Summary: In a recent decision, the Delhi High Court highlights critical issues surrounding the service of notice in trademark proceedings.
Introduction
In a recent decision of the Delhi High Court in Mars Incorporated v. Registrar of Trade Marks & Ors., it tackled the deemed abandonment of a trademark application due to non-compliance with statutory timeframes. The Delhi High Court's ruling, delivered on 2 April 2025 in C.A.(COMM.IPD-TM) 88/2024, highlights issues surrounding the service of notice in trademark proceedings.
Brief facts
The global confectionary company, Mars Incorporated ("Appellant"), challenged an order of the Trade Marks Registry deeming their trademark application abandoned under Section 21(2) of the Trade Marks Act, 1999 ("Act"). The Appellant maintained that it had not received the Notices of Opposition at all, despite the Registry's contention that the emails had been served. The Deputy Registrar dismissed the Appellant's review petition, leading to the present appeal.
It is useful to note that this case emerged within the broader context of mass deemed abandonment orders issued by the Trade Marks Registry in early 2023. The Registry's Public Notices had declared numerous applications abandoned for having failed to file counter-statements. The Appellant's application was one among many caught in this wave of abandonments. Naturally, this invited reactions from across the intellectual property community. A subsequent writ petition, Intellectual Property Attorneys Association (IPAA) & Anr. v. Controller General of Patents Designs & Trade Marks (CGPDTM) & Anr. (W.P.(C)-IPD 21/2023), highlighted many systemic issues related to service and corresponding widespread prejudice to applicants. In response to that case, the Registry voluntarily undertook to withdraw the Public Notices in question, and revert all the concerned applications to their original status. However, Mars' trademark application was still listed as abandoned, which led to the present suit.
Court Findings
The matter focused on the relation between Section 21(2) of the Act and Rule 18 of the Trade Marks Rules, 2017 ("Rules"). Section 21(2) states that a counter-statement to an opposition notice must be filed within two months of "receipt" of the notice, while Rule 18(2) deems service complete upon "sending" an email. The semantic discrepancy between "receipt" and "sending" became the centre of discussion, as it invited procedural ambiguity.
The Delhi High Court aligned with the Madras High Court's decision in Samsudeen A v. Registrar of Trade Marks (Decision dated 7 November 2024, C.M.A(TM).No.10 of 2024), and adopted a purposive interpretation of Rule 18(2), to "align the Rule with the legislative intent and safeguard the rights of applicants". The Court emphasized that the statutory timeline under Section 21(2) should commence from the actual "receipt" of the notice, not merely the transmission of an email.
The Court also took note of the Appellant's affidavits, which confirmed non-receipt of the notices. According to the Court, the Registrar's order which noted only an email "sent success report" as opposed to an acknowledgement of receipt, raised doubts regarding proper service.
Also drawing on precedents from Rishabh Jain v. Registrar of Trade Marks (Delhi High Court, decision dated 1 March 2023, W.P.(C)-IPD 67/2021 & CM APPL. 52733/2019), and Purushottam Singhal v. Registrar of Trade Marks (Delhi High Court, decision dated 23 May 2022, C.A. (COMM.IPD-TM) 13/2021), the Court underscored the necessity of proving actual service. In those cases, the orders had been set aside where such proof was lacking.
Analysis
This decision clarifies the interpretation of service requirements in trademark proceedings, and specifically trademark opposition matters, emphasizing the importance of actual receipt over mere transmission. The Court's purposive interpretation of Rule 18(2) aligns procedural rules with the substantive intent of Section 21(2), safeguarding the rights of trademark applicants.
This decision clearly highlights the need for procedural clarity and consistency in trademark proceedings to avoid ambiguities that could prejudice applicants. At the same time, the decision imposes an evidentiary burden on the Trade Marks Registry to demonstrate effective service. Going forward, email "sent success reports" alone may not suffice; evidence of actual receipt, such as acknowledgments, would be crucial.
What does this mean for actual practice? For the Trade Marks Registry, it must ensure robust service mechanisms that provide verifiable proof of receipt. For trademark applicants, it becomes imperative to maintain meticulous records of communication, be cognizant of statutory timelines, and regularly – and independently – monitor application status.
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