International Business Machines … vs Tivoli Gardens & Anr on 28 February, 2026
inkinccorporation@gmail.com Delhi High Court
International Business Machines … vs Tivoli Gardens & Anr on 28 February, 2026
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment delivered on: 28/02/2026
+ C.A.(COMM.IPD-TM) 45/2025 & IA Nos.19415/2025 & 26937/2025
INTERNATIONAL BUSINESS MACHINES
CORPORATION .....Appellant
Versus
TIVOLI GARDENS & ANR. .....Respondents
Advocates who appeared in this case
For the Appellant : Mr. Peeyoosh Kalra, Mr. C.A. Brijesh &
Ms. Simranjot Kaur, Advocates.
For the Respondents : Mr. Rishi Bansal & Mr. Indraneil
Choudhary, Advocates for R-1.
Ms. Nidhi Raman, Mr. Om Ram & Mr.
Arnav Mittal, Advocates for R-2.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
JUDGMENT
TEJAS KARIA, J
1. The present Appeal has been filed under Section 91 of the Trade
Marks Act, 1999 (“Act”) assailing the order dated 23.04.2025 (“Impugned
Order”) passed by the learned Assistant Registrar of Trade Marks, New
Delhi.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
FACTUAL BACKGROUND:
2. The Appellant is a cloud platform and cognitive solutions company
operating in over 170 countries. It is claimed in the present Appeal that the
Mark ‘TIVOLI’ (“Subject Mark”) is one of the most recognized names in
enterprise systems and IT infrastructure management. It is further claimed
that the Subject Mark traces its origin to Tivoli Systems Inc. In 1996, Tivoli
Systems Inc. was acquired and merged with the Appellant, making
Appellant the owner of the Subject Mark.
3. It is claimed by the Appellant that the Appellant’s ‘TIVOLI’ suite
represents a comprehensive collection of software products designed to
provide an integrated management framework for enterprises with extensive
IT infrastructure. It is further claimed that over the past three decades, the
Appellant has continuously and extensively used the Subject Mark
worldwide and the same has acquired distinctiveness and has become
exclusively associated with the Appellant.
4. On 15.09.2003, the Appellant filed an application bearing No.
1236500 for the registration of the Subject Mark in Class 42 in respect of
‘Computer programming services, design of computer systems and software,
research and consulting services, in the field of automation, computer
programing, data input and organization, and computer system
methodology, development and selection’. The said application was
advertised in the Trade Marks Journal No. 1338-1 dated 15.01.2006.
5. Subsequently, Respondent No. 1 filed Notice of Opposition dated
29.08.2006 objecting to the aforesaid application filed for the registration of
the Subject Mark. Respondent No. 1 is engaged in the business of providing
hospitality and food for human consumption, and its Notice of Opposition
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
was based on its Marks ‘TIVOLI’ and ‘TIVOLI GARDENS’, which are
allegedly in use since the year 1994.
6. On 04.10.2011, the Appellant filed its Counter Statement and
thereafter, on 05.05.2016, the Appellant filed a request with Respondent No.
2 for taking the said Counter Statement on record and serving the same on
Respondent No. 1. It is claimed in the Appeal that the Counter Statement
was served on Respondent No. 1 on 08.07.2019 by Respondent No. 2, along
with a notice requiring Respondent No. 1 to file evidence in support of the
Opposition filed by Respondent No. 1.
7. Under cover of letter dated 22.10.2019, the Appellant filed a request
with the Registrar of Trade Marks to dismiss the Opposition filed by
Respondent No. 1 under Rule 45(2) of the Trade Marks Rules, 2017 (“2017
Rules”) as Respondent No. 1 had not filed its evidence in support of the
Opposition or any reliance letter, within the prescribed time under Rule 45
of the 2017 Rules.
8. Thereafter, on 05.01.2022, a hearing notice was issued affording
Respondent No. 1 the opportunity to show cause as to why the Opposition
shall not be deemed abandoned under Rule 45(2) of the 2017 Rules, for the
failure to submit evidence in the support of the said Opposition within the
prescribed time. A hearing was fixed in the matter for 24.01.2022.
9. Respondent No. 1 under cover of letter dated 18.01.2022 filed a
request seeking adjournment of the hearing fixed on 24.01.2022 on the
ground that the Counsel for Respondent No. 1 had recently been engaged
and did not possess the relevant information and documents. Accordingly,
the hearing was fixed for 15.03.2022.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
10. Respondent No. 1 under cover of letter dated 09.03.2022 stated that
reliance upon their submissions made in the Notice of Opposition as interim
evidence under Rule 45 of the 2017 Rules and on the same day, filed an
Interlocutory Petition seeking condonation of delay in compliance with the
said Rule.
11. After some delay, the hearing finally took place on 06.03.2025, and
vide Impugned Order, Respondent No. 2 allowed Respondent No. 1’s
Interlocutory Petition and placed the evidence in support of its Opposition
on record.
12. Aggrieved by the Impugned Order, the present Appeal has been filed
by the Appellant.
PROCEDURAL BACKGROUND
13. Vide order dated 11.08.2025, Notice was issued in the present Appeal,
which was accepted by learned Counsel appearing for Respondent No. 1 and
2. It was further directed that Respondent No. 2 shall file an Affidavit within
a week, providing the proof of service of Notice dated 08.07.2019, sent to
Respondent No. 1.
14. Vide order dated 26.08.2025, it was recorded that no appearance was
mentioned on behalf of Respondent No. 2 in the previous order dated
11.08.2025. Accordingly, fresh Notice was issued to Respondent No. 2,
which was accepted by the learned CGSC. Respondent No. 2 was directed to
file an Affidavit providing proof and manner of service as well as proof of
receipt of the Notice dated 08.07.2019, sent to Respondent No. 1 and its
agent ‘India Trade Marks Co.’ in these proceedings, within a period of two
weeks.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
15. Vide order dated 24.09.2025, it was recorded that a short Affidavit
dated 23.09.2025 has been filed on behalf of Respondent No. 2, the relevant
extract of which states as under:
“4. It is submitted that the notice of Counter-Statement issued
by the Trade Marks Registry bears the internal dispatch
number “4220361”, which is clearly reflected on the notice
generated through computer system on 08.07.2019 and
processed by the opposition section of Trademark Registry on
“03.08.2019” and the same was dispatched on 07.8.2019
through India Post by the Trademark Registry and thereby,
served upon the Respondent No.1. The presence of this dispatch
number evidences that the Registry duly processed and
recorded the dispatch of the Counter-Statement in the ordinary
course of business.”
16. It was also observed vide order dated 24.09.2025 that the said
Affidavit does not clarify whether the Notice with Dispatch No. 4220361
has been sent to Respondent No. 1 or to ‘Indian Trade Marks Co.’, which
was the agent of Respondent No. 1. It was further observed that from the
said Affidavit it was not clear whether the said Dispatch No. pertains to the
Trade Mark Agent of the Appellant or the Trade Mark Agent of Respondent
No. 1
17. It was recorded vide order dated 19.11.2025 that pursuant to the order
dated 24.09.2025, Respondent No. 2 produced the extracts of the Dispatch
Register along with the Excel sheets showing the dispatch of the Notice
dated 08.07.2019 vide Dispatch No. 4220361. Thereafter, the Parties were
heard at length and the Order was reserved in the present Appeal vide order
dated 17.12.2025.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
SUBMISSIONS ON BEHALF OF THE APPELLANT:
18. The learned Counsel for the Appellant advanced the following
submissions:
18.1. The Counter Statement was served on Respondent No. 1 by
Respondent No. 2 along with a notice dated 08.07.2019
requiring Respondent No. 1 to file evidence in support of the
opposition filed by it, under Rule 45. In the said notice it was
explicitly mentioned that if no evidence in support of the
opposition is left at the Registry, or if no intimation that the
opponents do not desire to adduce any evidence is sent to the
Registry, and to the Appellants, within two months, the
opposition will be deemed to have been abandoned vide Rule
45(2).
18.2. Respondent No. 1 was duly served as per the Registry’s online
records. Respondent No. 1 did not allege that its erstwhile
Counsel did not receive the Counter Statement before the Trade
Marks Registry. It is only at the appellate stage that Respondent
No. 1 has sought to introduce a contrary plea, seeking to
suggest non-service of the Counter Statement, which is clearly
an afterthought, and is contrary to the record. Respondent No. 1
cannot be permitted to approbate and reprobate in this manner,
as no such allegation was raised before the Registrar.
18.3. The Counter Statement’s service has been reflected in the
online records of the Trade Marks Registry for several years.
Respondent No. 1’s entire case is based upon non-
communication between Respondent No. 1 and its Counsel. It is
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
clear that non-receipt of Counter Statement by Counsel has not
been averred by Respondent No. 1.
18.4. The Appellant received Respondent No. 2’s said notice on
10.08.2019. The notice along with receipt stamp has been filed
on 19.08.2025 vide diary no. 5894138/2025. It defies logic that
Respondent No. 2 would have affected service upon the
Appellant but not upon Respondent No. 1, who was required to
file its evidence. Therefore, the plea of non-service now taken
by Respondent No. 1 is implausible.
18.5. Further, Respondent No. 2’s notice of service of Counter
Statement is dated 08.07.2019, which clearly establishes that
the said Counter Statement had already been communicated
prior to the onset of the COVID-19 pandemic, which began in
March, 2020. Accordingly, the belated reliance placed by
Respondent No. 1 on COVID-19 to justify delay in filing its
evidence is wholly unfounded.
18.6. The Impugned Order allowed the interlocutory petition filed by
Respondent No. 1 and takes on record its evidence filed under
Rule 45 after a delay of nearly two years and eight months, in
clear violation of Rule 45 of the Trade Marks Rules, 2017.
Respondent No. 2 clearly exceeded its jurisdiction in allowing
the interlocutory petition as the law expressly prescribes a
mandatory and non-extendable timeline for filing evidence in
support of opposition, i.e., two months from receipt of the
counter statement. There is no statutory power conferred on the
Registrar to condone delays beyond the prescribed period. Rule
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
45 is mandatory, as opposed to being directory, and admits of
no discretion in condoning delay beyond the prescribed two-
month period. In support of the aforesaid contention, reliance is
placed on the decisions in the following cases:
a). Sun Pharma Laboratories Ltd v. Dabur India Ltd &
Anr., 2024 SCC OnLine Del 813
b). Mahesh Gupta v. Registrar of Trademarks & Anr.,
2024 SCC OnLine Del 1750
c). Surinder Corporation v. Hindustan Lever Ltd. &
Anr., 2007 SCC OnLine Del 1018
18.7. The Impugned Order has the effect of reopening opposition
proceedings that stood abandoned since 2019, thereby causing
continued prejudice to the Appellant who is the honest and prior
user/adopter of the Subject Mark and has been waiting for over
22 years for the registration of the Subject Mark.
18.8. Respondent No. 2 has recorded in the Impugned Order that in
compliance of communication of Counter Statement, the
Opponent did not comply with Rule 45(1) of the 2017 Rules,
within the prescribed time. Further, neither any evidence in
support of the Opposition was filed nor any statement was
submitted on behalf of the Opponent to the effect that the
Opponent does not desire to adduce evidence but wants to rely
on the facts mentioned in the Notice of Opposition.
18.9. Respondent No. 1’s own interlocutory petition was filed under
Rule 45 of the 2017 Rules and at no stage before the Registrar
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
did Respondent No. 1 raise any objection as to the applicability
of the 2017 Rules.
18.10.Under both Trade Marks Rules, 2002 (“2002 Rules”) and 2017
Rules, the statutory period for filing the evidence is mandatory,
and failure to comply results in the opposition being deemed to
be abandoned. Consequently, irrespective of which set of Rules
is applied, the opposition stood abandoned and no discretion
vested in the Registrar to condone such delay. In support of this
contention, reliance is placed on the decision in ITC Limited v
Deputy Registrar of Trade Marks and Others, 2024 SCC
OnLine Del 1660.
18.11.The sole explanation offered for the delay is that the erstwhile
counsel failed to file evidence, and the same is not a legally
sustainable ground for condonation as litigants are expected to
exercise due diligence in pursuing their matters. A party cannot
escape the consequences of negligence or inaction by blaming
its counsel, particularly when no steps were taken to monitor
the progress of the case for several years. In support of this
contention, reliance is placed on the decisions in the following
cases:
a). Rajneesh Kumar and Another v. Ved Prakash, 2024
SCC OnLine SC 3380
b). Nitin Mahadeo Jawale and Others v. Bhaskar
Mahadeo Mutke, 2024 SCC OnLine SC 3468
c). Moddus Media Pvt. Ltd. v. M/s. Scone Exhibition
Pvt. Ltd., 2017 SCC OnLine Del 8491Signature Not Verified C.A.(COMM.IPD-TM) 45/2025 Page 9 of 24
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
18.12.Respondent No. 2 has acknowledged in the Impugned Order
that the reasons provided by Respondent No. 1 for permitting
the Interlocutory Petition lack substantial merit, yet
inexplicably proceeds to allow the said petition.
18.13.Conduct of Respondent No. 1 reveals not an isolated lapse, but
a pattern of disregard for procedural timelines, which is evident
from the filing of the Notice of Opposition itself nearly seven
months after advertisement of the Subject Mark, beyond the
statutorily prescribed four-month period. Respondent No. 1 has
exhibited a consistent pattern of disregard for statutory
procedures and timelines not only in the present opposition
proceedings but also in another opposition filed by it against the
Appellant’s Trade Mark Application bearing No. 1054654 for
the registration of the Mark ‘TIVOLI’ in Class 16. The same
was dismissed for want of prosecution by order dated
11.10.2018, following repeated failure of Respondent No. 1 to
appear in hearings.
18.14.On 05.05.2016, the Appellant filed a request with Respondent
No. 2 for taking the said Counter Statement on record and
serving the same on Respondent No. 1 without any further
delay. Respondent no. 1 was duly copied in the said request
letter.
18.15.Thereafter, under cover of letter dated 22.10.2019, the
Appellant filed a request with the Registrar of Trademarks to
dismiss the opposition under Rule 45(2) as the Respondent No.
1 had not filed its evidence in support of its opposition or any
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
reliance letter within prescribed time under Rule 45.
Respondent No. 1 was duly copied in the said letter as well.
18.16.The Appellant under cover of letter dated 27.09.2023 and
24.04.2024 informed Respondent No. 2 of Respondent No. 1’s
dilatory tactics of not attending hearings and seeking repeated
adjournments in the matter. Despite the Appellant’s continuous
and diligent participation in opposition proceedings for over
two decades, including timely filing of the counter-statement
and repeated follow-ups with the Registry, the Registrar has
erroneously permitted Respondent No. 1 to revive an opposition
that clearly stood abandoned under Rule 45(2) of the 2017
Rules.
18.17.The Impugned Order was received by the Appellant on
05.05.2025. The present Appeal was filed by the Appellant on
03.08.2025 vide diary number 5388078/2025, within the
limitation period of 3 months provided for under the Act.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
18.18.Appellant’s application for the registration of the Subject Mark
was filed in 2003 and has not proceeded to registration even
after 22 years. Respondent No. 2 allowed the Letter of Reliance
and Interlocutory Petition filed by Respondent No. 1 solely on
the ground that no harm or disadvantage would be caused to the
Appellant, which undermines the Appellant’s rights and efforts
in pursuing the said application for over 22 years.
18.19.In view of the foregoing submissions, it is prayed that the
present Appeal be allowed and the Impugned Order be set
aside.
SUBMISSIONS ON BEHALF OF THE RESPONDENTS:
19. The learned Counsel for Respondent No. 1 has made the following
submissions:
19.1. Respondent No. 1 adopted the Subject Mark in the year 1994
and has continuously and extensively used it since then.
Respondent No. 1 is the registered proprietor as well as the
copyright holder for the Subject Mark in India.
19.2. Respondent No. 1 through a routine perusal of the Trademarks
Journal came across the Appellant’s Trade Mark application
bearing no. 1236500 for the registration of the Subject Mark in
class 42.
19.3. Upon coming across the said application of the Appellant,
Respondent No. 1 immediately filed Notice of Opposition
against the said application vide Opposition no. 235441 dated
29.08.2006.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
19.4. The present dispute should be dealt with and decided under the
2002 Rules since the dispute arose in the year 2006. Reliance is
placed upon the decision in Mahesh Gupta v. Registrar of
Trademarks, 2024 SCC OnLine Del 1750, wherein the
Division Bench of this Hon’ble Court has categorically
observed that the 2017 Rules would not impact pending
proceedings initiated under the 2002 Rules.
19.5. After the Appellant filed their Counter statement on 29.09.2011,
which as per the online records of Respondent No. 2, had been
allegedly served on 08.07.2019 upon the erstwhile counsel of
Respondent No. 1 with a copy marked to the Appellant.
19.6. Rule 49(1) of the 2002 Rules states that Respondent No. 2 is
obliged to serve a copy of the applicant’s Counter Statement
upon the Opponents within 2 months from the date of receipt of
the applicant’s Counter statement.
19.7. In the present case, the copy of the Counter Statement had been
filed by the Appellant with the Respondent No. 2 on
29.09.2011, which had been received by Respondent No. 2 on
04.10.2011. Therefore, Respondent No. 2 was obliged to serve a
copy of the Appellant’s Counter Statement before 04.12.2011 as
per Rule 49(1) of the 2002 Rules. Therefore, Respondent No. 2
drastically failed to fulfil its duty as a statutory authority.
19.8. The said service notice of the Appellants’ Counter Statement
allegedly dated 08.07.2019 was dispatched through post by
Respondent No. 2 only on 03.08.2019 vide Dispatch No.
4220361 with the said service notice of Counter Statement only
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
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being served to the Respondent No.1’s erstwhile counsel, i.e.,
Anand & Anand.
19.9. The said service notice of Appellant’s Counter Statement had
never actually been served to Respondent No. 1. In support of
this contention, reliance was placed upon the judgement of
Purushottam Singhal Proprietor Prime Cable Industries v.
Registrar of Trade Marks and Another, 2023 SCC OnLine Del
1641.
19.10.On 18.01.2022, Respondent No. 1 filed for change of attorney
and also filed for extension of time for one month in accordance
with Section 131 of the Act, since the newly appointed counsel
didn’t receive the complete paper book for Opposition no.
235441 from the erstwhile counsel of Respondent No. 1.
19.11.On 09.03.2022, Respondent No. 1 filed their letter of reliance
under Rule 45 along with Interlocutory Petition stating that
neither Respondent No. 1 nor Respondent No. 1’s erstwhile
counsel were served with a copy of Counter Statement by the
Trade Mark Office vide its letter dated 08.07.2019 neither
through post nor through email.
19.12.The erstwhile counsel of Respondent No. 1 had never provided
their email address for the purpose of communication back in
their Notice of Opposition in the year 2006, and therefore, the
question of service notice of Counter Statement through email
to the Respondent No. 1’s erstwhile counsel does not arise at
all.
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Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
15:56:11
19.13.Respondent No. 1 in the said Interlocutory Petition dated
09.03.2022 further stated that the erstwhile counsel never
informed them of receipt of any Counter Statement from the
Trade Mark Office and since there was no communication from
the erstwhile counsel, Respondent No. 1 was not aware of the
same. Therefore, the delay in filing evidence affidavit in
support of the opposition by Respondent No. 1 was completely
unintentional.
19.14.Respondent No. 1s’ limitation to file evidence affidavit in
support of opposition shall only commence upon effective
service by Respondent No. 2 as well as effective receipt by the
Respondent No. 1 which has not been not been satisfied in the
instant case since neither the erstwhile counsel of Respondent
No. 1 nor Respondent No. 1 themselves were served with a
copy of the Appellant’s Counter Statement by Respondent No.
2. In support of the said contention, reliance is placed upon the
following decisions:
a. Ramya S. Moorthy v. Registrar of Trade Marks and Anr.,
2023 SCC OnLine Mad 5305
b. Royal Classic Mills Private Limited v. The Polo/ Lauren
Company L. P. & Anr., CMA(TM)No.18 of 2025
c. Samsudeen A v. Registrar of Trade Marks, 2024 SCC
OnLine Mad 6309
d. Mars Incorporated v. Registrar of Trade Marks & Ors.,
C.A.(COMM.IPDTM) 88/2024Signature Not Verified C.A.(COMM.IPD-TM) 45/2025 Page 15 of 24
Signed By:NEELAM
SHARMA
Signing Date:28.02.2026
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e. Purushottam Singhal v. Registrar of Trademarks, 2023
SCC OnLine Del 1641
f. Coaster Shoes Company Private Limited vs. Registrar of
Trade Marks & Ors., 2024 SCC OnLine Bom 2871
19.15.Further, by March 2020, the COVID-19 pandemic had been
declared across the country and effective communication was
severely hampered. Despite such difficult times, Respondent
No. 1 had already started taking restorative steps towards
prosecution of Opposition No. 235441 in January 2022 and by
March 2022, had also filed their letter of reliance along with
Interlocutory Petition. Hence, Respondent No. 1 has always
acted in a diligent manner towards its opposition.
19.16.If the present appeal is allowed, the valuable rights of
Respondent No. 1 would be severely prejudiced due to mistakes
and / or callousness of the Respondent No. 1s’ erstwhile
counsel. Reliance is placed upon the decision in the case of M/S
V-Guard Industries Ltd. v. Registrar of Trademarks, 2023
SCC OnLine Del 59, wherein it was observed that while
procedural provisions are required to be accorded their due
deference, they cannot be interpreted so rigidly as to result in
evisceration of substantive rights.
19.17.Further, it is well-settled that the litigants should not be made to
suffer because of advocate’s fault or mistake. In support of the
said contention, Respondent No. 1 placed its reliance upon the
following decisions:
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SHARMA
Signing Date:28.02.2026
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a. European Union v. Union of India, 2022 SCC OnLine Del
1793
b. HDFC Bank Ltd. v. Union of India, (2023) 5 SCC 627
19.18.The said opposition proceedings have been pending for the past
19 years and no prejudice would be caused to the Appellant if
the subject matter of the opposition is decided on merits before
the Registrar of Trademark in an expeditious manner.
19.19.It is also important to note that the Impugned Order was passed
on 24.04.2025, and the Appellant waited for almost 4 months to
institute the present Appeal on 05.08.2025. In the meanwhile,
the Appellant has already filed their evidence affidavit in
support of their application on 11.07.2025 and Respondent No.
1 have also complied with their evidence affidavit in support of
Opposition on 11.08.2025.
19.20.In view of the foregoing submissions, Respondent No. 1 prayed
that the present Appeal be dismissed.
ANALYSIS AND FINDINGS:
20. Heard the learned Counsel for the Parties and perused the material
placed on record.
21. The learned Counsel for Respondent No. 1 contended that the present
Appeal is barred by limitation as the same was filed on 03.08.2025, whereas
the Impugned Order was passed on 23.04.2025 and therefore, the three
month-period prescribed under Section 91 of the Act to file the present
Appeal, had already elapsed. Per contra, the learned Counsel for the
Appellant contended that the Appellant received the Impugned Order onSignature Not Verified C.A.(COMM.IPD-TM) 45/2025 Page 17 of 24
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SHARMA
Signing Date:28.02.2026
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05.05.2025, and therefore, the present Appeal is not time-barred under the
aforesaid provision of the Act.
22. Section 91(1) of the Act provides that any person aggrieved by an
order or decision of the Registrar under the Act or the rules made thereunder,
may prefer an appeal within three months from the date on which the order
or decision sought to be appealed against is communicated to such person
preferring the appeal.
23. In the present case, as the Impugned Order was communicated to the
Appellant on 05.05.2025, and thereafter, the present Appeal was filed on
03.08.2025, it is clear that the present Appeal was filed within the timeframe
of three months prescribed under Section 91(1) of the Act. Hence, the
present Appeal is not time-barred under the Act.
24. The learned Counsel for Respondent No. 1 contended that 2002 Rules
are applicable in the present case, as opposed to 2017 Rules. The learned
Counsel for the Appellant submitted that irrespective of whether 2002 Rules
or 2017 Rules are applied, the outcome of the present Appeal shall remain
the same.
25. In this respect, it is imperative to refer to the decision of this Court in
Sun Pharma Laboratories Ltd v. Dabur India Ltd & Anr., 2024 SCC
OnLine Del 813, wherein it was held as under:
“49. The sum and substance of the above discussion is that
upon the counter statement being received by the Opponent
from the Applicant, the two months’ period begins to run. The
counter statement need not be served by the Registrar upon the
Opponent. If the evidence is not filed within the two months’
period, the opposition would be deemed to have been
abandoned as the Registrar has no discretion either under Rule
50 of the 2002 Rules or Rule 45 of the 2017 Rules or Rules 101Signature Not Verified C.A.(COMM.IPD-TM) 45/2025 Page 18 of 24
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SHARMA
Signing Date:28.02.2026
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and 109 of the 2002 Rules and the 2017 Rules respectively, to
extend the time period.
50. This interpretation is also in line with the stand of the
Trade Marks Registry i.e., to have strict timelines for
opposition proceedings so that the Opponents cannot unduly
and indefinitely delay the processing of trade mark applications
towards registration.”
26. Perusal of the above-quoted judgment suggests that there is merit in
the Appellant’s contention that the outcome of the present Appeal shall
remain the same regardless of whether 2017 Rules or 2002 Rules are applied
as both Rule 45 of the 2017 and Rule 50 of the 2002 Rules impose strict
timelines, and the Registrar has no discretion under the said provisions to
extend the time period provided for therein. Consequently, if the evidence is
filed after the timeline imposed by the said provisions, the opposition would
be deemed to have been abandoned.
27. As noted in the order dated 19.11.2025, Respondent No. 2 had
produced the extracts of the Dispatch Register along with the Excel Sheets
showing the dispatch of the Notice dated 08.07.2019 serving the Counter
Statement vide Dispatch No. 4220361. In this respect, it is apposite to refer
to Rule 18 of the 2017 Rules, which is extracted hereunder:
“18. Service of Documents by the Registrar.-
(1) All communications and documents in relation to application or
opposition matter or registered trade mark may be served by the
Registrar by leaving them at, or sending them by post to the address
for service of the party concerned or by email communication.
(2) Any communication or document so sent shall be deemed to have
been served, at the time when the letter containing the same would
be delivered in the ordinary course of post or at the time of sending
the email.
(3) To prove such service, it shall be sufficient to prove that the letter
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communication was sent to the email id provided by the party
concerned.”
28. A perusal of Rule 18(3) of the 2017 Rules as quoted above clearly
shows that such service shall stand sufficiently proven if the letter was
properly addressed and put into the post by the Registry. Similarly, Rule
15(3) of the 2002 Rules provides for the same threshold to prove effective
service on the party concerned.
29. In the present case, as noted above, the Dispatch Register along with
Excel Sheets show dispatch of the Notice serving Counter Statement dated
08.07.2019 vide Dispatch No. 4220361 to Respondent No. 1’s Trade Mark
Agent, i.e., Indian Trade Mark Company, and its erstwhile Counsel, Anand
& Anand, at the addresses recorded in the aforesaid Excel Sheets. Therefore,
it is clear that there was effective service of Notice serving Counter
Statement, upon Respondent No. 1 by Respondent No. 2.
30. The Division Bench of this Court in Mahesh Gupta v. Registrar of
Trade Marks & Anr., 2024 SCC OnLine Del 1750, has held that:
“72. Under the 2017 Rules, evidence in support of opposition is
liable to be tendered within two months from the service of a copy of
the counter statement. As was the position prevailing under the
earlier statutory regimes, this Rule too gave an option to the
opponent to either submit evidence in support of opposition or to
apprise the Registrar that no further evidence was sought to be
adduced. Rule 45 also deleted the additional time of one month
which could have been sought under the erstwhile 2002 Rules and
as per the provisions contained in Rule 50. The Rule thus puts in
place a maximum period of two months and proceeds further to
prescribe the consequences of a failure to abide by the time frames
contained in Rule 45(1). The Rule thus is clearly intended to
introduce a maximum limit of two months within which evidence in
support of opposition may be tendered failing which the opponent
would be deemed to have abandoned it altogether. Rule 46 of the
2017 Rules is similarly structured since there too, a maximumSignature Not Verified C.A.(COMM.IPD-TM) 45/2025 Page 20 of 24
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window of two months stands stipulated within which evidence in
support of the application may be submitted with the Registrar. An
option similar to the one accorded to the opponent in Rule 45,
namely, of apprising the Registrar that no further evidence is sought
to be led is conferred on the applicant. The concept of deemed
abandonment stands replicated in this Rule also.
***** ***** *****
74. Since sub-rule (2) of Rules 45 and 46 of the 2017 Rules embody
the deemed abandonment principle, it leads us to the inevitable
conclusion that the two-month period as prescribed therein is clearly
the maximum time limit which the Rules contemplate. Another facet
of significance is the absence of the phrase “unless the Registrar
otherwise directs”, which though existing in Rule 53 of the 1959
Rules, is conspicuously absent in sub-rules (2) of Rules 45 and 46.
The abandonment of an application upon the expiry of the maximum
period prescribed under the 2017 Rules is thus neither avoidable nor
does the Registrar stand placed with the statutory discretion to
either avoid such an eventuality coming into effect or reverse a
liability which may be incurred.”
31. Perusal of the above-quoted decision shows that under Rule 45 of the
2017 Rules, evidence in support of opposition is liable to be tendered within
two months from the service of a copy of the counter-statement. It is further
noted that Rule 45 of the 2017 Rules also deleted the additional time of one
month, which could have been sought under Rule 50 of the 2002 Rules.
Therefore, it is clear that upon the expiry of the maximum period as
prescribed under the said Rule, the consequence of failure to abide by the
time frame would be deemed abandonment of the opposition.
32. In the present case, the Interlocutory Petition was filed by Respondent
No. 1 before Respondent No. 2 after a delay of over two years, which is
beyond the mandatory time limit provided for under both the 2002 Rules
and the 2017 Rules.
33. Respondent No. 1 also submitted that a party cannot be made to suffer
because of the fault or mistake of its Advocate. It was further argued that in
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the present case, the erstwhile Counsel of Respondent No. 1 did not
communicate that a copy of the Appellant’s Counter Statement has been
served upon them.
34. The Supreme Court in Rajneesh Kumar & Anr. v. Ved Prakash, 2024
SCC OnLine SC 3380 has held that:
“10. It appears that the entire blame has been thrown on the head of
the advocate who was appearing for the petitioners in the trial
court. We have noticed over a period of time a tendency on the part
of the litigants to blame their lawyers of negligence and carelessness
in attending the proceedings before the court. Even if we assume for
a moment that the concerned lawyer was careless or negligent, this,
by itself, cannot be a ground to condone long and inordinate delay
as the litigant owes a duty to be vigilant of his own rights and is
expected to be equally vigilant about the judicial proceedings
pending in the court initiated at his instance. The litigant, therefore,
should not be permitted to throw the entire blame on the head of the
advocate and thereby disown him at any time and seek relief.”
35. Similarly, in Nitin Mahadeo Jawale & Ors. v. Bhaskar Mahadeo
Mukte, 2024 SCC OnLine SC 3468, it was observed as under:
“7. Even if we assume for a moment that the concerned lawyer was
careless or negligent, this, by itself, cannot be a ground to condone
long and inordinate delay as the litigant owes a duty to be vigilant of
his own rights and is expected to be equally vigilant about the
judicial proceedings pending in the court initiated at his instance.
8. The litigant, therefore, should not be permitted to throw the entire
blame on the head of the advocate and thereby disown him at any
time and seek relief.”
36. In view of the above decisions, the settled position of law is that even
if a party’s counsel is careless or negligent, the same by itself cannot be a
ground to condone inordinate delay as a litigant should be vigilant of its own
rights and about the judicial proceedings pending before any forum, which
was initiated at his instance.
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37. In the present case, Respondent No. 1 claims that even if there was
effective service of the Counter-Statement by Respondent No. 2, the
erstwhile Counsel of Respondent No. 1 never communicated the same to
Respondent No. 1 and, therefore, Respondent No. 1 failed to file its
evidence.
38. However, it is noted that the conduct of Respondent No. 1 does not
inspire confidence as firstly, Respondent No. 1 filed the Interlocutory
Petition after an inordinate delay of two years, which shows that it was not
vigilant of the opposition proceedings before Respondent No. 2; secondly, in
the present case, Respondent No. 1 took active steps in the opposition
proceedings after an inordinate delay of over two years only after a hearing
notice was issued to Respondent No. 1 on 05.01.2022, granting the
opportunity to show cause as to why its opposition shall not be deemed
abandoned under Rule 45(2) of the 2017 Rules, for the failure to submit
evidence in support of the said opposition within the prescribed time; and
lastly, Respondent No. 1 has exhibited a pattern of disregard for procedural
timelines which is also evident from the opposition proceedings in another
matter filed by Respondent No. 1 against the Trade Mark Application
bearing No. 1054654, wherein Respondent No. 1’s opposition was dismissed
for want of prosecution vide order dated 11.10.2018, despite hearing notices
being regularly served upon Respondent No. 1.
39. It is also important to note that even Respondent No. 2 in the
Impugned Order has acknowledged that the grounds taken by Respondent
No. 1 in support of the Interlocutory Petition lack substantial merit.
40. Therefore, Respondent No. 1 cannot put the entire blame on the
erstwhile Counsel for the inordinate delay caused in the filing of evidence in
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the Opposition proceedings before Respondent No. 2, as there is nothing to
show due diligence on Respondent No.1’s part or that it acted with alacrity
in pursuing the said Opposition proceedings.
41. As the timeline provided for filing the evidence in the Opposition
proceedings under both the 2002 Rules and the 2017 Rules are strict and
cannot be extended, Respondent No. 2 has erred by allowing the
Interlocutory Petition filed by Respondent No. 1.
42. In view of the discussion above, the Impugned Order dated
23.04.2025 deserves to be set aside. Accordingly, the present Appeal is
allowed and Impugned Order dated 23.04.2025 passed by the learned
Assistant Registrar of Trade Marks, Delhi is quashed and set aside. Pending
Applications stand disposed of.
43. A copy of this Judgment shall be sent to the Registrar of Trade Marks
at e-mail address: [email protected], for necessary compliance.
TEJAS KARIA, J
FEBRUARY 28, 2026
St
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