Evidence in Opposition Process  – Trademark Registration in Tirupur

Evidence in Opposition Process  – Trademark Registration in Tirupur

Section 21(4) provides that “any evidence upon which the opponent or the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard if they so desire”. The rules framed under this Act provide the procedure for filing evidence in support of opposition, evidence in support of application and evidence in reply by opponent. Section 129 provides that evidence before Registrar shall be given by affidavit. Rule 120 prescribes the manner in which it is to be made.

Evidence in support of opposition

It is to be noted that important changes have been made in the above rule, as compared to the corresponding rule 53 of the Trade and Merchandise Marks Rules, 1959. The present rule 45(1) provides for an extension of the period of two months by one month. However it explicitly enacts that the extension of the period will not be “exceeding one month in the aggregate.” Secondly, in sub-rule (2), the expression “unless the registrar otherwise directs” occurring in the former sub-rule (2) of rule 53 has been omitted.

The intention of the law prima facie seems to be is that the period for filing evidence in support of opposition should be two months + one month and nothing beyond. The provisions in section 131 seem prima facie to enable the registrar, if he is satisfied, on application made to him in the prescribed manner, that there is a sufficient cause for extending the time for doing any act (not being a time expressly provided in the Act), whether the time so specified has expired or not, to extend the time subject to such conditions as the Registrar may think fit to impose.

Under Rule 109 extension of time prescribed may be requested on form TM-M  .It would seem, however, that where a maximum time limit is prescribed in the Rules such time limits are not to be extended, vide rule 109.

Rule 85: This rule provides the period within which the company may be registered as the subsequent proprietor of the registered trade mark upon application made under Rule 75 shall be “6 months from the date of advertisement in the journal of the registration of the trademark or such further period not exceeding 6 months” as

Registrar may allow on application made on form TM-P. Sub-rule 3 of rule 86: This sub-rule provides that application for registration as the registered user shall not be “entertained unless the same has been filed within 6 months from the date of the agreement” entered into between the registered proprietor and the proposed registered user.

Time limits expressly provided in the Act or prescribed by Rule 85 or by sub- rule (3) of Rule 86 or a time for the extension of which provision is made in the Rules are not extendable. Also where a time for the extension of which provision is made in the rules, is not extendable beyond the period prescribed in the Rules.

Rule 45(1) provides for extension of the time limit of two months by a period not exceeding one month thereafter. It would thus follow that the maximum period within which evidence in support of opposition is to be filed is only three months, beyond which the period is not extendable.

With reference to the old rule, the Delhi High Court has held that Role 53(2) is mandatory and that if the opponent does not take any action prescribed under Rule 53(2), the operation of the Rule deeming the opposition to be abandoned becomes automatic. During the period of 2 months before the deeming effect of rule 53(2) came into operation, the Registrar could have directed that the opposition all not be deemed to be abandoned. If however the Registrar did not choose to make any direction under rule 53(2) during the period, he was not entitled to later on issue a notice allowing evidence to be filed. Under section 101, the Registrar is empowered to grant extension of time for doing any act (not being a time expressly provided in the Act), whether the time so specified has expired or not. If the opponent files request for extension of time after the expiry of two months period, which is permissible, and the Registrar grants such request, the opposition will become alive and subsisting, provided, of course, in the meantime, the trademark has not been registered.

A different View was taken by the Bombay High Court in the matter of Rule 53(2) under the old Act. The Court held that Rule 53(2) was merely directory and not mandatory and that the Legislature never intended to treat non-compliance of Rule 53(2) as fatal.

In a full Bench judgment, the Delhi High Court in Hastimal Jain trading as Oswal of evidence in support of opposition prescribed under rule 53 (under the old Act) was only directory and not mandatory. It was held that the Registrar had powers to extend the period for purposes of ling the evidence in support of the opposition or otherwise. It was therefore, held that that once there was a power in the Registrar to extend the time, it is for the Registrar to exercise these powers judicially and for valid reasons.

In Jagajit Industries Lid. V. Registrar of Trade Mark, Delhi H. Ct., though the opponent filed affidavit by way of evidence within the prescribed period of two months, it was not executed in accordance with the rules and was on plain paper. The opponent was informed that the affidavit cannot be taken on record being in contravention of the rules. The matter was proceeded to Rule 54. Mean time the opponent filed the duly executed affidavit under Rule 53, with the request the same may be taken on record. The opponent subsequently filed an application explaining that the affidavit be taken on record since the earlier affidavit though filed in time was inadvertently on a plain paper and there was thus a bona fide error on the part of the opponent in filing the affidavit. The Registrar held that a mere technical flaw should not be used as a ground to shut the evidence which has already been filed.

This order was challenged before the High court and the court upheld the Registrar’s power to extend the time and that the discretion exercised by the Registrar in this case was proper. See also Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks, where it was held that the limitation of time for submitting of evidence in support of opposition under Rule 53 was only directory and not mandatory.

There is a significant change in present law, by the express provision made in Rule 105(7), which limits the grant of extension subject to the express provisions of the Rules where a maximum time limit is prescribed. IPAB has held that it is true that rule 50 in its new incarnation has undergone changes of fundamental character. However, the settled proposition of law is that the provisions in subordinate legislation have to be in conformity with the provisions of principal legislation. Section 131 as interpreted by the courts by virtue of its parallel provision under section 101 of the TM-M Act, 1958 is very much in place in its old form which unambiguously confers a discretionary power in the Registrar to grant extension

After comparing the provisions of rule 53 under the old Act of 1958 with the new Rule 50 under the present Act, the court held that “the legislature wanted to make the provision mandatory and did not want to give any discretion to the Registrar in this connection. The object is apparent that the delays be cut down in deciding the application for registration of a trade mark… The Registrar 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 Trade Marks Rules, 2002.

Evidence in support of application

Within two months or within such further period not exceeding one month in the aggregate thereafter as the Registrar may, on request, allow of the receipt by the applicant of the copies of affidavits in support of the opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counter statement and or on the evidence already left by him in connection with the application in question. In case the applicant relies on the evidence already left by him in connection with the application, he shall deliver to the opponent copies thereof. In other words, the time available for the applicant to file his evidence is 2 months, which is extendable by a maximum of 1 month.

It may be significant to note the difference between the effect of Rules 50 and 51.While under Rule 50(2), the opponent is deemed to have abandoned his for non-compliance with sub-rule (1) within the specified time, there is no such consequence of the application being abandoned if the applicant fails to file evidence in time or to send an intimation stating that he intends to rely on the facts stated in the counter statement. However, it is a settled proposition that in an opposition preceding the onus is on the applicant to show that he is entitled for registration. Therefore, if affidavit evidence in support of the application is not filed under Rule 54, it should be taken that he has no evidence in rebuttal to the case put forward by the opponent or his evidence in support of the opposition.

Evidence in reply by opponent

Within one month from the receipt by the opponent of the copies of the applicant’s affidavit the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies of the same including exhibits, if any, and shall intimate the Registrar in writing of such delivery.

The time limit under Rule 47 of the Trade Marks Rules, 2017 is maximum of 2 months, including, extension in suitable cases.

Further evidence

The rule explicitly states that no further evidence shall be left by either side. At the same time, the Registrar is empowered to give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit. It is apparent that in case either of the parties want to lead further evidence, leave  of the Registrar is to be specially obtained by way of an interlocutory petition. The power under Rule 48 is of an enabling nature and the Registrar will grant leave to the party to lead further evidence only if he is satisfied or if the other party consents. If there is a contest the registrar will decide the matter only after hearing both the parties, subject to costs and other terms. The practice of the Registry not to shut out evidence, even when there is some delay. The term “further evidence’ indicates compliance of rules 45 to 47. In the absence of compliance of these rules, rule 53 will not come into operation, since the question of filing additional evidence will arise only after the mam evidence is filed as required in rules 45 to 47.

Evidence of confusion or absence till date of hearing

Evidence of use of the mark up to the date of hearing may be adduced to support the applicant’s case regarding absence of any confusion or deception. Similarly, the opponent can adduce evidence to the contrary in support of his case up to the date of hearing.

When the trade mark used by both the parties is identical, and the rival goods are the same, the question of producing any evidence to substantiate confusion and deception in the minds of the purchasers is absolutely unnecessary.

Exhibits

Copy or impression of each exhibit filed in an opposition as part of the affidavits is required to be sent to the other party on his request and at his expense. Under Rule 54, there is no obligation to furnish the copies of documents to the other party, unless so requested. Where such copies cannot conveniently be furnished, the originals are required to be left with the Registrar in order that they may be open to inspection.

The original exhibits are required to be produced at the hearing unless the Registrar otherwise directs. Though evidence is to be by way of affidavit, documentary evidence to support the contentions and statements of the deponent adds considerable value and therefore, wherever available should from part of the evidence.

Translation of documents

Where a document is in a language other than Hindi or English and is referred to in the notice of opposition, counter statement or an affidavit filed in an opposition proceeding, an attested translation thereof in Hindi or English shall be submitted before the registrar and a copy thereof shall be provided to opposite party.

Form of evidence

Section 129 provides that in any proceeding under the Act before the Registrar, evidence shall be by way of affidavit. The Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit. By the very nature of the document, the affidavits must contain accurate information as to matters contained. Exaggerated statements as to user or misstatements deliberately made may be a ground for refusal.

The form and manner in which the affidavits are to be executed and filed before the Registrar is laid down in the Trade-marks Rules. The affidavits required by the act and the rules to be filed at the Registry, unless otherwise provided in the second schedule, shall be-

1. Headed in the matter or matters to which they relate.
2. Shall be drawn up in the first person and shall be divided into paragraphs consequently numbered, and each paragraph shall, as far as practicable, be confined to one subject.
3. Every affidavit shall state the description and the true place of abode of the person making the same, shall bear the name and address of the person fitting it and shall state on whose behalf it is filed.
4. Where two or more persons join in an affidavit, each of them shall depose separately to such facts which are within his personal knowledge and those facts shall be stated in separate paragraphs.
5. Affidavits shall be taken.

In India before any court or person, having by law, authority to receive evidence, or before any officer empowered by such court as aforesaid to administer oaths or to take affidavits.

In any country or place outside India – before a diplomatic or consular officer, within the meaning of the Diplomatic and Consular Officers (Oaths and Fees) Act, 1948 of such country or place, or before a Notary public, or before a Judge or Magistrate. The person before whom an affidavit is taken shall state the date on which and the place where the same is taken and shall affix his seal, if any, or the seal of the court to which he is attached, thereto and sign his name and description at the end thereof.

Any affidavit purporting to have affixed, impressed or subscribed thereto or thereon, the seal or signature of any person authorized to take an affidavit, in testimony of the affidavit having been taken before him may be admitted by the Registrar without proof of the genuineness of the seal or signature or of the official character of that person.

Alterations and interlineations shall, before an affidavit is sworn or affirmed, be authenticated by the initials of the person before whom the affidavit is taken.

Where the deponent is illiterate, blind or unacquainted with the language in which the affidavit is written, a certificate by the person taking the affidavit that the affidavit was read, translated or explained in his presence to the deponent that the deponent schemed perfectly to understand it and the deponent made his signature or mark in bis presence shall appear in the Jurat.

Every affidavit filed before the Registrar in connection with any of the proceedings under the Act or the Rules shall be duly stamped under the law for the time being in force. For Trademark Registration in Tirupur, kindly contact us and get your brand name as registered Trademark… Thanks for reading!!!!