Rule 18(2) of the Trade Marks Rules, 2017, must be interpreted purposively to align with Section 21(2)’s requirement of receipt

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In the intricate landscape of trademark law, the case of Mars Incorporated v. The Registrar of Trade Marks & Ors. emerges as a pivotal exploration of procedural fairness and the sanctity of due process. Adjudicated by the High Court of Delhi, this case underscores the critical importance of effective service of notices in trademark opposition proceedings and the judiciary’s role in rectifying administrative oversights. At its core, the dispute revolves around the erroneous abandonment of Mars Incorporated’s trademark application due to alleged non-receipt of opposition notices, raising questions about the interpretation of statutory provisions and the balance between procedural rules and substantive rights. The judgment not only rectifies an administrative error but also sets a significant precedent for ensuring that trademark applicants are not unfairly prejudiced by lapses in communication, making it a cornerstone case for intellectual property practitioners and multinational corporations navigating India’s trademark regime.

Detailed Factual Background:

Mars Incorporated, a globally renowned multinational company incorporated under the laws of the United States, is a titan in the production of chocolate, confectionery, snack foods, main meals, drinks, and pet care products. With a presence in over 100 countries across five continents, Mars owns a portfolio of iconic trademarks, including GALAXY, M&M’s, PEDIGREE, WHISKAS, MILKY WAY, BOUNTY, MARS, TWIX, and SNICKERS. The present case centers on its trademark application no. 4083355 in Class 30, filed on February 11, 2019, for a mark related to its product offerings. The application was published in Trade Marks Journal No. 2017 on September 13, 2021, inviting public opposition as per standard procedure.

Following the publication, two parties—respondent no. 2 (Cadbury UK Limited) and respondent no. 3 (Celebration)—filed notices of opposition, bearing nos. 1141655 and 1141733, respectively, challenging Mars’ application. The Registrar of Trade Marks purportedly served these notices on Mars on March 7, 2022, via despatch nos. 5527006 (for respondent no. 2) and 5527087 (for respondent no. 3). However, Mars contended that it never received these notices, either through email, post, or courier. On February 6, 2023, the Trade Marks Registry issued a public notice in Journal No. 2090, declaring Mars’ application, among others, “deemed to have been abandoned” under Section 21(2) of the Trade Marks Act, 1999, for failing to file a counter-statement within the stipulated two-month period.

Upon discovering its application’s inclusion in the abandonment list, Mars promptly submitted a representation to the Trade Marks Registry on March 6, 2023, supported by affidavits from relevant personnel, asserting non-receipt of the opposition notices. Mars argued that the abandonment was erroneous, as the statutory period for filing a counter-statement had not commenced due to ineffective service. Despite these efforts, the Registry marked the application as abandoned on July 20, 2023, prompting Mars to file a review petition on September 4, 2023 (registered on September 5, 2023), seeking reinstatement of the application and rectification of its status to “Opposed.” The Deputy Registrar dismissed the review petition on October 25, 2024, upholding the abandonment order, leading Mars to file the present appeal before the Delhi High Court.

Detailed Procedural Background:

The procedural journey of this case began with Mars’ trademark application filing on February 11, 2019, followed by its publication in the Trade Marks Journal on September 13, 2021. The subsequent filing of opposition notices by respondents no. 2 and no. 3 triggered the Registrar’s obligation to serve these notices on Mars, which was allegedly done on March 7, 2022. The Registry’s public notice of February 6, 2023, declaring the application abandoned, marked a critical turning point, prompting Mars’ representation on March 6, 2023, to contest the decision.

Concurrently, a related writ petition, Intellectual Property Attorneys Association (IPAA) & Anr. v. Controller General of Patents Designs & Trade Marks (CGPDTM) & Anr. (W.P.(C)-IPD 21/2023), was filed before the Delhi High Court, challenging the issuance of similar public notices and fresh notices by the Controller General. On April 13, 2023, the respondent in that case voluntarily withdrew the impugned notices, and a public notice dated April 21, 2023, restored all affected applications to their original status. Despite this, Mars’ application was inexplicably marked abandoned on July 20, 2023, without considering its earlier representation.

Mars’ review petition, filed on September 4, 2023, sought to rectify this error, but the Deputy Registrar’s dismissal on October 25, 2024, led to the filing of the present appeal under Section 91 of the Trade Marks Act, 1999, registered as C.A.(COMM.IPD-TM) 88/2024. The appeal was accompanied by two interlocutory applications: I.A. 49485/2024 (unspecified in the document) and I.A. 8631/2025, filed by respondent no. 3 seeking condonation of a 28-day delay in filing its reply affidavit. Notice in the appeal was issued on December 23, 2024, with respondents no. 1 and 2 accepting notice in court, and respondent no. 3 filing its reply affidavit on March 28, 2025. The case was heard by Hon’ble Mr. Justice Amit Bansal, who delivered an oral judgment on April 2, 2025.

Issues Involved in the Case:

The case presented several critical issues for adjudication. First, whether the Notices of Opposition were effectively served on Mars, triggering the statutory period for filing a counter-statement under Section 21(2) of the Trade Marks Act, 1999. Second, whether the Trade Marks Registry’s abandonment order of July 20, 2023, and the subsequent dismissal of Mars’ review petition on October 25, 2024, were legally sustainable given the alleged non-receipt of notices. Third, whether the provisions of Section 21(2) of the Act and Rule 18 of the Trade Marks Rules, 2017, create procedural ambiguity regarding the commencement of the counter-statement filing period. Fourth, whether Mars’ affidavits asserting non-receipt were adequately considered by the Registrar. Finally, whether the court should restore Mars’ application to allow it to file a counter-statement, balancing procedural compliance with the principles of natural justice.

Detailed Submission of Parties:

Appellant argued that the impugned order was fundamentally flawed due to the non-receipt of the Notices of Opposition. Mars relied on affidavits from its personnel, confirming that neither its advocates nor agents received the notices via email, post, or courier. Appellant emphasized that Section 21(2) of the Act mandates that the counter-statement period begins upon receipt of the notice, and without effective service, the abandonment was premature. Appellant cited precedents from the Delhi and Madras High Courts to argue that non-service invalidates abandonment orders and that the Registry’s reliance on Rule 18(2) of the Trade Marks Rules, which deems service complete upon sending an email, creates ambiguity contrary to the Act’s intent. Mars further contended that the Registrar’s impugned order failed to consider its affidavits, undermining procedural fairness.

The Registrar of Trade Marks conceded that no acknowledgment of the email enclosing the Notices of Opposition was received from Mars. This admission weakened the Registry’s position, as it suggested a lack of evidence confirming effective service. Respondent no. 3, argued that the appeal should be dismissed, asserting that the notices were duly served at the email address provided in Mars’ application. Respondent no. 3 pointed to the Registry’s records, which showed no email delivery failure, and argued that Mars’ failure to file a counter-statement within the prescribed period justified the abandonment. However, respondent no. 3’s reliance on the Registry’s email success report was challenged by Mars’ affidavits and the Registrar’s admission of non-acknowledgment.

Detailed Discussion on Judgments Cited by Parties:The court relied on three key precedents cited by Mars, each addressing procedural fairness in trademark opposition proceedings:

Rishabh Jain v. Registrar of Trade Marks, 2023 SCC OnLine Del 7990: In this case, the Delhi High Court addressed a similar issue where the petitioner claimed non-receipt of a Notice of Opposition due to an incorrect email address. The court found no evidence of service at the specified email and set aside the impugned order, allowing the appeal. This precedent was directly relevant, as Mars similarly contended that the notices were not served at its registered email, supported by affidavits. The court applied this ruling to question the Registry’s claim of service.

Purushottam Singhal v. Registrar of Trade Marks, 2023 SCC OnLine Del 1641: Another Delhi High Court decision, this case involved an appellant who asserted non-service of a Notice of Opposition. The court, after reviewing the records, found no proof of service and set aside the abandonment order. This judgment reinforced Mars’ argument that the absence of verifiable service invalidates an abandonment order under Section 21(2), particularly when supported by affidavits attesting to non-receipt.

Samsudeen A v. Registrar of Trade Marks, 2024 SCC OnLine Mad 6309: The Madras High Court’s ruling was pivotal, as it addressed the ambiguity between Section 21(2) of the Act and Rule 18(2) of the Trade Marks Rules. The court held that Rule 18(2), which deems service complete upon sending an email, must be purposively interpreted to align with Section 21(2)’s requirement of receipt. The Madras High Court allowed the appellant to file a counter-statement, directing the Registrar to consider the opposition on merits. This precedent guided the Delhi High Court’s reasoning, emphasizing that a literal interpretation of Rule 18(2) would undermine applicants’ rights.

Detailed Reasoning and Analysis of Judge:

Court's reasoning was anchored in a meticulous analysis of statutory provisions, judicial precedents, and the case’s factual matrix. The court began by examining Section 21(2) of the Trade Marks Act, 1999, which mandates that the counter-statement period commences upon receipt of the Notice of Opposition. In contrast, Rule 18(2) of the Trade Marks Rules, 2017, deems service complete when an email is sent, creating a procedural inconsistency. The court agreed with the Madras High Court’s reasoning in Samsudeen A, holding that Rule 18(2) must be interpreted purposively to align with Section 21(2)’s emphasis on receipt, ensuring fairness to applicants.

The court scrutinized the Registrar’s impugned order, which claimed that the notices were served on Mars’ email ([email protected]) on March 7, 2022, with an “email sent success report.” However, the order lacked evidence of acknowledgment from Mars, unlike the documented acknowledgment for the opponents’ service. The Registrar’s failure to address Mars’ affidavits, which deposed non-receipt, further undermined the order’s validity. The court noted the Registrar’s admission, through Ms. Nidhi Raman, that no acknowledgment was received from Mars, casting doubt on the effectiveness of service.

Drawing on Rishabh Jain and Purushottam Singhal, the court emphasized that abandonment orders cannot stand without proof of service, particularly when applicants provide credible evidence of non-receipt. The court found Mars’ affidavits compelling, and the Registry’s reliance on an email success report insufficient to counter this evidence. The court also considered the broader context of the IPAA writ petition, where the Registry’s withdrawal of similar notices indicated systemic issues in service procedures, further supporting Mars’ claim of procedural error.

The court concluded that the abandonment order and the dismissal of Mars’ review petition were unsustainable, as they violated the principles of natural justice and statutory intent. To rectify this, the court directed the Registry to re-serve the Notices of Opposition and allow Mars to file a counter-statement, ensuring its right to a fair hearing.

Final Decision:

The Delhi High Court allowed the appeal, setting aside the impugned order dated October 25, 2024. The matter was remanded to the Trade Marks Registry, with directions to serve the Notices of Opposition afresh to Mars’ counsel within two weeks. Mars was granted the opportunity to file a counter-statement within the prescribed statutory period. The court disposed of the appeal on April 2, 2025, directing the Registry to supply a copy of the order to the Controller General of Patents, Designs, and Trade Marks for compliance.

Law Settled in This Case:

This case establishes several key principles in trademark law. First, effective service of a Notice of Opposition is a prerequisite for triggering the counter-statement period under Section 21(2) of the Trade Marks Act, 1999, and abandonment orders based on unverified service are invalid. Second, Rule 18(2) of the Trade Marks Rules, 2017, must be interpreted purposively to align with Section 21(2)’s requirement of receipt, prioritizing applicants’ rights over procedural presumptions. Third, affidavits attesting to non-receipt of notices constitute credible evidence, and the Registrar must consider them before upholding abandonment. Finally, the judiciary plays a critical role in rectifying administrative errors to uphold natural justice, ensuring that trademark applicants are not unfairly prejudiced by procedural lapses.

Cause Title: Mars Incorporated Vs The Registrar of Trademarks

Case Number: C.A.(COMM.IPD-TM) 88/2024

Neutral Citation: 2025:DHC:2463

Date of Decision: 2 April 2025

Court: High Court of Delhi at New Delhi

Judge: Hon’ble Mr. Justice Amit Bansal

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi