 25, 2024, with a directive to conclude proceedings related to Opposition No. 1291723 and Application No. 5987488 within six months from receiving the court’s order. Both parties were instructed to cooperate fully to meet this timeline, with no costs imposed.
Law Settled in This Case
This judgment establishes that the Registrar of Trade Marks retains discretion to accept an opponent’s explanation of non-receipt of a counterstatement, even when electronic service is recorded as successful under Rule 14 of the Trade Marks Rules, 2017, provided the explanation is supported by credible evidence and aligns with natural justice. It clarifies that such discretion can prevent the deemed abandonment under Rule 45(2), particularly in early-stage proceedings, but mandates expeditious resolution to balance procedural fairness with timely dispute settlement.
Case Details – Case Title: Royal Classic Mills Private Limited vs The Polo/Lauren Company L.P. and Anr, Date of Order: 31.07.2025, Case Number: CMA(TM)No.18 of 2025, Neutral Citation: Not available, Name of Court: High Court of Judicature at Madras, and Name of Judge: Senthilkumar Ramamoorthy.
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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: "Discretion in Trademark Oppositions: Madras High Court’s Ruling on Evidence Filing Delays", "Electronic Service Disputes in IP Law: Insights from Royal Classic Mills v. Polo/Lauren", "Natural Justice Over Technicality: Judicial Oversight in Trade Mark Rule 45 Applications", "Balancing Fairness and Efficiency: Trademark Opposition Proceedings in 2025", "Procedural Flexibility in Trademark Disputes: The Role of Registrar’s Discretion".
