By Titiksha Sinha and Shivani
In the recent case of Sun Pharma Laboratories Ltd, a question was raised before the Hon’ble High Court of Delhi regarding the time limit within which evidence was to be filed by the Opponent in opposition proceedings before the Trade Marks Registry. The Hon’ble Court drew comparison between the provisions of Trade Marks Rules 1956, 2002 and 2017 and pronounced the judgement in conformity with the guidelines of the Registry and statutory provisions of the Trade Marks Act, 1999. The Hon’ble Court vide its order dated February 09, 2024 in C.A. (COMM. IPD- TM) – 146/ 2022, held that if evidence is not filed within the statutory period of 2 months, the opposition would be deemed to have been abandoned and the Learned Registrar has no discretion to extend the time period.
However, the aforesaid judgement suffered some inadvertent errors, counting that at certain places,
it was written that the service of the counter statement is not to be done by the Registrar but the Applicant itself and at certain places instead of ‘evidence’ term ‘counter statement’ was written.
These errors gave rise to a moot point pertaining to the procedure of opposition before the Registry, that the onus to serve the counter statement is on the Applicant and is not a duty of the Learned Registrar, which is evidently in contravention to the provisions of the Act. Later, Dabur India Ltd. highlighted these inadvertent errors and filed the Review Petition No. 347/ 2024 before the Hon’ble High Court of Delhi.
The Hon’ble High Court vide its order dated October 22, 2024 in Review Petition No. 347/ 2024, clarified that a counter statement should be served by the Registrar upon the Opponent, whereas evidence should be served by the parties itself. The Hon’ble Court directed that the term ‘counter statement’ should be corrected and replaced with term ‘evidence’, therefore, reinstating what has been stated in the Act. Further, the Hon’ble Court directed that a fresh copy of the judgement be uploaded as a corrigendum to the original judgement dated February 09, 2024 in C.A. (COMM. IPD- TM) – 146/ 2022.