IP Case Digest · Trade Marks Act s.21
6 judgments of the Delhi High Court and the Madras High Court applying Trade Marks Act s.21, from 2023–2026, each with a headnote by BRB Legal.
Delhi High Court · Set aside
Appeal allowed on a short and useful point: the Registrar had accepted the marks for advertisement by orders giving one set of reasons, and then rejected the same marks by an order whose reasoning was completely opposite. The Court held that the two orders could not coexist and set aside the impugned order on that ground alone.
Madras High Court · Dismissed
Writ seeking a direction to the Registry to receive a notice of opposition filed beyond the four month period in section 21, the delay being attributed to the pandemic. Dismissed: the opposition was filed outside the statutory period and the Registry could not be directed to receive it, the remedy available being an appeal under section 91.
Delhi High Court · Disposed of
Refusal to take further evidence on record under Rule 53 of the 2002 Rules, now Rule 48 of the 2017 Rules, upheld and the appeal dismissed. Following Sun Pharma Laboratories v. Dabur India, the Court held the timelines for evidence in opposition are mandatory and leave the Registrar no discretion to extend. Rule 53 is a standalone provision but cannot be read detached from the framework of the Act: the inflexibility of Rules 50 to 52 cannot evaporate at Rule 53. The residual power is triggered when the Registrar herself thinks further evidence is needed, akin to a court's suo motu power, and the bare language does not allow a party to trigger it. It is not a valve to allow a deluge at the final stage, and even a trickle at a party's behest would render the mandatory timelines otiose. It is to be used in extremely rare circumstances, and cannot operate as a further opportunity for extension. Diligence is expected of applicant and opponent alike, and a party cannot leverage institutional delay to transgress a mandatory timeline.
Madras High Court · Remanded
An opposition was wrongly deemed abandoned for want of evidence. The obligation to file evidence under Rule 50 arises only after the Registrar has served the applicant's counter statement on the opponent under section 21(3) read with Rule 49, and no counter statement was ever served. Evidence is needed only once there is a dispute, and the dispute arises on the counter statement. If none was filed, it is the application that stands abandoned, and that cannot reflect on the opponent.
Madras High Court · Remanded
Opposition deemed abandoned under Rule 45(2) because the letter electing not to adduce evidence was emailed to the Mumbai office rather than Chennai. Set aside: the communication was addressed to the Chennai Registrar, so there was substantial compliance with Rule 45(1). Grant of a registration certificate during a timely appeal under interim stay does not make the appeal infructuous. Remanded for decision on merits in three months.
Delhi High Court · Set aside
An opposition deemed abandoned for want of evidence was restored, and the registration that had followed in the meantime was cancelled. The opponent had never been served with the detailed grounds of the counter statement, only the form, and a counter statement supplied without its grounds does not comply with the Rules. The Registry's own internal noting had acknowledged that the attorney's email address was wrongly recorded and had directed fresh service.
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