Summary
The Madras High Court set aside the Trademark Registrar's order deeming a trademark application abandoned due to alleged late filing of evidence affidavit. The Court held that an affidavit filed within the prescribed timeline but lacking signature and attestation due to COVID-19 lockdown restrictions should be treated as validly filed, with subsequent formal rectification not constituting a fresh filing. Emphasizing that procedural provisions cannot be interpreted rigidly to defeat substantive rights, the Court directed the opposition proceedings to be heard on merits.
Background and Procedural History
ACE Foods (Appellant) filed trademark application No. 4015733 in Class 35 on December 3, 2018, seeking registration for the mark "Modern Kitchens' Delite in Every Bite", claiming use since 1984. On December 12, 2019, Modern Snacks (Respondent No. 2) filed Opposition No. 1019941 challenging the application.
Following standard opposition procedure, Modern Snacks filed an affidavit of evidence under Rule 45 of the Trade Marks Rules on April 6, 2020. In response, ACE Foods filed a counter-affidavit under Rule 46 on June 1, 2020, within the prescribed timeline. However, due to the nationwide COVID-19 lockdown, the affidavit could not be signed or attested. ACE Foods submitted an undertaking to file a properly executed version once restrictions were lifted. Modern Snacks subsequently filed a reply affidavit on July 31, 2020.
The proceedings remained dormant until 2024, when ACE Foods revived the matter by filing an interlocutory petition with the requisite fees and submitting a signed affidavit. The signatory was different from the original, as the earlier individual had since passed away. On July 4, 2025, the Registrar of Trade Marks dismissed the interlocutory petition, holding that the signed affidavit filed on October 8, 2024, was beyond the limitation period prescribed under Rule 46(2) and consequently deemed the trademark application abandoned.
Appellant's Arguments
ACE Foods contended that the affidavit of evidence was filed within the prescribed time limit on June 1, 2020, and only the signature and attestation were missing due to the unprecedented pandemic situation. The Appellant argued that the 2024 filing was merely a formal rectification to cure the procedural defect, not a fresh affidavit submission.
The Appellant further submitted that Section 21(2) of the Trade Marks Act, 1999 is the sole statutory provision governing deemed abandonment of trademark applications, and that Rule 46(2) of the Trade Marks Rules, which imposes a strict timeline for filing evidence, is ultra vires (beyond the powers of) the Act. The Appellant argued that procedural lapses caused by extraordinary circumstances should not result in forfeiture of substantive trademark rights.
In support of its position, ACE Foods relied on several precedents, including Kangaro Industries v. V-Guard, Raj Vardhan Patodia v. Registrar of Trade Marks, and V-Guard Industries Ltd v. Registrar of Trade Marks, which established principles of liberal interpretation of procedural rules to protect substantive rights.
Respondents' Arguments
Modern Snacks (Respondent No. 2) maintained that statutory timelines prescribed under the Trade Marks Rules are mandatory and must be strictly followed. According to Modern Snacks, delay beyond the prescribed period automatically results in deemed abandonment of the application. The Respondent argued that Rule 46(2) is a valid subordinate legislation enacted under the rule-making powers conferred by the Trade Marks Act and is not ultra vires.
The Registrar of Trade Marks (Respondent No. 1) submitted that it acted strictly in accordance with the applicable Rules and had no discretionary power to condone delays in filing evidence affidavits beyond the prescribed timeline.
High Court's Analysis and Decision
1. Intent to Prosecute Demonstrated by Timely Filing
The Madras High Court observed that ACE Foods had filed the affidavit on June 1, 2020, within the time limit prescribed under Rule 46(2), albeit without signature and attestation due to COVID-19 lockdown restrictions. The Court held that this filing demonstrated the Appellant's clear intent to prosecute the application and comply with procedural requirements despite extraordinary circumstances beyond its control.
2. No Prejudice Caused to the Opponent
The Court noted that Modern Snacks had already filed its reply affidavit on July 31, 2020, thereby acknowledging receipt and substance of ACE Foods' unsigned affidavit. This conduct demonstrated that the opponent suffered no prejudice from the absence of formal signature and attestation at that stage. The substantive evidence was before the opponent, enabling meaningful response.
3. Rectification, Not Fresh Filing
The High Court held that the affidavit submitted on October 8, 2024, was merely a formal rectification involving proper signature and attestation of the document already filed in 2020. It did not constitute a fresh filing or new affidavit introducing different evidence or arguments. The Court emphasized that the rectification addressed only technical compliance issues necessitated by the death of the original signatory.
4. Procedural Rules Cannot Defeat Substantive Rights
The Court held that procedural provisions under Rule 46 of the Trade Marks Rules must be interpreted purposively and not with rigid formalism that defeats substantive rights. The purpose of procedural rules is to ensure orderly conduct of proceedings and fairness to all parties—not to create technical traps that result in forfeiture of valuable intellectual property rights due to circumstances beyond an applicant's control.
5. Narrow Construction of Abandonment Provisions
The Court observed that deemed abandonment is a drastic consequence resulting in loss of priority and potential loss of trademark rights. Provisions leading to such severe consequences must be construed narrowly and applied only where an applicant has genuinely failed to prosecute its application or has demonstrated lack of bona fide intent to proceed.
6. Rule 46(2) Cannot Override the Act
While the Court did not definitively rule on the ultra vires challenge, it emphasized that subordinate legislation such as the Trade Marks Rules cannot override or contradict the parent statute. Where ambiguity exists, courts must interpret rules in harmony with the Act and in a manner that protects substantive rights conferred by the statute.
Court's Directions
The Madras High Court set aside the Registrar's order dated July 4, 2025, and directed as follows:
- The affidavit of evidence filed by ACE Foods shall be treated as having been filed on June 1, 2020, the date of original submission
- The trademark application No. 4015733 for the mark "Modern Kitchens' Delite in Every Bite" cannot be deemed abandoned
- The affidavit of evidence shall be taken on record by the Trademark Registry
- The opposition proceedings (Opposition No. 1019941) shall be heard and decided on merits by the appropriate authority
Significance
This judgment establishes important principles regarding the balance between procedural compliance and substantive rights in trademark prosecution:
1. Pandemic-Related Accommodations: The decision recognizes that extraordinary circumstances such as the COVID-19 pandemic warrant judicial accommodation and flexible interpretation of procedural deadlines. Courts will not permit forfeiture of rights due to force majeure events beyond an applicant's control.
2. Substance Over Form: The ruling reinforces the principle that procedural requirements serve substantive justice and cannot be mechanically applied to defeat legitimate rights where the purpose of the rule has been substantially complied with and no prejudice results to opposing parties.
3. Intent to Prosecute: The judgment emphasizes that trademark abandonment must be determined based on actual intent and conduct demonstrating lack of prosecution, not mere technical non-compliance with formalities where the applicant has demonstrated bona fide efforts to proceed.
4. Limits on Rule-Making Authority: The decision suggests that subordinate legislation imposing rigid timelines leading to deemed abandonment may face scrutiny where such provisions appear to exceed the scope or purpose of the enabling statute, particularly where the parent Act provides the primary framework for abandonment.
5. Practical Guidance for Practitioners: The case provides guidance that when filing affidavits or other documents under adverse circumstances, applicants should file whatever is possible within the prescribed timeline—even if incomplete—accompanied by undertakings to cure defects at the earliest opportunity. Such timely filing, even if technically defective, preserves the filing date and demonstrates intent to comply.
This decision will serve as important precedent in opposition proceedings and other trademark prosecution matters where procedural compliance has been affected by circumstances beyond an applicant's control, ensuring that intellectual property rights are not lost due to excessive formalism in the application of procedural rules.
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