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SAP SE vs. SWISS AUTO PRODUCTS AND ANR. (C.A. (COMM.IPD-TM) 130/2021)

The question regarding retrospective applicability of the Trademarks Rules, 2017 (“Rules 2017”), was recently raised before the Delhi High Court in an appeal filed by the SAP SE (“Appellant”) against impugned order issued by Trade Marks Registry dated June 12, 2023 arose out of the opposition filed by the SWISS AUTO PRODUCTS (“Respondent”) against the mark SAP (“Appellant’s Mark”) in Class 9. The crux of the present appeal arose due to delay of 3 months in filing evidence as part of prosecution proceedings for registration of Appellant’s Mark and the Ld. Registrar refused to accept the evidence. The Appellant relied on Rule 53 of the Trademarks Rules, 2002 (“Rules 2002”) which gives discretionary power to the Ld. Registrar to extend the deadline. The impugned order was passed at the time when the Rules 2002 and had been superseded by the Rules 2017, by coming into effect on March 6, 2017.

In view of the preamble of the Rules 2017 which states that the Central Government has made the Rules in suppression of the Rules 2002, “except as respect things done or omitted to be done before such suppression, namely:”, but does not list any such acts done or omitted to be done, which seems to be a legislative oversight. The court in the said appeal took stance of the Hon’ble Supreme Court on the issue of retrospective application of law which states that “The highest judicial authority has maintained that procedural amendments are presumed to hold retrospective efficacy, unless the amendment statue explicitly or implicitly suggests to the contrary.” The court was of the view that the Rules 2017 were procedural in nature and would be applied retrospectively.

However, the court contradicted with the decision given by the coordinate bench in the case of Mahesh Gupta v. Registrar of Trademarks and Anr. (2023/DHC/001627), Wherein the court has taken the view that the proceedings which were initiated under Rules 2002 would have to be adjudicated under the said Rules.

Based on the decision of the Supreme Court in Central Board of Dawoodi Bohra Community and Anr. V. State of Maharashtra and Anr., the Court has referred the matter to a larger bench to decide the following issue

  1. Whether the rules dealing with procedural aspects, including those relating to the filing of evidence introduced by the Rules 2017, would apply retrospectively to the proceedings initiated under Rules 2002.

  2. Whether failure to file evidence in support of the trademark application would be tantamount to ‘anything done under the Rules 2002’, which is saved by Rule 158 of the Rules 2017 and would continue to be governed by Rules 2002.

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