Delhi High Court Calls Larger Bench to Determine: Whether Procedural Changes Introduced by 2017 Trademark Rules Apply Retrospectively to Proceedings Under 2002 Rules

Delhi High Court Calls Larger Bench to Determine: Whether Procedural Changes Introduced by 2017 Trademark Rules Apply Retrospectively to Proceedings Under 2002 Rules

The Delhi High Court has referred to the larger bench to determine 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 single Judge Justice Sanjeev Narula was adjudicating the issue that whether 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.

Originating in 1972, the Appellant – SAP SE, has emerged as a significant player in the domain of providing synergistic business solutions for an array of industries and ranks amongst the world’s leading business software entities.

The Appellant holds ownership over several intellectual properties, notably the trademark ‘SAP’, a moniker adopted way back in 1972 and utilized extensively and uninterruptedly since then. The said trademark had become intrinsically intertwined with Appellant’s business persona, exemplified in its trading style, corporate identity, and online presence.

In an effort to secure its intellectual property rights, the Appellant had pursued and achieved registrations for the trademarks ‘SAP’ and ‘SAP’ formative marks in multiple classes.

The registration process was punctuated by a notice of opposition dated 2 August, 2007 filed by Swiss Auto Products (Respondent No. 1), challenging the registration. On 9October, 2013, Respondent No. 1 reached out to the Registrar of Trademarks (Respondent No. 2), expressing a desire to rely on the facts detailed in the opposition notice as part evidence.

An appeal was 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 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 argued.

The Court observed 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 Judge noted that the 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 vs. Registrar of Trade Mark.

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

It was noted by the Judge 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 6 March, 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 discerned.

The Court further took note of the decision of a Coordinate Bench of this Court in Mahesh Gupta vs. Registrar of Trademarks and Anr., wherein it was 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 (supra) does not take note of the decisions of the Supreme Court regarding the retrospective application of procedural amendments. Therefore, the Judge was unable to concur with the view expressed by the Co-ordinate Bench.

The Judge further held that the saving provision, i.e., Rule 158 of the Trademarks Rules, 2017, only protects what was done under the 2002 Rules. However, 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 recorded.

Averting to the present case, the Court noted that the 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, stated the Judge.

In view of the same, the Court said that a definite ruling by a Larger Bench would ensure consistency and predictability in the application of the Rules and referred the issue regarding whether the failure to file evidence in support of the trademark application would tantamount to anything done under the Trademarks Rules, which is saved by Rule 158 of the 2017 Rules and would continue to be governed by the 2002 Rules.

Thus, the Court 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.