Summary: The Madras High Court recently dealt with the question of whether a defect in an evidence affidavit causes a “deemed abandonment” of the trademark. The Court clarified that procedural technicalities must not override substantive intellectual property rights, with the applicant’s conduct in the proceedings being a deciding factor.
Introduction
Does a technical error in an evidence affidavit justify striking off a trademark application? The Madras High Court recently tackled this question, weighing strict procedural compliance against substantive trademark rights to decide if defective filing can result in deemed abandonment. Key to the case was the intent and conduct of the trademark applicant in pursuing prosecution, which worked in the applicant’s favour eventually.
Facts and Background
The Appellant, Ace Foods, dealing in packaged foods, filed a trademark application in 2018 for a device mark (including the text, “Modern Kitchens: Delite in Every Bite”) under Class 35. The application was opposed by Modern Snacks, which is Respondent No. 2 here.
The opposition proceedings progressed through the system, with submissions including, among other things, evidence affidavits by both sides.
This is where the controversy emerged. The Appellant’s evidence affidavit, filed under Rule 46, was made in time, but was not properly attested or executed by the authorised signatory. The Appellant acknowledged this defect in the affidavit itself, and undertook to file a properly attested version later, upon receiving directions / permissions from the Trademark Registry (the Registry) to do so. Respondent No. 2, while objecting to this defect, proceeded to file its own evidence affidavit in reply, and reserved its right to respond when the defect was remedied.
The proceedings stayed dormant until the Appellant sought to revive the matter by seeking an expeditious hearing. They also filed an Interlocutory Petition seeking permission to file its Rule 46 affidavit, now properly executed and attested.
However, before the matter could be decided on merits, the Registry decided on the defective affidavit, and declared the trademark application abandoned. The Appellant challenged this order before the Madras High Court.
The Registry’s position
The Registry contended that the Rule 46 affidavit filed by the Applicant did not satisfy statutory requirements, as it was neither signed nor duly attested. Additionally, with the Supreme Court having extended limitation periods during the pandemic, the Appellant had sufficient time to cure the defect, but delayed doing so by almost two years. The Registry also argued that Rule 46 did not grant any discretion to the Registrar or Examiner to extend timelines, and it could not condone defects after the due date.
The Appellant’s case
The Appellant challenged the Registry’s approach as being excessively technical and contrary to the scheme of the Trade Marks Act (the Act). They said that the defective affidavit itself sought directions from the Registry for filing the attested version, but no such directions were ever issued.
On statutory interpretation, the Appellant said that deemed abandonment is contemplated only when an applicant fails to file a counter statement in time (Section 21(2)), and there was no equivalent provision for abandonment for filing of evidence (Section 21(4)).
Additionally, they said that Section 157(2)(vii) empowers the rule-making authority to prescribe the “time and manner” for filing pleadings and evidence. However, there is no delegation of authority to prescribe abandonment.
The Opponent’s defence
The opponent (Respondent No. 2) stressed upon the mandatory nature of statutory timelines in trademark opposition proceedings. They argued that equitable considerations could not be grounds to dilute timelines prescribed by law; if that were allowed, the procedural framework itself would become unworkable.
Court’s Analysis
- Intention to prosecute
The Court spent considerable efforts to assess whether the Appellant had demonstrated intention to prosecute its trademark application. Several actions supported this: the Appellant’s admission of the defect in the original filing; seeking specific directions for remedying the defect; proactively requesting for expedited hearing; and the application to file the properly-attested affidavit. Collectively, in the eyes of the Court, these actions pointed to continuous and bona fide prosecution of the application. This was a significant factor in its final decision.
- Rules vs Rights
When there was clear evidence of intent to prosecute, the Court said the deeming fiction under Rule 46 could not be expansively interpreted to extinguish substantive trademark rights altogether. In this case, an affidavit filed within time, albeit unattested, reflected an attempt to comply with due process, and the procedural defect could not justify abandonment.
- No prejudice caused
Respondent No. 2 had already filed its evidence in reply, and the remedied affidavit contained no new material. Thus, the Court noted that no prejudice was caused to Respondent No. 2.
- Registry conduct
The Registry’s inaction drew particular criticism from the Court. Despite the Appellant requesting directions for remedying defects, no communication or opportunity to this end was provided. The Court was of the view that where the Act itself contemplates procedural fairness before penal consequences ensue, the Registry could not remain silent and later invoke abandonment as a consequence.
- Deemed abandonment
The Court also considered whether Rule 46(2) allowed for deemed abandonment:
- Section 132 of the Act contemplates abandonment for default in prosecution only after procedural safeguards are met, e.g., notice and opportunity being given to remedy the defect.
- Section 157(2)(vii) empowers the framing of rules for an enumerated list. This list does not include the creation of a substantive consequence such as deemed abandonment. The Court held that subordinate legislation could not travel beyond the scope of the parent statute.
- With regard to Sections 21(2) and 21(4), the legislature had provided for deemed abandonment only in one scenario (i.e., failure to file counter-statement), and not for evidence-stage defaults.
This was central to the Court’s conclusion that Rule 46(2), in that it contemplated deemed abandonment of the application, travelled beyond the parent enactment and hence is ultra vires the Act.
- Consequence of non-compliance
While procedural rules must carry consequences, the Court clarified that the appropriate consequence would merely be closure of the right to file evidence, not outright abandonment of the application.
Decision
Based on these findings, the Court permitted the attested affidavit under Rule 46 to be taken on record. It treated the later attested version as merely a formal expression of the affidavit filed earlier within the prescribed timeline. The order declaring the application abandoned was also set aside.
Conclusion
The most important takeaway here is that the Applicant’s conduct and intent to prosecute a trademark can be a key factor in their favour, especially when confronted with minor technical irregularities. Arguably, this logic could be extended to patent and design applications as well. In general, the decision offers significant guidance to current and prospective applicants, who would do well to ensure that their prosecution efforts are timely and conducted in good faith.
Separately, by declaring Rule 46(2) of the Trademark Rules ultra vires the Act, the decision confirms that deemed abandonment for defaults on evidence affidavits is beyond the scope of the law. The decision also invites a conclusion that at most, procedural defects at the evidence stage may result in closure of the right to file evidence.
More generally, the Court notes that procedural law must advance and not defeat justice, and overly technical scrutiny may be avoided particularly where no prejudice is caused. At the same time, the decision places a greater responsibility upon the Trademark Registry to actively communicate defects and provide procedural guidance where defects are curable.
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