Deeming Abandonment Of Trademarks

Upon examination of the Trade Marks Rules, it is evident that non-compliance with certain rules by an applicant, opponent, or other parties results in the deeming of their motion as abandoned. For instance, Rule 45 mandates a two-month period to submit evidence in support of opposition, and non-compliance leads to abandonment of the opposition. However, the Trade Marks Act presents a different picture, replacing party-centric regulatory focus with Registrar-centric empowerment. Sections 131 and 132 of the Act grant the Registrar the authority to grant extensions beyond the initial period of limitation, even if the application has been deemed abandoned. This power extends to all deadlines not explicitly provided for in the Act, thereby providing the Registrar with significant discretion to dilute the provisions for deeming abandonment in the Rules.

The judiciary has consistently affirmed that the Trade Marks Act supersedes the Trade Marks Rules in interpretation. This was highlighted in the case of Hastimal Jain Trading vs. Registrar of Trade Marks and Ors. where the Delhi High Court held that the procedural requirements in the Rules are not strictly mandatory and are subject to the discretion of the Registrar, as stipulated in the 1958 Act. The Court's decision partly overturned an earlier ruling in Hindustan Embroidery Mill vs. Hernia E. Mill, where the Court had maintained that the Registrar cannot revive an abandoned action through the legal fiction of abandonment.

In the case of Sahil Kohli v. Registrar of Trade Marks, the IPAB addressed the issue under the current legislative framework and acknowledged that the power of the Registrar has significantly diminished under the Trade Marks Rules. However, the IPAB also noted that the parent legislation, i.e. Section 131 of the Trade Marks Act, would supersede the Rules and allow for the Registrar to grant extensions beyond the prescribed time limit. This ruling effectively overturned the decision in Sunrider Corporation v. Hindustan Lever Limited and Ors., where the Delhi High Court had held that the Registrar's discretion was limited by the time period specified in the then-applicable 2002 Rules, which were aimed at reducing delays in the registration process.

Thus, it appears that Section 131 has been the key element influencing the judiciary's interpretation of the abandonment legislative framework. The Delhi High Court reaffirmed this in a recent case, Kaira District Cooperative Milk Producers Union Ltd. & Anr. vs. Registrar of Trademarks & Ors., stating that the Registrar possesses the power to extend timelines under Section 131, but this authority should be used justly and equitably. Although this caution is desirable, it lacks practical usefulness. The continued depiction of Section 131 as a paramount provision suggests disregard for the successive amendments to the Trade Marks Rules, which imposed considerable rigidity.

It should be noted that abandonment is a deeming consequence, which refers to a legal fiction that results in a predetermined legal consequence of an action. In Patel Field Marshal Agencies vs. P. M. Diesel and Ors., it was clarified that the applicability of legal fictions is limited to situations where no contrary provision is provided in the statute. It is unclear whether deeming abandonment, as provided in the Trade Marks Rules, is circumscribed by Section 131 of the Act. The judgment further states that whenever the legislature provides a consequence for non-compliance with timelines, it should be considered mandatory in nature. Sharif-ud-din vs. Abdul Ghani Lone distinguished between mandatory and directory provisions and held that provisions with consequences for non-compliance should be considered mandatory. Negative language in a provision is a tell-tale sign of its mandatory nature, as recognized in Mannalal Khetan vs. Kedar Nath Khetan. Additionally, the Delhi High Court's observations in Sunrider must also be considered. The Court traced the intention of the legislature through various amendments, which gradually circumscribed and eliminated the Registrar's discretion in the Rules. Therefore, deeming abandonment under the Trade Marks Rules could be interpreted as mandatory.


The Registry deserves credit for allowing parties to challenge abandonment in accordance with the law. In addition, the notice provides that parties who have met the deadlines can approach the Registry's Grievance Cell with appropriate evidence within 45 days of the notice's issuance to prevent any unjust action. However, given the large number of applications and oppositions that could be affected, such measures were necessary to avoid a recurrence of the controversy that arose in 2016. The Registry now faces a daunting task of processing grievances and other communications within a relatively short time frame. Furthermore, parties at risk of receiving notices would understandably be anxious until they hear from the Registry about the status of their pending applications.

A legislative amendment could provide a more sustainable solution to the current issue. The Trade Marks Act's Section 131 should be revised to provide for automatic abandonment, aligning with the Trade Marks Rules. This would remove the need for the Registry to issue separate abandonment notices. Parties would determine abandonment conclusively when applications or oppositions lapse due to missed deadlines, without waiting for Registrar intervention. The Registrar's discretion under the Act should be replaced with a new resuscitation procedure, where parties could apply within a year of abandonment and provide sufficient reasons for condonation of delay. This procedure should be detailed and include specific grounds for Registrar consideration. Time-bound resuscitation hearings would help streamline the workload and enhance punctuality. This model mirrors the Canadian Patent Act's Section 73, which mandates strict procedural steps for patent applicants, and prescribes conditions for approval of a resuscitation application. This amendment would balance resuscitation with speedy disposal of actions, streamlining Registry operations and simplifying procedures for parties.

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