Time waits for no one: Delhi High Court rules on the mandatory nature of the trade mark opposition timelines

Introduction

Trademark opposition proceedings serve as crucial mechanisms for safeguarding intellectual property rights and ensuring equity in the commercial area. A recent landmark case, Sun Pharma Laboratories Ltd v. Dabur India Ltd. & Anr., adjudicated by the Hon’ble Delhi High Court, sheds light on the intricate dynamics of trademark disputes and emphasizes the paramount importance of adhering to procedural norms and timelines. In this comprehensive analysis, we delve into the legal intricacies, court proceedings, and broader implications of this case in respect of trademark opposition proceedings.

Trademark Opposition Proceedings

Trademark opposition proceedings are governed by the provisions of the Trademarks Act, 1999, and the Trade Mark Rules, 2017. These proceedings offer aggrieved parties an opportunity to contest the registration of a trademark that potentially infringes upon their existing rights. At the core of these proceedings are stringent time period for filing evidence and serving documents on opposite parties, thereby ensuring fairness and expeditious resolution of disputes.

Case Background

The case of Sun Pharma Laboratories Ltd v. Dabur India Ltd. & Anr. emanated from Sun Pharma’s opposition to Dabur’s trademark application for “Dabur Glucorid KP (Label)” in class 05. Sun Pharma initiated the opposition under the old rules, wherein the responsibility for serving evidence on the opposing party rested with the Registry. Despite Sun Pharma complying with the statutory deadline for filing evidence, a delay of 3 days in serving the evidence on Dabur, giving rise to contentious legal proceedings. Following this delay, Sun Pharma sought an extension of time and requested the learned Registrar to consider its evidence on record. However, the Learned Registrar rejected Sun Pharma’s request, citing the non-extendibility of the time limit prescribed by the rules, the evidence served on Dabur is time-barred and consequently the opposition deeming the opposition abandoned.

Sun Pharma, aggrieved by the ruling, filed an appeal to the High Court. With regards to Sun Pharma’s plea for an extension of time, the Court affirmed that the time limits prescribed by the rules are mandatory in nature and must be strictly complied with. Furthermore, the Court affirmed that neither the former Trade Marks Rules 2002 nor the Trade Marks Rules 2017 grant the Trade Marks Registrar discretion to extend this extension.

Legal Framework and Court Proceedings

At the crux of the legal dispute was the question of whether the delay in serving evidence warranted the abandonment of Sun Pharma’s opposition. The Delhi High Court strictly analysed Rule 50 of the Repealed Rules or Trademarks Rules, 2002, which provides the procedure and time limit for filing evidence in support of opposition. Emphasizing the mandatory nature of these time limit, the court ruled out any discretion to extend deadlines unless specifically directed by the Registrar.

It clarified that under both the repealed and subsequent rules, the Registrar lacked the discretion to grant extensions. The interpretation of Rule 50 emphasized the importance of procedural fairness and efficiency in trademark disputes, ensuring that the trademark registration process remains unaffected by undue delays.

Implications for Trademark Opposition Proceedings

The ramifications of the Court’s ruling extend far beyond the confines of Sun Pharma Laboratories Ltd. v. Dabur India Ltd. & Anr. The case sets a precedent for future trademark opposition proceedings, establishing a framework of unwavering adherence to prescribed timelines and procedural requirements.

Trademark owners are now compelled to exercise extensive vigilance in complying with the timelines provided in the Trademarks Act and Rules. Non-compliance may lead to adverse consequences, including the rejection of oppositions and potential forfeiture of substantive rights. The ruling emphasizes on trademark owners and applicants to adopt a diligent view to ensure the timely submission of evidence and compliance with procedural requirements.

Furthermore, the ruling emphasizes the role of the Registrar of Trade Marks in governing trademark opposition proceedings and ensuring compliance with statutory requirements. While the Registrar’s discretion in granting extensions may be curtailed, their role in facilitating fair and efficient dispute resolution remains pivotal.

Conclusion

The judgement exemplifies the significance of trademark opposition proceedings in safeguarding intellectual property rights and promoting fairness in the marketplace. The judgement also emphasizes upon the necessity for strict adherence to prescribed timelines and procedural requirements, thereby fostering transparency, efficiency, and confidence in the trademark system.

The present article is written by our Associate, Ms. Neha Singh. The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.

Dumplings of Delight: Famous ‘Dolma’ Aunty wins trade mark battle over her iconic momos’ joint name

Registration of a Trade Mark: Importance and Effects

In India, trademarks and its registrations are governed by the Trade Marks Act, 1999 (hereinafter “Trade Marks Act”). The Trade Marks Act guarantees protection for trademarks registered with the Controller General of Patents, Designs, and Trade Marks (CGPDTM), also known as the Trade Marks Registry.

A trademark is a symbol, design, word, or phrase capable of identifying the goods or services of one business from those of others. When a trademark is registered, the owner to the trademark gains “exclusive rights” to its usage.

According to Section 25 of the Trade Marks Act, a trademark remains valid for a period of 10 years after it is registered and the owner may renew the trademark periodically.

It is considered a violation or infringement of trademark to use someone else’s registered trademark without their permission Additionally, using a substantially similar mark for similar goods or services without consent is also deemed as trademark infringement.

In India, trademarks play a pivotal role in the food and beverage industry, contributing significantly to its growth and evolution. A registered trademark stands as a cornerstone for any food company or business within this sector. Registering a trademark enables a food product to carve out its unique identity amidst similar offerings, thereby enhancing its reputation and competitiveness.

Critical Analysis of the Judgement

In a recent landmark judgment in the case of Dolma Tsering v. Mohd. Akram Khan and Another, the Delhi High Court has made a significant ruling in favour of preserving the legacy of ‘Dolma Aunty’ Momos. The court has taken a firm stance by cancelling and removing an individual’s adoption of the registered trademark ‘DOLMA AUNTY MOMOS’. This decision follows a rectification petition filed by the renowned ‘Dolma Aunty’ Momos herself on 24^th September 2018, i.e. in the rectification proceedings titled ‘Dolma Tsering v. Mohd. Akram Khan and Anr.’ The objective of the petition was to challenge and invalidate the ‘Dolma’ mark obtained by Mohd. Akram Khan.

The judgement revolves around Dolma Tsering, the proprietor of Dolma Aunty Momos, who initiated a legal action against Mohd. Akram Khan. She encountered unauthorized use of her trade name by individuals selling identical products. The matter was initially brought before the Intellectual Property Appellate Board (“IPAB”) in 2021. However, with the dissolution of the IPAB on April 4 2021, as per the Tribunal Reforms Act, 2021, the jurisdiction was transferred to the High Courts, leading to the case being heard by the Delhi High Court.

Dolma Tsering had established her business, Dolma Aunty Momos, in Delhi’s Lajpat Nagar in 1994, specializing in Tibetan delicacies, particularly momos, and other products. By 2021, her business had expanded to operate five outlets across Delhi-NCR, earning a solid reputation for quality offerings and services. She successfully obtained the trademark “Dolma Aunty Momos” in 2022, which was officially granted registration on November 17 2023. She argued that Mr. Khan not only adopted a trademark identical to hers but also utilized a name resembling hers. Tsering’s Rectification Petition filed against the Respondent’s adoption of the “Dolma” mark claimed that it was a blatant imitation of her long-established trademark. She filed a case under Sections 11(1), 11(2), 11(3)(a), and 47 of the Trade Marks Act.

Based on the evidence and arguments presented before the Court and despite being served notice, the Respondent had failed to appear, resulting in the case proceeding ex-parte. On March 6 2024, the Delhi High Court ordered the cancellation and removal of respondent’s trademark “Dolma Aunty Momos” from the Trade Marks Register.

The bench of Justice Anish Dayal held, “After considering the aforementioned facts and circumstances, reviewing the documents submitted, and hearing arguments from the Petitioner’s counsel, this court finds merit in the petitioner’s case. Therefore, the trademark held by Respondent No. 1 is to be cancelled and removed from the Trade Marks Register, and accordingly, rectified”.

The court has observed that Dolma Tsering had amassed a significant reputation due to the widespread popularity of momos as a type of street food. Additionally, Tsering received numerous accolades for the exceptional quality of her goods and services. The High Court also asserted that Tsering set up a small momo shop in 1994 and was the “first retailer” of the Tibetan delicacy, which had since become popular across Delhi-NCR. Since the Respondent failed to appear before the court, the allegations of non-use by Tsering remained unchallenged and therefore had to be acknowledged as valid.

Conclusion

This case emphasizes the significance of protecting established trademarks and the legal redress accessible to trademark owners in addressing infringements by entities operating within the same industry. Although this decision is interim, it highlights the potential consequences of trademark infringement, particularly in cases involving confusion and deception.

The present article is written by our Associate, Ms. Neha Singh. The views and opinions expressed in this article are those of the authors and do not necessarily reflect the official policy or position of any agency of the Indian government. Examples of analysis performed within this article are only examples. They should not be utilized in real-world analytic products as they are based only on very limited and dated open source information. Assumptions made within the analysis are not reflective of the position of any Indian government State.