Recently, the Madras High Court in the case of ACE Foods Private Limited vs The Registrar of Trade Marks & Anr (CMA(TM) No. 22 of 2025), dealt with the question of whether Rule 45 and 46 of the Trade Marks Rules, 2017 are ultra vires to the powers vested under the Trade Marks Act, 1999 and held that non-filing of submissions under these stages cannot result in deemed abandonment of the application/opposition per se. This decision addresses a long-standing practice of the Trade Marks Registry and provides much-needed certainty for brand owners.

The Legal Question

In opposition proceedings under the Trade Marks Act, 1999, parties are required to file evidence within the timelines prescribed under Rules 45 and 46 of the Trade Marks Rules, 2017. The position on the extendibility of these timelines was already clarified by the Delhi High Court in Sun Pharma Laboratories Ltd v. Dabur India Ltd & Anr., where it was held that the Registrar does not have the power to extend these statutory deadlines (for more details, refer here). For more than a decade, the Trade Marks Registry has treated non-compliance with these timelines as resulting in “deemed abandonment” of the application or opposition itself, relying on Rule 45 (2) and Rule 46 (2).

However, in practice, a more recent trend has been observed at the Trade Marks Registry where hearings are appointed in cases involving delay in filing or non-filing of affidavits and evidence under Rules 45 and 46. At such hearings, the defaulting party is afforded an opportunity to explain the delay or the reasons for non-filing. Where the explanation is found to be satisfactory, the opposition or application has, in certain instances, been permitted to proceed further, and in some cases, the defaulting party has even been granted an additional opportunity to file its affidavits and evidence in support of the opposition or application. This approach, however, has largely remained discretionary and inconsistent.

Against this backdrop, the central issue before the Court was whether such a drastic consequence as abandonment of the opposition/application by virtue of this default is actually supported by the Act or whether the Rules have been interpreted beyond the statute.

Court’s Reasoning

The Court undertook a careful reading of the statutory framework and observed that where the legislature intended to impose ‘deemed abandonment’, it has done so expressly as in case of Section 21(2) for filing notice of opposition/counter statement. Whereas, in relation to evidence stage under Rule 45 and 46, the corresponding Section 21(4) does not prescribe abandonment as a consequence for failure to file evidence within prescribed timeline. Evidentiary stage being a procedural requirement, the Court observed that while non-compliance must carry consequences, those cannot extend to abandonment of the application/opposition per se extinguishing substantive rights of the parties.

Keeping in mind the provisions of Section 21(4) as well as the explicit provision under Rule 45(2) & 46(2), the Court held that the only consequence which will arise due to the non-compliance of prescribed timelines will be that there will be deemed abandonment of letting in evidence, i.e., a party that fails to file evidence within prescribed deadline may lose the right to rely on such evidence. This interpretation strikes a balance between enforcing procedural discipline and safeguarding the substantive rights of the parties.

Significance of the decision –

This judgement marks a notable shift from administrative practice and has practical implications for businesses.

  • The decision does not dilute compliance requirements. The deadlines under Rules 45 and 46 remain mandatory and the Registrar does not have discretion to condone delay.
  • However, a procedural lapse at the evidence stage will not automatically result in abandonment of the application or opposition as a whole. The consequence is confined to forfeiture of the evidentiary opportunity.

For businesses and brand owners, the takeaway is clear: procedural diligence remains essential. However, the decision offers welcome reassurance that substantive rights will not automatically be extinguished merely due to procedural lapses at the evidence stage. In essence, the focus remains on adjudicating disputes on their merits rather than on technical defaults alone.

Written by Keerthana K