Mandatory Timelines in Trademark Oppositions Under the 2002 Rules

Facts: Rolls-Royce Trademark Case: Mandatory Timelines under Trade Marks Act, 1999

Imagine a world-famous brand like Rolls-Royce, known for luxury cars and aircraft engines, facing a copycat in India. The petitioners, Rolls-Royce PLC and Rolls-Royce Motor Cars Limited, are giants in the global engineering scene, working in aerospace, defense, marine, and energy fields. Their iconic logo—the interlocking “double R” standing for founders Charles Rolls and Henry Royce—has been registered and used in over 80 countries for decades, symbolizing quality and prestige. This mark isn’t just a design; it’s a badge of trust in high-stakes industries.

Trouble knocks when the third respondent, Mr. Naveen Khatri trading as Rishi Hotels in Hyderabad, files a trademark application (No. 182490) in Class 42 for a similar mark. Class 42 covers services like scientific research, design, and legal services—areas where Rolls-Royce operates heavily. Spotting this as a potential threat to their brand’s uniqueness, Rolls-Royce jumps in with a notice of opposition on August 27, 2010, before the Trade Marks Registry in Chennai. They argue the mark could confuse consumers and dilute their famous logo.

The Registry notifies the applicant, who files a counter-statement served on Rolls-Royce by November 30, 2010. Under the rules, Rolls-Royce then has two months from December 20, 2010, to submit evidence supporting their opposition—like affidavits, sales data, and global registration proofs.

Evidence and Extension Requests

Gathering this evidence isn’t simple. Rolls-Royce’s offices span continents, so collating documents takes time. Their lawyers request extensions:

• First, one month to March 20, 2011
• Then another to January 20, 2012

The Registry seems to grant initial nods, but by February 20, 2012, Rolls-Royce files an interlocutory petition with fees and affidavits to place evidence on record, serving a copy on the applicant. This evidence includes detailed proofs of their mark’s worldwide use and reputation.

Fast forward to October 17, 2014—the Registry rejects it outright, citing no power to extend beyond three months total under Rule 50 of the Trade Marks Rules, 2002. They lean on Intellectual Property Appellate Board (IPAB) orders (Nos. 120/2012 and 125/2012) binding them as a lower tribunal. Rolls-Royce claims they only got the rejection order in 2015, delaying their challenge. This writ petition follows, seeking to quash the rejection and force the Registry to accept their evidence, arguing the rules allow flexibility for good cause.

Procedural Details

The saga starts at the Trade Marks Registry under the Trade Marks Act, 1999. After the opposition notice, the Registry issues TOP/2678 on September 20, 2010, calling for the applicant’s counter-statement. Served by November 30, 2010, it triggers the two-month evidence window from December 20, 2010.

Extension requests via letters (February 8, 2011, and later) push it forward, but the February 20, 2012, interlocutory petition (with fees under Rule 95) hits a wall. The Registry’s October 17, 2014, order (MAS-765379) refuses recordal, deeming Rule 50’s timeline absolute—no extensions past three months.

Rolls-Royce files this writ under Article 226 of the Constitution on October 2018 (W.P. No.25070/2018), with miscellaneous petitions for stay and interim relief. Heard by Justice M. Dhandapani, arguments span multiple precedents and procedural nuances.

Dispute

At its core, this is a timing tug-of-war in trademark battles: Can a global icon like Rolls-Royce get a grace period to prove its opposition, or does a rigid three-month cap slam the door?

• Petitioners’ Argument: The Registrar has discretion under Section 131 to extend time for “sufficient cause,” making Rule 50 directory, not mandatory.
• Respondents’ Argument: The 2002 Rules make the timeline mandatory (“not exceeding one month in aggregate”), aligning with IPAB and Delhi High Court to prevent delays.

Detailed Reasoning and Judgment

Mandatory Timeline Interpretation

This judgment is a masterclass in rule interpretation, comparing Gujarat High Court’s Wyeth Holdings Corpn. v. Controller General of Patents (2006 SCC OnLine Guj 620) with Delhi High Court’s Ms. Aman Engineering Works v. Registrar Trade Marks (2022/DHC/004701).

The Madras High Court leans toward Delhi’s stricter view—emphasizing that “shall” in Rule 50 means mandatory. It references:

• Sunrider Corpn. v. Hindustan Lever Ltd. (2007 SCC OnLine Del 1018)
• Chief Forest Conservator (Wildlife) v. Nisar Khan (2003) 4 SCC 595
• Ramachandra R. v. Regional Transport Officer (2011) 1 SCC 402
• Mahesh Gupta v. Registrar of Trademarks (2023 SCC OnLine Del 1324)

The court rules that the deletion of the phrase “unless Registrar directs” and inclusion of “one month in aggregate” under Rule 50(1) clearly removes discretionary power, making timelines absolute.

IPAB Precedents

The judgment notes IPAB’s Sahil Kohli v. Registrar of Trade Mark (2018 SCC OnLine IPAB 55) treated 2017 Rule 45 as directory, but the court sides with the Delhi approach—ensuring procedural efficiency and preventing “infinite delays.”

Decision

Writ petition dismissed—no merits found. The Madras High Court upholds the Registry’s October 17, 2014, order under MAS-765379. The opposition stands abandoned due to delay beyond three months. No costs. Connected miscellaneous petitions closed.

Disclaimer

The information shared here is intended for public interest and educational purposes. Readers should exercise discretion when interpreting or applying this content. It may contain subjective perspectives and possible errors in interpretation or presentation.

Written By

Advocate Ajay Amitabh Suman
IP Adjutor (Patent and Trademark Attorney)
High Court of Delhi