Trademark lawyers in India can breathe a sigh of relief after an important clarification by the Delhi High Court regarding the duty to serve counter statements under the Trademarks Act. Recently, the Court accepted a review application (pdf) by the Intellectual Property Attorneys’ Association against the judgement passed in Sun Pharma v. Dabur India, wherein the Court had seemingly imposed the obligation to serve a Counter Statement to the Opponent, on the Applicant, instead of the Registrar. In the impugned order, inter alia the Court had held that “Under Rule 50 of the 2002 Rules, the counter statement is to be served by the Applicant itself and not by the Registrar” and had seemingly reiterated this understanding in different places. This interpretation has been assessed by Anurathna Mathivanan and Nivrati Gupta in their wonderful guest post here, explaining how it falls flat in light of the legislative scheme of the Trademarks Act and Rules.
Setting the record straight, in the recent order the Court clarified that “Clearly…at certain places, the term ‘counter statement’ ought to be read as ‘evidence’.” and “insofar as counter statements are concerned, the same upon being filed by the Applicant, in accordance with Section 21 of the Trade Marks Act, 1999, would have to be served by the Registrar to the Opponent. Insofar as evidence is concerned, direct service by the parties itself would trigger the reply period for the parties to file their respective evidence.”
Consequently, now the corrected version of the above paragraph reads as “...Under Rule 50 of the 2002 Rules, the evidence is to be served by the respective parties itself and not by the Registrar. Under Rule 45 of the 2017 Rules, again service of evidence is by the respective parties itself and not by the Registrar.” Similar changes have been carried out in paras 25, 26, 27, 34, 35, 36 and 47 of the judgement and the corrected version can be accessed here (pdf).