The evolving landscape of the rules governing extensions of time at the evidence stage of opposition proceedings, particularly examining the transition from the Trade Marks Rules of 2002 (hereinafter “2002 Rules”) to the Trade Mark Rules 2017 (hereinafter “2017 Rules”) is a topic which has sparked significant debate recently. Through analysis of legal developments and practical implications, this article aims to shed light on the challenges and complexities associated with seeking time extensions during the evidence stage, highlighting the need for clarity and caution in light of the recent ruling of the Delhi High Court in the case of Sun Pharma Laboratories Ltd v. Dabur India Ltd & Anr. C.A.(COMM.IPD-TM) 146/2022.

The 2002 Rules left little room for ambiguity regarding extension of time during the evidence stage of opposition proceedings. Rules 50, 51, and 52 explicitly outlined that the deadlines for filing affidavits in support of opposition or application and reply affidavits and evidence, could be extended beyond the statutory limit, for an additional period not exceeding one month in aggregate, upon request. Essentially, the 2002 Rules unambiguously allowed requests for extension of time during the evidence stage of opposition proceedings. The language within these Rules was crystal clear, reflecting a deliberate legislative intent to allow extensions at the evidence stage of opposition proceedings.

However, with the advent of the 2017 Rules, a significant shift occurred regarding extension of time during the evidence stage of opposition proceedings. Unlike the 2002 Rules, the new Rules notably omitted any provisions addressing extensions of time. Rules 45, 46, and 47 remained conspicuously silent on this matter, refraining from prescribing any specific provisions for seeking extensions. This change in the language of the Rules prompted speculation regarding the legislative intent behind the omission. A popular interpretation suggests that the legislative intent behind omitting the provisions for extension was to expedite opposition proceedings, thereby minimizing unnecessary delays. The heavy backlog of opposition matters pending before the Registry, often stretching for 3 to 4 years until resolution, also underscored the urgency to streamline processes to reach conclusions in a timely manner. Having said that, Rule 109 of the 2017 Rules, includes a provision for extension of time. However, this provision is limited to periods not explicitly addressed in the Rules. To clarify, this provision essentially enables parties to formally request additional time when no predefined provisions govern the timeframe in question.

However, practically speaking, even after the 2017 Rules came into force, requests for extensions of time were continuing to be filed and were granted subject to the discretion of the Registrar, as was the procedure, before the 2017 Rules were introduced. As a result, the Registrar continued to grant the request for extension of time at their discretion.

In light of the above, a recent ruling by the Delhi High Court in the case of Sun Pharma Laboratories Ltd v. Dabur India Ltd & Anr. has offered some clarity to the question surrounding extendibility of deadlines at the evidence stage of opposition proceedings. While deciding on whether deadlines at the evidence stage of opposition proceedings were mandatory or merely directory, it was observed that the use of terms like “one month aggregate” in Rule 50 of the 2002 Rules implied a mandatory time limit. Moreover, by omitting the one-month extension provision from the 2017 Rules and the removal of the Registrar’s discretion to extend time limits, reinforced the mandatory nature of deadlines. The Court clarified that failure to file evidence within the specified two-month period, as outlined in Rule 45 of the 2017 Rules, would result in the opposition being deemed abandoned, as there is no provision for extension.

It was opined that the transition from the 2002 Rules to the 2017 Rules underscored a deliberate effort to eliminate delays by removing the Registrar’s discretionary powers and omitting the requests for extension of  time provision. The evolution in the Rules clearly indicates a legislative intent to enforce strict timelines for concluding opposition proceedings within a reasonable time period. This interpretation aligns with the Trade Marks Registry’s stance on imposing strict timelines to prevent undue delays in trademark registration. Allowing repeated extensions could significantly hinder the registration process, which goes against the legislative intent behind the Trade Marks Act, 1999 and its accompanying Rules. The purpose of these prescribed timelines is to ensure timely trademark registration and prevent opponents from indefinitely delaying the process.

In conclusion, the interpretation of extension provisions within the Rules, particularly in the context of opposition proceedings, has undergone significant scrutiny and evolution. The transition from the Trade Marks Rules of 2002 to the 2017 Rules has brought about a notable shift, with the latter omitting explicit provisions for extensions of time. The recent ruling in Sun Pharma Laboratories Ltd v. Dabur India Ltd & Anr. has added further complexity to the debate, emphasizing the importance of clarity in deadline enforcement. This ruling of the Delhi High Court regarding the mandatory nature of deadlines underscores the legislative intent to streamline opposition proceedings and prevent undue delays. While the absence of explicit provisions for extensions in the 2017 Rules may leave room for interpretation, the primary objective remains clear: to ensure timely trademark registration and prevent opponents from indefinitely delaying the process. Therefore, moving forward, it is important for parties to navigate this evolving landscape with caution, considering the potential implications of seeking extensions and the broader objectives of trademark regulation.

Written By Adlin Mini M