You cannot be penalised for filing evidence late when the document that starts the deadline was never served on you. The Bombay High Court applied that basic fairness to revive a trademark opposition the Registry had wrongly abandoned.
The dispute
Coaster Shoes Company Pvt. Ltd., proprietor of the registered mark TRAVEL FOX, opposed applications for “Travel Fox.” It filed its notice of opposition and followed procedure — but never received the applicant’s counter-statement, even though it had been uploaded to the Registry’s website. From 2015 to 2022, Coaster Shoes chased the document.
Meanwhile it filed its evidence in support by affidavit on 22 November 2018 and served the applicant, who responded in January 2019. Yet the Registrar, in October 2022, abandoned the opposition solely on the ground that the evidence was filed late — ignoring the merits.
The RTI that broke the case
An RTI request produced the Registry’s 19 December 2022 admission: “No such information found in the available record” regarding proof that the counter-statement had been served. The Registrar had relied on internal records and 2012 postal receipts, but there was no clear and cogent evidence of actual delivery.
What the court held
The Bombay High Court set aside the abandonment and directed the Registrar to reopen the proceedings, holding that “statutory procedures in trademark opposition must be adhered to strictly, particularly when a party’s rights are at stake.” The opponent’s demonstrated diligence, against the IP office’s own service failures, was decisive.
Citation: Commercial Miscellaneous Petition (L) No. 4309 of 2023; 2024:BHC-OS:13607; Bombay High Court; R.I. Chagla, J.; 16 August 2024.
The takeaways
- The clock starts on service, not upload. A deadline running from the counter-statement cannot run if the counter-statement was never served on the opponent.
- Diligence, documented, wins. Years of chasing the document — evidenced through RTI — showed the failure was the office’s, not the party’s.
- Procedure is protective. Strict adherence to service and notice rules exists precisely to prevent rights being lost on a technicality.
Frequently asked questions
Can an opposition be abandoned for filing evidence late? Not where the counter-statement that starts the deadline was never served — the Bombay High Court revived exactly such an opposition.
Does uploading a document to the Registry website count as service? Not by itself. The court required clear, cogent evidence of actual delivery to the opponent.
How did the opponent prove non-service? Partly through an RTI response in which the Registry admitted it had no record proving the counter-statement was served.
What is the wider principle? Statutory procedure in oppositions must be followed strictly when a party’s rights are at stake.
Useful official resources
- The Trade Marks Act, 1999
- IP India trademark e-filing portal