SpicyIP Tidbits: Delhi High Court Interprets the Term “Leaving with the Registrar” Broadly

[This post has been authored by SpicyIP intern Ishant Jain. Ishant is a final-year student pursuing BA LLB at Guru Gobind Singh Indraprastha University, Delhi. He comes from Firozabad, UP, and is looking forward to building his career in Intellectual Property Rights. As he describes himself, if he is not at his desk, he is probably writing a poem or a short story.]

In a notable move Delhi High Court in M/S V-Guard Industries Ltd vs The Registrar Of Trademarks & Anr gave a liberal interpretation of the term “Leaving with the registrar” given under Rule 45 of Trademark Rules 2017 and noted the reason for delay in filing trademark oppositions as being a genuine one. As per rule 45 of Trademark Rules 2017, if the opponent ‘does not leave the documents’ with the registrar within 2 months, it is considered to be abandoned. On the basis of this provision the Registrar had rejected the documents shared by the Opponent, citing a delay of 3 days in “filing” the document. However, the court overruled the order of the registrar and directed it to take note of evidence filed past the due date.

The opponent explained that the delay was caused owing to a technical issue with the website. Consequently,  the documents were sent by a courier to the Registry, which was received 3 days after the due date. The opponent also filed an application for extension of time but it was not considered by the registrar and eventually the opposition was considered to be abandoned. 

The Court noted the uncommon ambiguous language of rule 45 which uses the term “Leaving with the registrar” that is not found in other legislations generally and further held that its definition under Rule 8 is “as nebulous as Rule 45”. The court specifically remarked that “… Rule 45(1) does not use the expression “filed”. What Rule 45(1) requires is that the evidence must be “left with the Registrar”. Where the statute is ambiguous, the benefit of ambiguity has to go to the citizen. This would be especially so where the statute confers a valuable commercial right on the citizen.” In light of the above understanding, the court interpreted the term “leaving with the registrar” broadly to include the bonafide attempts of the Opponent to file the evidence (Para. 21 and 22 of the order). It is noteworthy that the court didn’t apply the letter of law in black and white and instead opined against a strict interpretation of the ambiguous provision when it affects the substantive rights of the parties (here the right to oppose an application).  

Furthermore, the court did not overstep into the legislative’s powers by extending the power of extension of time to the registrar. The court specifically clarified “this Court is not required to examine the somewhat more nuanced issue of whether, where the evidence in opposition is not “left” with the office of the learned Registrar within two months as envisaged in Rule 45(1), any discretion vests in the learned Registrar to extend the time therefore. That would involve a juxtaposed interpretation of Section 131 of the Trade Marks Act and Rules 8, 45 and 109 of the Trade Marks Rules, which may be left for another sunny evening.” 

Protection against honest delay in filing of documents before the courts is protected under section 5 of Limitation Act and is within the inherent powers of the court. An application or appeal may be allowed by the court if the party satisfies the court of sufficient reasons of delay which would be something for which a party cannot be blamed as held here. Similarly, delegated legislation governs it in the executive mechanism. In the light of the above arrangement, the present order seems a balanced move as it placed the substantive right of the opponent above the procedural requirement. Nonetheless, it could have been an opportunity for the DHC to clarify the Registrar’s power regarding extension of time but the bench refrained from delving into that. 

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