Introduction: This legal case study examines a trademark opposition dispute between Tablets (India) Limited and M/s. Spey Medicals Private Limited, adjudicated by the High Court of Delhi. The core legal issues pertain to procedural compliance under the Trade Marks Act, 1999, and the Trade Marks Rules, 2017, particularly in regard to the timelines for filing and serving counter-statements, submission of evidence, and the consequence of failing to take appropriate steps within the statutory deadlines. The case reflects upon the tension between procedural technicalities and substantive rights and sets a precedent on whether failure to submit evidence or intimate non-submission can lead to automatic abandonment of opposition proceedings.
Factual Background: The Appellant, Tablets (India) Limited, is a company engaged in the business of manufacturing and marketing pharmaceutical and medical preparations. It claims proprietorship over the trademark “CEOF” registered under Class 5 of the Trade Marks Act, which covers medicinal and pharmaceutical products. According to the Appellant, it has been using the mark “CEOF” continuously since December 2011 and the mark has acquired substantial goodwill and recognition in the relevant market. The mark “CEOF” is stated to be exclusively associated with the Appellant.
Respondent No. 1, M/s. Spey Medicals Private Limited, subsequently filed an application for registration of the trademark “CEOFSPEY” under the same Class 5. The Appellant contended that the impugned trademark merely reproduces its prefix “CEOF” and adds the word “SPEY”, which does not add any distinctive character, and therefore the impugned trademark is deceptively similar to its own. The Appellant perceived this act as an attempt to ride on its goodwill and reputation.
Procedural Background: The application for registration of “CEOFSPEY” was advertised in Trade Marks Journal No. 1768 on 24 October 2016. The Appellant filed its notice of opposition under Section 21(1) of the Trade Marks Act on 8 November 2016 before the Registrar of Trade Marks (Respondent No. 2). Pursuant to the opposition, the Registrar issued a statutory notice dated 22 June 2017, directing the Applicant (Respondent No. 1) to file its counter-statement within two months.
According to the Appellant, Respondent No. 1 filed its counter-statement only on 30 August 2017, beyond the statutory period of two months. Moreover, the Appellant alleged that the counter-statement was never served upon it by the Registrar, as mandated under Section 21(3) of the Act. As a result, the Appellant claimed it remained unaware of the counter-statement and was therefore deprived of the opportunity to file evidence under Rule 45.
Subsequently, on 19 April 2018, the Registrar issued a notice of hearing fixed for 4 May 2018. Upon receiving this notice, the Appellant became aware of the counter-statement’s existence and filed written arguments on 30 April 2018. In its written submissions, the Appellant urged the Registrar to consider its arguments, pointing out that it had been unable to file evidence due to non-service of the counter-statement. However, the Registrar passed an order on 22 May 2018 treating the opposition as abandoned under Rule 45(2) of the Trade Marks Rules, on the ground that the Appellant had failed to file evidence within the prescribed time. This impugned order was challenged by the Appellant before the High Court of Delhi.
Core Dispute: The appeal raised four principal legal questions. First, whether the counter-statement filed by Respondent No. 1 was within the prescribed time limit of two months as per Section 21(2) of the Act. Second, whether the counter-statement was properly served upon the Appellant as mandated under Section 21(3). Third, whether the filing of evidence under Section 21(4) and Rule 45 was mandatory, and what the consequence of non-compliance would be. Fourth, whether the Registrar was obligated to consider the Appellant’s written arguments under Rule 50(5) despite the absence of evidence.
Discussion on Judgments: The case referred to and relied upon several judicial decisions that elucidate the interpretation of procedural provisions under trademark law.
The Respondent referred to the judgment in Sun Pharma Laboratories Ltd. versus Dabur India Ltd. and Another, 2024 SCC OnLine DEL 813, wherein the Delhi High Court stressed the importance of maintaining strict timelines in opposition proceedings. The Court held that allowing extensions or flexible interpretations would frustrate the object of the Act and enable parties to indefinitely delay trademark registration.
The Court also considered the judgment in Surinder Corporation, U.S.A. versus Hindustan Lever Limited and Another, 2007 SCC OnLine Del 1018, which established that procedural timelines under Rule 50 (of the earlier Trade Mark Rules, 2002) are mandatory and not directory. The judgment observed that the Registrar does not have the discretion to condone delay or extend statutory periods unless explicitly empowered by the Act.
Further, in Mahesh Gupta versus Registrar of Trademarks and Another, 2023 SCC OnLine Del 1324, the Delhi High Court reaffirmed that strict compliance with Rules 45 and 50 is necessary and non-observance results in procedural consequences such as deemed abandonment or dismissal.
These precedents collectively laid down that the timelines prescribed in trademark opposition proceedings are of mandatory character and must be enforced strictly.
Reasoning and Analysis of the Judge: Justice Tejas Karia, after hearing both sides, addressed each of the four legal issues systematically.
On the question of whether the counter-statement was filed within time, the Court noted that while the counter-statement was dated 30 August 2017, there was no proof to show when the statutory notice issued on 22 June 2017 was actually received by Respondent No. 1. Given that the counter-statement was filed eight days after the two-month window from the date of notice, and lacking conclusive evidence regarding date of service, the Court assumed that the notice may have taken time in delivery. Therefore, the Court refrained from holding that the counter-statement was filed beyond time. The objection regarding delay was accordingly rejected.
On the second issue, regarding service of the counter-statement, the Court referred to Annexures R1 and R2, particularly an email dated 18 December 2017 and an internal note of the Registry, both evidencing that the counter-statement had been served upon the Appellant. The Appellant failed to deny or rebut this evidence, and the Court held that service had been validly effected.
On the third and more substantive issue—whether filing of evidence was mandatory—the Court explained that while Section 21(4) of the Act uses the word “may”, thereby indicating discretion, this discretion is subject to Rule 45(1) of the Trade Marks Rules. Rule 45 provides two clear alternatives: either the opponent must file evidence within two months from service of counter-statement, or inform the Registrar and the applicant in writing that it chooses not to file evidence and will rely on its opposition contentions. If neither of these actions is taken, Rule 45(2) provides that the opposition shall be deemed to have been abandoned.
The Court clarified that though submission of evidence may be optional, communication of the opponent’s intention—either to file evidence or to rely on existing contentions—is mandatory. In the present case, the Appellant had taken neither step and was thus subject to deemed abandonment under Rule 45(2).
Regarding the fourth issue, the Court considered whether the Registrar was obligated to take into account the written arguments filed by the Appellant under Rule 50(5). The Court held that Rule 50 applies only when evidence has been filed and the stage of hearing has been reached after closure of evidence. In the absence of evidence or a declaration not to file evidence, the proceeding does not reach the stage of Rule 50. Consequently, the Registrar was not obliged to consider the written arguments filed unilaterally by the Appellant.
Final Decision: The Delhi High Court upheld the order passed by the Registrar of Trade Marks and dismissed the appeal. The Court found that the Appellant had failed to comply with Rule 45(1) by not filing evidence or formally stating its decision not to do so. Therefore, as per Rule 45(2), the opposition was deemed to have been abandoned. Furthermore, the Court ruled that the Registrar was under no obligation to consider the Appellant’s written arguments since the procedural stage for hearing had not been validly reached. There was no procedural infirmity in the Registrar’s action. The Court declined to interfere with the impugned order and did not impose costs.
Law Settled in This Case: The judgment affirms and reinforces the strict procedural framework governing opposition proceedings under the Trade Marks Act, 1999 and the Trade Marks Rules, 2017. The law settled in this case is that:Where a party fails to file evidence in support of opposition or to communicate its decision not to do so within the stipulated two-month period under Rule 45(1), the opposition is automatically deemed to have been abandoned under Rule 45(2), without requiring any further adjudication or discretion from the Registrar.The provision under Rule 50(5), which requires the Registrar to consider written arguments, applies only after the closure of evidence under Rule 50(1). In the absence of any validly filed evidence or intimation under Rule 45(1), the proceeding does not progress to the Rule 50 stage, and therefore the Registrar is not bound to consider any written arguments filed unilaterally.This decision establishes that while parties may choose not to file evidence, they are statutorily obligated to communicate that choice within time. Procedural non-compliance results in substantive consequences.
Case Title: Tablets (India) Limited Vs Spey Medicals Private Limited and another
Date of Order: 31 July 2025
Case Number: C.A.(COMM.IPD-TM) 76/2022
Neutral Citation: 2025:DHC:6268
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice Tejas Karia
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
