Whether Procedural Changes Introduced By 2017 Trademark Rules Apply Retrospectively To Proceedings Under 2002 Rules? Delhi HC Larger Bench To Decide

The Delhi High Court has referred to the larger bench the issue of whether the rules dealing with procedural aspects, including those relating to the filing of evidence introduced by the Trademarks Rules, 2017, would apply retrospectively to proceedings initiated under the Trademarks Rules, 2002.

The bench of Justice Sanjeev Narula made the larger bench reference while dealing with the issue if the Registrar of Trademarks had rightly employed the 2002 Rules qua filing of evidence in the proceedings relating to the trademark application and opposition, while the Rules were in force.

The bench remarked that it was unable to concur with the view expressed by the Co-ordinate Bench in Mahesh Gupta v. Registrar of Trademarks and Anr, where the court had held that even after the enactment of the Trademarks Rules, 2017, the filing of evidence would be governed by the 2002 Rules if the proceedings relating to the trademark application and opposition were initiated under the 2002 Rules.

While holding that the provisions regarding the timelines for filing of evidence are merely procedural in nature, the court held that Mahesh Gupta judgment does not take note of the decisions of the Supreme Court regarding the retrospective application of procedural amendments.

Justice Narula observed that the saving provision, i.e., Rule 158 of the Trademarks Rules, 2017, only protects what was done under the 2002 Rules. But the same does not dictate that the 2002 Rules continue to govern all aspects of the proceedings after the enforcement of the 2017 Rules, the court said.

Thus, the bench ruled that there was a need for clarity on whether the procedural changes introduced by the 2017 Rules apply retrospectively to the ongoing proceedings initiated under the 2002 Rules. 

Noting that the 2017 Rules relating to filing of evidence have undergone considerable changes, the court said that a determination on this crucial aspect is imperative and that different interpretations would lead to different outcomes resulting in legal uncertainty. 

Therefore, the court said that a definite ruling by a Larger Bench would ensure consistency and predictability in the application of the Rules.

The court has also referred to the larger bench the issue regarding whether the 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 2017 Rules and would continue to be governed by the 2002 Rules.

The court was dealing with an appeal filed against the order of the Registrar of Trademarks, who refused to take on record the evidence filed by the applicant SAP SE, in support of its application for registration of the “SAP” trademark, on the ground of delay.

SAP’s application for registration of the trademark in class 09 was opposed by the respondent, Swiss Auto Products.

In the appeal filed before the Delhi High Court, SAP argued that the delay of three months in filing evidence in support of its application was due to unavoidable circumstances. The delay could have been condoned by the Registrar by exercising the discretion vested in him under Rule 53 of the Trademarks Rules, 2002, SAP said.

The court remarked that the relevant provisions pertaining to filing of evidence supporting the application, have undergone considerable revisions with the enactment of the Trademarks Rules, 2017.

The court observed that Rule 53 of the Trade and Merchandise Marks Rules, 1959, which deals with the timeline for filing evidence in support of opposition, was classified as directory rather than mandatory, by a Full Bench of in Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Mark. 

The court added that under the 2017 Rules, the legal position has apparently reverted to the state that existed prior to the enactment of the 2002 Rules.

Perusing the facts of the case, the court said that the impugned order was passed by the Registrar at a time when the 2002 Rules were superseded by the 2017 Rules, which came into effect on March 06, 2017.

“The 2017 Rules do not contain any clause that provides that the pending proceedings are unaffected and are to continue as per the 2002 Rules. 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,” the court said.

The court observed that in the instant case, the significant action taken under the 2002 rules was filing of the trademark application or submitting the evidence. In view of the saving provision, i.e., Rule 158 of the 2017 Rules, these actions remain valid and would not be invalidated by the coming into force of the 2017 Rules, the court said.

Case Title: SAP SE vs Swiss Auto Products and Anr.

Citation: 2023 LiveLaw (Del) 551

Dated: 03.07.2023

Counsel for the Petitioner: Mr. Peeyoosh Kalra, Mr. CA Brijesh and Ms. Pragati Agrawal, Advocates.

Counsel for the Respondent: Mr. Sanjeev Singh, Advocate for R-1. Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Advocates for R-2.

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