Analysing the pitfall of procedural technicalities vis-à-vis Delhi HC interpretation of opposition timelines under Trademark Rules

In a seminal clarification, the Hon’ble Delhi High Court issued a corrigendum on October 22, 2024, in the case of Sun Pharma Laboratories Ltd vs Dabur India Ltd. & Anr., (C.A.(COMM.IPD-TM) 146/2022). This focused on the obiter dictum regarding the service of the counterstatement, rather than the substantive aspect of the judgment (which remains unchanged), and provides a nuanced understanding of trademark law, specifically the rules and provisions related to trademark opposition procedure.

The clarification sheds light on the procedural requirement of serving the counterstatement which, while not the central issue in the case, provided a much-needed elucidation on this specific procedural aspect, which was previously unclear, and will likely have implications for future cases involving trademark oppositions.

In the initial judgment, the Hon’ble Court's interpretation presupposed that the onus of serving the counterstatement lies with the applicant, or at the very least, that the Registrar bears no such burden. To dispel any confusion, the Delhi High Court explicated,

"It is again clarified that, insofar as counterstatements are concerned, the same, upon being filed by the Applicant, in accordance with Section 21 of the Trade Marks Act, 1999, would have to be served by the Registrar to the Opponent. Insofar as evidence is concerned, direct service by the parties itself would trigger the reply period for the parties to file their respective evidence."

Pertinently, this clarification aligns with the Hon’ble Bombay High Court's decision in Coaster Shoes Company Pvt. Ltd. v. Registrar of Trademarks & Anr, (COMMP(L) 4309 of 2023), wherein it was held that Section 21 of the Trade Marks Act mandates the Registrar to serve the counterstatement.

Departing from the aforementioned, this article pivots to a distinct aspect of the case, one that highlights procedural aspects and their weightage in legal proceedings. In the present case, the concept of extension of time vis-à-vis delayed service was discussed. The appellant, Sun Pharmaceuticals, sought relief from an adverse order whereby the Registrar of Trade Marks denied their request for an extension to submit evidence under Rule 50(3) of the Trade Marks Rules, 2002. Consequently, the opposition was deemed abandoned under Rule 50(2) of the 2002 Rules. In its comprehensive analysis, the Court meticulously examined the timeframes outlined in the Trade Marks Rules of 1959, 2002, and 2017, paying particular attention to the presence and absence of specific terms. Ultimately, the Court observed that the appellant had filed evidence in support of the opposition in the present case within time and that although there was a delay in sending a copy of the evidence to the applicant, this did not constitute a material breach. Notably, the applicant failed to file evidence despite seeking an extension. In light of these facts, the Court held that the opposition cannot be deemed abandoned and ordered the case to be decided on merits.

Evidently, this raises a crucial question that warrants careful deliberation – the settled legal position of procedural laws (subordinate legislation) cannot go beyond or contradict the substantive law in any manner. Undoubtedly procedural laws are essential in regulating legal proceedings. However, the same cannot go beyond the statute in any manner. In fact, in the event of a conflict, substantive laws prevail. In the same vein, if the aforementioned case was in fact marred by procedural lapses, would the merits of the case, which address the core issues and rights at stake, be prioritized over procedural laws, which primarily focus on formalities and processes? Moreover, if procedural laws are given significance over the merits of a case, what implications do they have in setting precedents? Does prioritizing procedural laws over substantive merits undermine the pursuit of justice? In the case of M/S Ramnath Exports Pvt Ltd vs Vinita Mehta & Anr., (Civil Appeal No. 4639 of 2022), the Hon’ble Supreme Court emphatically held that a litigant's substantive rights should not be denied due to a procedural defect that can be cured. The Bench, comprising Justice Indira Banerjee and Justice JK Maheshwari, unequivocally stated that, “It is a trite law that the procedural defect may fall within the purview of irregularity and capable of being cured, but it should not be allowed to defeat the substantive right accrued to the litigant without affording reasonable opportunity."

Mr. Pravin Anand (amicus to the court) had expressly pointed out in the present case that, “the scheme of Section 21 of the 1999 Act is that Section 21(2) provides for deemed abandonment of the application in the case of non-filing of counter statement to an opposition. However, Section 21(4) merely states that the evidence has to be filed within the prescribed period and no deeming fiction is contained in the statute itself. The deeming fiction comes and is introduced in the Rules, in particular in Rule 45 of the 2017 Rules, which has to be read in consonance with Section 21(4) of the 1999 Act and not in an opposing direction.”

Procedural laws provide structure; they must not impede substantive rights, as emphasized by the apex court. The jurisprudence of it being procedures should support, not hinder, justice. Having said that, on the other side, how far should the courts go in setting aside procedural defects to uphold substantive rights?

About the authors: Santrupt Satapathy is a Principal Associate and Saiesha Dhawan is an Associate at ZeusIP Advocates LLP.

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