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).
In the Sunrider judgment, it was held by the high court that the Registrar of Trade Marks does not have the power to extend the time for filing of the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under rule 50 (1) of the old rules, and that the non-filing of the evidence affidavit within the prescribed time would by itself lead to the conclusion that the opposition has been abandoned. It was also held that the registrar has also no discretion in extending the time beyond the maximum period of one month prescribed under rule 50(1).
IPAB analysed and interpreted the new rules of 2017 as well as old rules of 2002 and also considered whether the interpretation rendered by Delhi High Court under the old rules can be applied to the context of the new rules. In the old rules, the registrar had the power to extend the time period by one month after the passage of two months.
The old rules specifically used the words “not exceeding one month in aggregate thereafter” for the extension of time. IPAB observed that insertion of such words were weighed heavily by Delhi High Court while giving the mandatory effect to the interpretation of rule 50(1) of the old rules. The new rules have completely omitted the aspect of granting of period of extension. Rule 50 of the old rules restricted the discretion of the Registrar of Trade Marks to one month by providing the wording “not exceeding one month in aggregate thereafter.”
It was held by the IPAB that the wordings “not exceeding one month in aggregate thereafter”, which were present in the old rules gave mandatory effect to the operation of the said rule by restricting the discretion of the registrar in granting the period of extension of time to the period of one month in aggregate and not thereafter.
Since the wording “not exceeding one month in aggregate thereafter” has been omitted from rule 45 of the new rules, the effect of the said omission of the said wording from rule 45 leads to removal of the discretion upon the registrar’s power to extend the time period for filing the evidence in support of the opposition.
The registrar by virtue of section 131 of the Trade Marks Act enjoys the discretion to extend the time period, which is not provided under the act. The filing of the evidence in support of the opposition is an act for which no time limitation has been provided by the act but by the rules, for which the registrar is within its discretion to extend the time period. It was held that the operation of rule 45(1) and 45(2) in a rigid and inflexible manner would lead to being held ultra vires to section 131 of the act.
There are a number of judgments where it was held that the discretionary powers of the registrar to allow the material evidence to be taken on record must be exercised liberally. Filing of evidence in support of opposition or application at times may not be possible due to various unavoidable and cogent reasons, especially for the stakeholders who have presence in various countries, and collection of information and documents can be time consuming and therefore, this interpretation by the IPAB is a positive step towards a fair trial. Under section 131 of the act, the registrar has wide discretion to extend the time for filing evidence in support of opposition/application and it can be said that the rule has been interpreted to achieve the goal of maintaining the purity of the register.
Omesh Puri is an associate partner at LexOrbis.
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