IPAB interprets extension clause in trademark disputes

One of the significant changes brought by the Trade Marks Rules, 2017, was the removal of the extension provision in leading evidence in support of opposition/application. However, the Intellectual Appellate Board (IPAB) has recently interpreted the amended rules and held that the operation of rule 45(2) is not automatic as there exists a provision under section 131 of the Trade Marks Act, 1999, which empowers the Registrar of Trade Marks to extend the time period for actions for which no specific time limit has been provided and filing of evidence in support of the opposition is one such action.

In an appeal filed by Sahil Kohli against the order of the Registrar of Trade Marks, IPAB was faced with the issue of interpretation of rule 45(1) and (2) of the rules, which came into force on 6 March 2017. Under rule 45 (2), if the opponent does not take any action within the prescribed time period, the opposition is deemed abandoned.

IPAB considered the flexibility of the rule 45(2) in line with the judgment on Sunrider Corporation v Hindustan Lever (2007), rendered by Delhi High Court in the context of interpretation of Trade Marks Rules, 2002 (old rules).

Omesh Puri is an associate partner at LexOrbis.