One of the seemingly under-discussed aspects of the Delhi High Court’s decision in Sun Pharma v. Dabur India is the Court’s passing comments on the responsibility to serve the Counter-Statement in trademark prosecution. Passed on February 9, 2024, the High Court Ruling clarified that the deadline to file evidence in opposition cannot be extended by the discretion of the Registrar. However, in doing so the Court also interpreted that the duty to serve the Counter-Statement falls on the Applicant instead of the Registrar. Explaining the legislative scheme of this obligation and discussing its implications, we are pleased to bring to you this guest post by Anurathna Mathivanan and Nivrati Gupta. Anurathna and Nivrati are intellectual property law attorneys practicing at ALG India Law Offices LLP, Delhi. Anurathna is a graduate from Tamil Nadu National Law University, and Nivrati is a graduate from Institute of Law, Nirma University. Views expressed here are those of the authors’ alone.
Whose Serve is it Anyway? Assessing the Sun Pharma v. Dabur Finding on the Applicants’ Obligation to Serve Counter-Statements
By Anurathna Mathivanan and Nivrati Gupta
Does an Applicant, while filing the Counter-Statement at the Trade Marks Registry, also need to serve a copy on its Opponent? In an effort to resolve conflicts in the interpretation of mandatory nature of statutorily prescribed deadlines under the Trade Marks Act, 1999 (“Act”) and Trade Marks Rules (“Rules”), the Delhi High Court’s IP Division in Sun Pharma Laboratories v. Dabur India, determined that the Registrar of Trade Marks does not enjoy discretionary powers to extend time frames that are stipulated in the Rules.
The judgement arose out of an appeal against the decision of the Registrar of Trade Marks (“Registrar”), wherein the opposition was deemed to be abandoned due to the two month time-barred service of evidence under Rule 50 of the Trade Marks Rules, 2002 (“2002 Rules”). In sum, the Court held that a time period stipulated under the Trade Marks Rules is mandatory in nature.
The decision, however, opens a can of worms on the procedure of opposition proceedings at the Trade Marks Registry in respect of service of Counter-Statement. The Court in passing observes that “…Under Rule 50 of the 2002 Rules, the counter statement is to be served by the Applicant itself and not by the Registrar. Under Rule 45 of the 2017 Rules, again service of counter statement is by the Applicant itself and not by the Registrar.” In this post, we attempt to dissect the implications of this observation made by the Court.
On a prima facie view, this observation stands in conflict with the mandate under Section 21(3) of the Act, which provides “(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.” As such, the Act presumably contemplates the duty of service of a Counter-Statement as being upon the Registrar.
1959 Rules, 2002 Rules and 2017 Rules – Mending Invisible Gaps?
The Court’s interpretation in the present decision presumes that the onus of the service of Counter-Statement is on the Applicant, or at the very least, not a duty of the Registrar. While the Court does not extrapolate the reasoning for this observation, a comparison of the 1959 Rules with the 2002 Rules (and the later 2017 Rules) reveals the likely basis of determination by the Court –
| Rule 53(1) of 1959 Rules | Rule 50(1) of 2002 Rules | Rule 44 (1) of 2017 Rules |
| “ (1) Within two months from the service on him of a copy of the counter-statement by the Registrar…” | “(1) Within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow…” | “ (1) Within two months from service of a copy of the counterstatement, the opponent shall either leave with the Registrar, …” |
A plausible reasoning for the Court’s observation crops up from comparing the language of the 1959 Rules with the amended 2002 and 2017 Rules. Curiously omitted in 2002 Rules and the 2017 Rules is the phrase “by the Registrar”. This plausibly opens up the question of whether this omission intends to shift the onus of service of Counter-Statement upon the Applicant, which was earlier upon the Registrar.
The Court further provides the rationale behind this reasoning – “…the time gap or delay between service by the Applicant of the counter statement and by the Registrar of the same counter statement was also sought to be bridged and plugged. Service by the Applicant ensured certainty in service within the deadline rather than service by the Registrar.”
Is the Service Necessarily to be Made “by the Registrar”?
Taking a second dive into the scheme of Section 21 (2) of the Act, the provision prescribes that “…the applicant shall send to the Registrar in the prescribed manner a counterstatement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.” To maintain an application, the Applicant is only required to send the Counter-Statement in the prescribed manner to the Registrar. The Section makes no reference to service upon the Opponent. This position has also been re-affirmed in Pidilite Industries Limited vs The Registrar Of Trade Marks (Para 15), Cadila Healthcare Ltd.vs Union of India and Ors. (Para 4 and 5), Pioneer Overseas Corpn. v. Chairperson (Para 66).
Further, Rule 49 and 44 of the 2002 Rules and 2017 Rules respectively prescribe that “…A copy of the counter-statement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same.”
The 2002 and 2017 Rules, however, include a caveat that the Registrar serves the Counter-Statement ‘ordinarily’. There is no reference to the phrase ‘ordinarily’ in the older 1959 Rules “…A copy of the counter-statement shall be served by the Registrar on the persons giving notice of opposition” [Rule 53(1) of 1959 Rules].
What have the Courts “Ordinarily” Interpreted?
The Apex Court, in Union Of India & Anr vs Hemraj Singh Chauhan reiterated the implication of the phrase ‘ordinarily’ in a statute and observed that “The word `ordinarily’ would convey the idea of something which is done `normally’ … and `generally’ subject to special provision…” . The courts have determined that a word has to be construed in the context to fulfill statutory intent for which it has been used and should not alter the underlying meaning of the provision. The term ‘ordinarily’ necessarily implies the exclusion of “extraordinary” or “special” circumstances.
The Apex Court, while examining the interpretation of “shall” and “ordinarily” in various contexts, has broadly observed that “Whereas “shall” brings a mandatory requirement, the word “ordinarily” brings a situational variation which results in an interpretation that the case may be tried as per the further provisions of the Chapter” (Subramanian Swamy v. Union of India) and “the word “ordinarily”, tones down the force of “shall” which immediately precedes it…” (Shibji Khestshi Tacker v. Commrs. of Dhanbad Municipality).
In the 2002 and 2017 Rules, the expression “…shall be ordinarily served by the Registrar…”, therefore, brings a mandatory requirement upon the Registrar to ensure service of the Counter-Statement within two months ordinarily.
Reading it such that the service may be done by the Applicant itself could defeat the intent of the provision laid down in Section 21 (3) read with Rule 49 in the 2002 Rules/Rule 44 of the 2017 Rules. Interpreting that such service is to be done by the Applicant mandatorily conveys extraordinary circumstances which defeats the interpretation and addition of the term ordinarily.
Final Comments
Even if one is to interpret the effect of removal of the term “by the Registrar” in the Rules, the interpretation should be construed such that it gives effect to the objectives and intent of the statute and interconnected provisions. The Court’s inference leaves open various questions to be considered. It is a settled legal position that the subordinate legislation i.e., the Rules cannot go beyond the statute or cannot contradict the statute in any manner, since such deeming legal fiction would go contrary to the parent enactment. Interpretation of service of Counter-Statement under Rule 50 and Rule 45 of the 2002 and 2017 Rules respectively should be harmonious with the intent of the statute in Section 21(3) of the Act.