Read Time: 09 minutes
In the instant case, the Registrar passed the impugned Order when the 2002 Rules had been superseded by the 2017 Rules, although the proceedings relating to the trademark application and opposition thereto were initiated while 2002 Rules were in force. The Court highlighted that there is a need for clarity on whether the procedural changes introduced by 2017 Rules apply retrospectively to the proceedings initiated under the 2002 Rules
The Delhi High Court on Monday referred the question as to whether the Trademarks Rules, 2017 dealing with procedural aspects and relating to the filing of evidence would apply retrospectively to proceedings initiated under the Trademarks Rules, 2002, to a larger bench for consideration.
A single-judge bench of Justice Sanjeev Narula also referred the question as to whether failure to file evidence in support of the trademark application would tantamount to ‘anything done under the Trademarks Rules, 2002’, which is saved by Rule 158 of the Trademarks Rules, 2017 and would continue to be governed by the Trademarks Rules, 2002.
In the present case, the High Court was considering whether the stipulations of 2002 Rules relating to timelines for submission of evidence are of a mandatory or directory nature.
A Full Bench of the Delhi High Court in the case of Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks (2000) held that Rule 53 (evidence in support of opposition) of the Trade and Merchandise Marks Rules, 1959 was directory, rather than mandatory.
Later, in the case of Sunrider Corporation, USA v. Hindustan Lever Ltd. and Anr (2007), the High Court differed from the views expressed in the above mentioned decision due to the disparities between the repealed provisions of the 1959 Rules and the revised provisions under the 2002 Rules. The Court held that Rule 50(2) of the 2002 Rules is mandatory, rather than directory.
“Interestingly, under the 2017 Rules, the legal position has apparently reverted to the state that existed prior to the enactment of the 2002 Rules … in light of the congruence of 2017 Rules with the 1959 ones, the judgement in Hastimal Jain (Supra) once again becomes germane to the question of whether the Registrar possesses the discretion to admit evidence even when submitted beyond the stipulated period of two months,” observed the high court in its judgment.
While, in the case of Mahesh Gupta v. Registrar of Trademarks and Anr (2023), a coordinate bench of the high court, took a view that the proceedings which were initiated under 2002 Rules would have to be adjudicated under the said Rules.
The High Court did not concur with the above view and said, “the afore-noted decision does not take note of the judgments of the Supreme Court regarding the retrospective application of procedural amendments. Furthermore, Rule 158 categorically provides that the 2002 Rules are repealed. This means that 2002 Rules no longer have any legal force or effect from the time when 2017 Rules came into effect.”
The Supreme Court in a catena of judgments has maintained that procedural amendments are presumed to hold retrospective efficacy, unless the amendment statute explicitly or implicitly suggests to the contrary, it said.
In response to the question as to whether the amendment introduced by 2017 Rules to the limitation of timelines for filing of evidence under the 2002 Rules is a procedural or a substantive one, the high court held as under:
“Since the nature of the provisions regarding timelines of filing evidence, as in the present case, are merely procedural in nature, no party can have any vested rights in the same. The presumption against retrospective application would not apply to such provisions and pending actions would also be governed by the amended procedure.”
The High Court also held that Section 6(e) of the General Clauses Act, 1897 would not protect the applicability of the 2017 Rules to the proceedings before the Registrar, who had refused to take the evidence on record.
“In absence of any saving clause under the 2017 Rules, in the opinion of the Court, the Registrar ought to have decided the matter by taking into account the provisions of Rule 46 of the 2017 Rules and the provisions of Rules 51 of the 2002 Rules would not apply,” it said.
Rule 51(2) of the 2002 Rules reads as “An application for the extension of the period of one month mentioned in sub-rule (1) shall be made in Form TM- 56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.” While, Rule 46(2) provides that “If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application.”
To resolve the inconsistency, the High Court directed to list the matter before the larger Bench for consideration of the issues on July 14, 2023.
Case Title: SAP SE vs. SWISS AUTO PRODUCTS AND ANR.
Please Login or Register
