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Seeking an Extension of Time to File Evidence in Opposition Proceedings – a Possibility?

The rules governing trade marks in India underwent a sea of change in March 2017 with the advent of the Trade Marks Rules, 2017 (“New Rules”) that replaced the erstwhile Trade Marks Rules, 2002 (“Old Rules”). One major change brought about by the New Rules was the omission of the wording “within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow” from the provisions dealing with the time for filing evidence by the parties to an opposition proceeding. The deliberate omission of the above-noted wording resulted in the seemingly obvious interpretation that the applicants/ opponents can no longer seek an extension of time during the evidentiary stage of an opposition proceeding. However, the Intellectual Property Appellate Board (“IPAB”) (the tribunal akin to the US Trademark Trial and Appeal Board, where appeals from the orders passed by the Trade Marks Registry (“Registry”) lie), in Sahil Kohli v. The Registrar of Trade Marks & Anil Verma (IPAB – OA/6-8/2018/TM/DEL), has taken an interesting view point on this issue that may change the landscape of opposition proceedings filed before the Registry. 

In this case, the appellant sought to challenge orders passed by the Registry ordering three oppositions abandoned on account of non-filing of evidence/ reliance letters in lieu of evidence within the two months’ statutory timeline prescribed by the Trade Marks Act, 1999 (“Act”).

The IPAB noted that while the New Rules omitted the extension provision provided for in the Old Rules, the amendment was limited to the rules, and not the Act. The Act, notably, incorporates a provision empowering the Registrar of Trade Marks with the discretionary power to grant an extension of time for doing any act (not being a time expressly provided in the Act) on an application being made by the person concerned in the ‘prescribed’ manner. It is pertinent to mention here that (a) the Act does not expressly provide the timeline for filing evidence in opposition proceedings; (b) the Act states that any evidence shall be submitted in the ‘prescribed’ manner within the ‘prescribed’ time; and (c) “prescribed” is defined in the Act to mean prescribed by rules made under this Act.

The IPAB, while placing emphasis on the above provision, held that an interpretation of the omission of the extension provision in the New Rules resulting in parties not being able to seek an extension of time to adduce evidence in opposition proceedings, will be oppressive to justice. This is because such an interpretation will lead to a conclusion that the rules (that are merely procedural in nature) supersede the Act. Thus, the IPAB held that, effectively, by deleting the extension provision in the New Rules, the legislature only lifted the one-month restriction imposed on Registrars to grant extensions. In other words, applicants/ opponents can seek extensions of time innumerable times. The acceptance of those requests is, needless to say, subject to the Registrar’s discretion.       

While the Registrars’ discretion to grant extensions of time is limited to cases in which no express timeline is provided by the Act, it is noteworthy that the timeline for evidence submission provided in the New Rules finds it foundation in the Act itself. In other words, the Act expressly recognizes the timeline ‘prescribed by the rules’. As such, it is a matter of contemplation as to why the IPAB deemed the timeline for evidence submission prescribed by the rules as not being expressly provided by the Act!

This decision comes at a time when the timeline for opposition proceedings has become significantly reduced by the Registry’s concerted efforts to reduce its decades-old backlog. While this interpretation of the IPAB is surely a welcome change for foreign applicants/ opponents who, at times, for genuine reasons, are unable to provide cogent documentary evidence within the prescribed two-month window, it has opened up the pandora’s box for parties to delay opposition proceedings by filing unwarranted extension requests.

While the waters in opposition proceedings before the Registry are yet to be tested in light of this decision, it will be interesting to see if the Registry enforces this decision retrospectively or prospectively.

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