This article has been written by Diksha Shastri. It covers the process of filing evidence in support of opposition under Rule 45 of the Trade marks Rules, 2017. The article also emphasises on the types of evidence, its significance on opposition of trade marks, and the challenges that people generally face while submitting evidence.

This article has been published by Shashwat Kaushik.

Introduction

Registered trade marks are much more than just a symbolic representation. Today, registration of intellectual properties has become a way of branding and monetising various businesses, nationally as well as internationally. A trade mark, as the name suggests, refers to a mark that can be represented geographically in the course of trade, and commerce. However, for any mark or sign to be a trade mark, it has to fulfil the essential of being distinctive and unique. 

The reason behind this being the fact that all the trade marks that are registered with the trade mark office must have their own and distinctive features, no two deceptively similar trade marks can be registered as intellectual property. The uniqueness plays a very important role in each trade mark that is granted registration. It helps in curbing improper trade practices like trade mark infringement, impersonation of the brands, and more. 

Rule 45 of the Trade marks Rules, 2017, is discussed in depth in this article to shed light on the proper procedure to be followed while submitting the evidence in support of opposition to a trade mark application. The evidence in support of opposition under Rule 45 can help secure the rights of an already existing registered trade mark in case a deceptively similar application is filed with the registry. 

Rule 45 of the Trade Marks Rules, 2017

Rule 45 of the trade marks rules talks about the submission of evidence in support of opposition, within 2 months of receiving the counter-statement by the applicant in a process of opposition. 

Object of Rule 45 of the Trade Mark Rules, 2017

Any person who initiates a trade mark opposition, they do it to protect the interest in the mark. So, the entire process is made in a way to help safeguard the rights of the prior user of a registered trade mark. Let’s see the purpose of filing evidence under Rule 45: 

• It helps in supporting your opposition case; 
• Gives you more points to rely on during the hearing; 
• Evidence in support of opposition helps in protecting existing trade marks; 
• Prevents someone to piggyback of your brand name by infringement; and 
• Last but not the least, it allows you to show the prior and constant use of the trade mark for your business. 

For a better understanding of the Rule 45 we first need to see the meaning of trade mark opposition and its process. This will help us in understanding Rule 45 more clearly. 

Let us go in chronological order and start with the meaning of trade mark opposition. 

Trade mark opposition

One of the factors that lead to the refusal of a trade mark application from registration is that it must not infringe upon the rights of any existing trade marks. This is also what the trade mark objection under Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) is highly based upon. To read in more details about Section 11 visit this link. 

So, what action can be taken when someone files an application for a trade mark and it infringes the rights of an existing mark? Can one oppose the registration of that infringing mark? The answer is yes and that is how trade mark opposition becomes an integral step of the process of trade mark registration. 

Trade mark opposition is that stage of the trade mark registration process where after the publication of a mark in the trade marks journal, the mark remains open for third party opposition for a period of four months. Thus, if anyone feels that a mark published in the Trade Marks Journal is infringing their rights, they can go ahead, and file a trade mark opposition against the registration of the mark. You can click here to read about trade mark registration in detail. 

As a result of this, the original trade mark gets a chance to contest the registration of the mark and prove its points. Hence, all in all, this is a fair chance for the third parties to oppose the registration of a trade mark, in case they feel that their rights have been infringed. 

For example, if company XYZ is applying for the trade mark registration of a clothing brand under class 25 named “Alyssa” as a wordmark. While conducting the search, they find out that the partnership firm ABC already has a registration certificate for the wordmark “Alissa” in the same class. Now, if the company moves ahead with filing the application, the partnership firm, i.e., prior owner of a similar mark in the same class, can file an opposition to contest the registration of this mark. 

Filing a trade mark opposition marks the beginning of the opposition process during which both the parties are required to submit evidence, and even appear for the opposition hearing before the trade mark registrar, who decides whether the opposition stands accepted or not. In cases where the opposition is accepted, the infringing mark gets refusal from registration and in cases where the opposition fails to prove similarity, the application gets accepted for registration. 

Now that we know the meaning of the trade mark opposition, let us take a look at who can file for a trade mark opposition. 

Who can initiate opposition of a trade mark

Section 21 allows ‘any person’ to file an opposition to registration of a trade mark. Here is the list of people who can initiate opposition of a trade mark: 

• A prior user of an existing similar trade mark;
• Any business, competitor etc who feel their rights were violated;
• A customer or designer, etc; and
• Any person who thinks that the registration of a mark might create confusion in the minds of the general public. 

Now that you know who can oppose a trade mark opposition we shall move towards the process. Simply knowing whether you can oppose a trade mark registration or not is not enough. 

Procedure of trade mark opposition

Let’s take a look at the process of trade mark opposition: 

Publication in journal of trade marks

When an application gets published in the journal of trade marks after a show cause hearing, it can be opposed by any third party for 4 months.

Filing notice of opposition and counter statement

Once the owner of an existing trade mark or any interested party becomes aware that a similar mark has appeared in the journal of trade marks, they can file a notice of opposition. 

Essentials

• Firstly, the basic details of the trade mark application on which opposition is to be filed;
• Then, the details of the  party filing the opposition; and 
• The grounds of opposition in a clear manner. 

Then, the applicant is required to submit a counterstatement before the trade marks registry. Here, they need to deny grounds of opposition with appropriate reasons. 

Stage of evidence filing

After both the parties submit their contention for and against the trade mark opposition, it is the opponent’s duty to provide the evidence supporting the grounds of opposition. The timeline for filing evidence in support of the opposition is within two months of getting the notice of submission of counter statement by the applicant of trade mark. This takes place as per the Rule 45 of Trade Mark Rules, 2017. 

This stage goes both ways. After the opponent, it is the applicant’s turn to submit evidence in accordance with Rule 46 of Trade Mark Rules, 2017. 

Thereafter, the opposing party gets another shot at filing any further or additional evidence that they may feel will help them in making their point stronger. However, at this stage they only get one month from receipt of evidence from the applicant to file the further evidence. At all these three stages, both the parties need to send the copies of evidence to the registrar as well as the other party. 

Trade mark opposition hearing 

After receiving all the copies of evidence from the parties, the registrar will examine all the submissions, and accordingly issue the notice of opposition hearing. 

End of opposition

Where the decision is in favor of the opponent the application gets refused, in other cases, it proceeds for registration. 

Click here to read more about trade marks opposition in depth. 

After understanding what trade mark opposition is, it would be easy to understand the Rule 45 and what it states. So let’s move ahead to the heart of the article and see what Rule 45 of the Rules states. 

Explanation of Rule 45 of the Trade Mark Rules 2017

Rule 45 of the Trade Marks Rules, 2017 comes into the picture during the evidence filing stage of the opposition proceedings. It is the rule that allows the opponent of a trade mark to submit the evidence in support of their opposition. 

A simple reading of Rule 45 states that “Within two months of receiving the service of the counter-statement filed by the applicant to protect their mark from being refused, the opponent shall either: 

• Leave with the registrar and applicant an affidavit of all the evidence in support of his opposition; or 
• Intimate the registrar and applicant in writing that he does not wish to provide the evidence required and shall only rely on the facts mentioned in the notice of opposition. 

If an opponent to a trade mark registration fails to do either of the above steps then it will lead to abandonment of the opposition proceeding. The evidence in support of his opponent has to be provided within the given time period of two months.

In these kinds of procedures it is very important to stick to all the prescribed time limits. Now we will learn about the time frame which is required to file the evidence. 

Timeframe for submission of evidence in support of opposition

The time frame is also stipulated in Rule 45 of the Trade Marks Rule, 2017. According to Rule 45, the submission of an affidavit should be done within two months of receiving the counterstatement from the applicant of the mark. The consequence of not doing it in time can lead to:

• Delay in opposition proceeding; 
• Getting your opposition abandoned; or 
• Registration of the infringing mark. 

There are so many documents other than an affidavit which needs to be filed. 

Documents required under Rule 45 of the Trade Mark Rule 2017

While submitting an evidence affidavit under rule 45, you need to have the following in handy:

• A power of attorney, if you are hiring a professional;
• Affidavit containing details of all exhibits;
• Hard copy of evidence materials labeled as exhibit; and
• In case you don’t have any affidavit, then you need to submit a waiver informing the registry that you are waiving off the right to submit an evidence affidavit. 

We cannot just file for an opposition without having evidence that the trade mark is infringing any one’s rights. Evidence plays a key role in proving the stance. 

Let us now understand what all evidence can be filed in support of opposition under the Rule 45 of Trade Marks Rule, 2017.

Evidence in support of opposition under Rule 45 of the Trade Mark Rules 2017

As we can see from the stages of the trade mark opposition process, the stage of filing evidence is important for both the parties involved. We can say that it gives them a chance to prove that the points they have made in the opposition notice are accurate, and have some sort of backing. 

In a case where the opponent feels that they do not have any evidence to support their contentions, they can even waive their right to submit these evidence by just mentioning in writing and submitting before the registrar that they do not wish to provide any evidence, and that the registrar can solely rely on the notice of opposition to make their decision.

Now, if the opponent fails to submit the evidence in support of opposition under Rule 45, and they also fail in informing the concerned registry of their waiver of the right to produce evidence, the registrar can make a decision at that point to abandon the opposition proceedings.  

Now that we have understood the Rule 45, it is also important to know what all types of the evidence in support of opposition are there. Because if we don’t know what all documents we can include what is the use of knowing Rule 45. 

Types of evidence required under Rule 45 of the Trade Mark Rules 2017

Till now we have talked in detail about the evidence and its importance. However, what type of evidence can actually be submitted under Rule 45? Let us see in this section of the article. 

Affidavit of evidence

An affidavit is used in the courts to allow the parties to present their side and provide evidence in their favour. All the statements made in an affidavit are considered  to be factually correct during any legal proceedings.  So, it entails an important step in the process of trade mark opposition, where the opponent is making true statements to protect their claim over the trade mark that is being infringed or passed off. Moreover, apart from the statements, the evidence affidavit also has copies of various documents that can prove their case, attached as exhibits to the affidavit of evidence. 

In the matter of Mr. Manish Agarwal vs. The Registrar of Trade Marks and Ors. (2022), a writ petition was filed against an order passed by the New Delhi Trade Marks Registry. The order in question contained the admission of evidence in support of opposition, which according to the applicant of trade marks and the petitioner here, were not filed in a timely manner. 

To which, in this case, the opponent had responded that the evidence affidavit running over 12 pages, was submitted electronically in a timely manner. However, there was a typing error in the title, which deduced that the evidence was being filed in accordance with Rule 47 instead of Rule 45. 

Due to this, and the fact that opponents stuck to the fact that they had submitted the evidence in a timely manner, the Delhi High Court was unable to decide on the timeline of filing the evidence. However, it was of the view that the opposition evidence under Rule 45 must be accepted, allowing the applicant to further submit their evidence, and then proceed with the opposition hearing and decision. Since, there had been enough delay for the registration of the mark, the Delhi High Court charged the opponent a cost of 5000 per application for the confusion created and improper filing. 

Through the example of this case, you can see the importance of filing evidence in support of your contention in order to protect your rights over the trade mark. Moreover, it also shows the need to maintain accuracy and vigilance  throughout the trade mark opposition process. 

Invoice consisting mark 

If you submit various sales and purchase invoices that prove that the mark has been in use for the products/services applied for, it makes your case much stronger. Moreover, the dates on invoices are often one of the best ways to analyse the prior user of a trade mark in case of opposition proceedings. In India, the prior users are always given the preference to fight for their rights. So, it is always secure to keep your invoices safely, who knows, you may need them to protect your brand’s unique identity. 

For instance, in the case of Champagne Moet And Chandon vs. Union Of India & Ors. (2011), the petitioners, a french company, having their trade marks registered in India, for manufacturing of wines had brand identity in over 150 countries. They claimed to have founded this firm in 1743, where Claude Moet spent his entire lifetime in making the experience for Champagne better. The brand Moet found its way to India as early as 1906. As a result, they had obtained a registration of trade marks under class 33 in the year 1982 and received the registration in 1985. 

They filed an opposition against the registration of a name Moet, for a partnership firm titled as m/s Moet, which had been in use since 1967. They claimed that the mark was adopted from the hindi name of Mohit. Upon receipt of the counterstatement, the petitioners filed their evidence affidavit which included notarised copies of various invoices, correspondences, and other ledger records which proved that the mark was being used by them since 1906. 

Whereas, the respondent, i.e., m/s Moet had in its evidence also submitted various sales figures from the year 1968, which proves that the mark has been a significant part of their trading style. 

The submission of these invoices with the dates helped in making the case stronger for the respondents, as both the parties were able to prove the honest and concurrent use of their individual marks, leading to the refusal of the opposition proceedings. 

Aggrieved by this order, the petitioner took further action to protect his rights and went over to file an appeal before the Intellectual Property Appellate Board (IPAB), which was responsible for handling all appeals arising from the orders of the trade marks registry previously in matters related to trade mark protection in India, previously. In the present case, however, this appeal was also dismissed by the IPAB, without taking any action or making any interference with the previously passed order. 

Moreover, in the case of Macleods Pharmaceuticals vs. Zaneka Pharm (2008), the plaintiff had filed a suit for injunction against the use of their registered trade mark under class 5 “Domizol”. While the respondents in this case had tried to pass off their product and apply for registration of the mark ‘Domizole’ under the same class. Once the summons was issued, the respondent claimed to be an honest and prior user of the mark. However, they were not able to provide the evidence in support of that. Whereas, the plaintiff had submitted the product, its detailed description, along with the copy of the registration certificate. 

In addition to that, they also provided the certified copies of sales invoice, and the total sales turnover from 2002-2004. The production of the invoices as evidence, assured that the mark was in use continuously and was also recognised by the public at large. Moreover, the registrar also considered how the mark and its identity were bringing in profits for the opponent, due to the increase in turnover over the years. Thus, the Delhi High Court passed an order of injunction as an ex parte order to help them protect the rights over their registered trade mark.

As you can see here, having the certified copies of turnover and sales invoice helped the brand protect its unique rights. When it comes to the submission of evidence under Rule 45, it is important that you collect all sorts of invoices that display your trade mark, to help you protect your image. 

Advertising materials 

All different types of advertisement and promotional materials that include the trade mark can be included as evidence in the affidavit under Rule 45. You can label each one separately as exhibits to the affidavit. The following types of materials can be included: 

• Packaging materials;
• Pictures of the brand in use;
• Social media presence, marketing efforts; 
• Testimonials or declarations from the consumers;
• Brochures, catalogues, newspaper clippings, etc;
• Media coverage, press releases, etc; 
• Statistics of your online presence, and more. 

Any of these materials, and more can help you protect the identity of your brand, as long as it mentions the brand and helps in proving : 

• Usage of the mark; and 
• Distinctive identity in the minds of the consumers and general public.

Hence, don’t take the efforts you make towards the brand protection and building a brand presence lightly, it will help you in the long run if your rights get infringed and someone tries to piggyback on your reputation and hard earned fame. 

Relevant case laws

In the case of Merck Kgaa & Anr vs. Abhinav And Ashok Trading  (2014) the Delhi High Court had to pass an ex parte permanent injunction in favour of the petitioners, when they were able to provide all evidence in favour of their prior registered mark. In this case, the plaintiff is a well-known pharma brand for over a hundred years. They were the rightful owner of the registered trade mark ‘Carbophar’ under class 5 for the preparations of medicines, etc. They initiated opposition proceedings against the defendant when they noticed an advertisement in the journal of trade marks in the name of the defendant. When the defendants failed to respond to it, the petitioner moved to the court. 

In their defence, the defendants claimed to have received the approval to curate such medicine and denied that they had infringed upon the rights of the petitioner. However, they then stopped participating in the proceedings and the decision was made on the basis of the evidence deduced in support of the opposition and the other available material. As a part of their evidence, the petitioners had submitted: 

• Trade mark registration certificate; 
• Original sales invoices; 
• Packaging materials; 
• Copy of the cutting of the journal of advertisement; and more. 

Additionally, the Madras High Court, in the case of Aqua Pump Industries vs. Subhash Chandra Jain (2022) granted a permanent injunction against the defendant and its associated people from refraining to use the registered mark of the petitioner “Texmo”. They had a registration over this mark since 1998 and have been using it since before that, all over India for the goods related to pumps and monoblocks, etc.  The defendants failed to provide any evidence to prove their case. On the other hand, the petitioner had presented the copies of following in the form of evidence: 

• Certificate of registration;
• Copy of the journal entry in the trade marks register; 
• Certified copies of various advertisements made during the years 1994-2002;
• Photocopy of the awards they had received. 

These evidence copies were as long as 40 pages and also included the prestigious best export award presented by the Government of India. 

This case again proves how useful your advertisement efforts can prove to be, while protecting the of your brand or trade mark rights. 

You must have thought what does the Trade Mark Register do in this entire process? Is his role important in the trade mark opposition process?

Our next heading will discuss the role of the Registrar in evidence filling. 

Role of the Registrar in evidence filing under Rule 45 of the Trade Marks Rules, 2017

During a trade mark opposition process, except for the two parties, the Registrar of trade marks officer assigned plays a very important role in protecting the integrity of an already existing trade mark. Let’s check out the Registrar’s role specifically while handling evidence in trade mark opposition: 

Recipient of the evidence 

The first role that the Registrar of trade marks plays in evidence filing is that they are the primary receiver of evidence under Rule 45 of the Trade marks Rules, 2017. As we know, the after submitting the online copies of duly notarized evidence, you also need to send two copies to : 

• The Registrar; and 
• The applicant whose mark you are opposing. 

This is an important aspect considering that the date of submission can play a very  important role, in case there is any delay in submission of the evidence copies. Since the Registrar is the primary receiver, it comes to them to consider the final date of submission in case of dispute. 

Keeps the process in line

In a trade mark opposition proceeding, the Registrar of trade marks has the final call. Hence, he or she is the authority that keeps the entire process of opposition in line. In case there is a delay in submission at any stage of opposition including evidence filing, the Registrar has to take the call on abandoning the application or opposition, respectively. 

Sends out notifications to parties

At every stage of the trade mark opposition, both the parties involved get updates from the registry in the form of notices on email or on the IPIndia portal. So, who is the person responsible for sending out these notifications on time? The answer is the trade marks Registrar. He or she must be vigilant with the updates and ensure that timely notices are sent to each party, so that the process of opposition can be completed without much delay. 

Hears both sides

Apart from taking into consideration all the contentions, counters, and evidence in opposition of trade marks, the Registrar is also responsible to arrange for the opposition hearing. He decides the date, notifies the parties, and then hears the evidence provided by both the sides before deciding on the fate of a trade mark opposition. During the hearing, it is necessary that the Registrar stays unbiased and provides a chance to both the parties to present their side.  

Takes the final decision

Upon receipt of the evidence under rule 45, rule 46 and rule 47, the Registrar decides and takes up the hearing process. At the end, the final decision based on the evidence presented, is taken by the Registrar himself. Hence, this makes him an integral part of the evidence filing under Rule 45 of Trade Marks Rules. 

By now, it is very evident that filing the evidence under Rule 45 is one of the best ways to make a strong case about your trade mark rights. Let us take a look at the impact it can leave on your opposition proceeding. 

Impact of filing evidence under Rule 45 of the Trade Mark Rules 2017

Filing an evidence under the Rule 45 helps by:

• Makes your case stronger;
• Helps everyone see that you have been using the trade mark in the relevant class;
• You can emphasise on the losses you may incur if the mark is registered; and 
• You can create a comparison of similarities to see how the registration of the mark can negatively impact your unique brand identity. 

Every stage in the trade mark registration process has been given a set time period under which that particular stage has to be completed to ensure speedy registration. 

Similarly there is a fixed time period of opposition under Rule 45 as well!

Time period of opposition under Rule 45 of the Trade Marks Rules 2017

The time period for filing an opposition evidence under Rule 45 is two months from the date of receiving the notice of the counter statement. As we can see in the case above, there have been many instances where the parties forget to file the evidence or submissions in time. Moreover, there have also been instances of years of delay in trade mark opposition proceedings. As a result of which the laws have also been revised time and again. 

The current standing on this fact is that the time period for filing an opposition under Rule 45 cannot be extended, as the discretion does not lie with the registrar. You can try to stay updated with the notices posted on the official trade mark registry website, keep a track record of all the notices dispatched w.r.t your application, and try to monitor the trade marks journal to protect your rights. 

But can the applicant or the third party get an extension on this time period? What if there is an emergency which they cannot avoid? Are they only given one chance? There are some circumstances where the extension is provided, but it does not mean extension will be given all times. 

In our next heading let’s find out whether extension of time for filing the evidence is provided or not.

Whether there can be extension of time for filing evidence under Rule 45 of the Trade Marks Rules 2017

As it’s clear by now, the prescribed timeline for submitting the evidence under Rule 45 is two months from the date of receiving the notice of counter statement. Many times, during the court proceedings, the issue of the timeline when the documents have been filed are the reason why things escalate between the parties in a trade mark opposition proceeding, hence the acceptance of the evidence filed beyond the timeline must be clarified. 

Recently, in an order passed in February 2024 in the case of Sun Pharma Laboratories Ltd. vs. Dabur India Ltd. & Anr. (2024), the Delhi High Court decided that the timeline for filing evidence under Rule 45 cannot be extended. 

The case arose when Sun Pharma, the petitioner filed an appeal to challenge the order of the Trade Mark Registry, wherein they had dismissed an opposition against registration of the mark “DABURGLUCORID KP” as a label mark in class 5 by the defendants.  In that order of dismissal, the extension of timeline that the petitioners herein sought was not accepted, after the petitioner had made a delay in submitting the evidence in support of the opposition notice. As a result of which the opposition was deemed to be abandoned. 

The main question of concern in this case was whether or not the timeline for filing an extension for the evidence filing be extended beyond the time period prescribed in Rule 50 of the Trade Mark Rules, 2017 or not.

In this case, the petitioner is the registered owner of the mark ‘Glucored’ in class 5 since 1995. Moreover, the mark is in use and its registration is valid until 2025. For other infringing marks, the petitioner has filed an opposition and succeeded. However, in this application, there was a delay in submission of evidence in support of opposition. 

The counterstatement was served on 12th June 2007. However, the opponent has submitted the evidence in support of opposition on 10th August, within the timeline as they had filed within the prescribed period and only delivery of copies happened 3 days later. The error was not in submission, but in delivering the hard copy of the evidence copy to the defendant before the 13th of August. 

The courier was sent to them on 14th August, received on 16th August. Hence, making it an unmissable delay of 3 whole days. Upon receipt of the evidence copy, the respondent asked for an extension in filing the evidence from their end for a month. However, they ended up not making any submissions. 

In January 2008, the petitioner then wrote a letter to the Trade Marks Registry that despite the service of evidence, the other party had failed to respond. When no action was taken, in February 2008, they again submitted a letter to close the evidence filing stage and proceed with the hearing. However, nothing happened. 

Then, suddenly after 9 long years, in August 2017, the petitioner tried again to bring the Registrar’s attention to the pending matter. As a result, the matter was set for hearing. In the hearing process, the respondent relied on the fact that the evidence was not filed on time, as a result of which it must not have been accepted. Resultantly, the opposition was abandoned.  

After a detailed study and interpretation of the provisions of the old rules of 2002 and the new rules of 2017, that were in force now, the Court held that now with the removal of certain words like ‘discretion of the registrar’ ensured that the time limit prescribed within the new rules was indeed mandatory and could not be extended. 

Moreover, they held that once the counter statement is received by the opponent, the two month period starts. However, if the evidence filing does not take place within the two months, the registrar has no discretionary power to increase or extend the deadline. 

With respect to the present matter, the court also held that there was no delay in filing, only a delay in sending the copy of the evidence. The registry of trade marks was then directed to proceed with the opposition forward on the basis of the merits of the parties. 

Relevance of Rule 45 of the Trade Marks Rules 2017

The stage of filing evidence as per Rule 45 of the trade mark opposition may seem to be a small part of a bigger procedure. Most trade mark applicants or owners are not even aware of the details of the opposition process. In fact, they usually take the evidence filing stage lightly. In many cases, people don’t think it’s necessary to present the evidence within the given timeline. 

This often results in people losing the battles they could win easily. Can you imagine someone using your trade mark for their profit, and you losing out on the battle because you got lazy, or probably were not even aware of the evidence filing stage, its timeline and its seriousness. 

The most important part about the evidence filing in support of the opposition is that you can give your grounds of opposition a serious evidential backing. This makes your case stronger before the registrar. 

After discussing all this rule and regulation on Rule 45 of the Trade Marks Rule 2017 let us take a look at some real life examples. What I mean by real life examples is the judgments passed on this Rule. 

Relevant case law on Rule 45 of the Trade Marks Rule 2017

M/S V-Guard Industries Ltd vs. The Registrar Of trade marks & Anr (2023)

Facts of the case

In this case, an appeal was filed against the order passed by the Deputy Registrar of trade marks in August 2018, against the approval of registration of the mark ‘LIVGUARD ZING’ by the respondent 2, since the appellant here had neither submitted the evidence affidavit nor intimidated the registrar of their intention of not adducing the evidence in support of the opposition.

The application in question was filed in 2014, and submitted in the journal of trade marks in February 2016. Before the end of four months, on 2nd June 2016, the opponent filed a notice of opposition, in response to which, the counter statement was submitted on 7th March. Until now, each action was taken in a timely manner. It is also undisputed that the notice of counter statement was also served to the opponent immediately on the same day, in an electronic format. 

After reading the Rule 45, the court discussed the use of the expression ‘leave with the registrar’. They stated this expression could not be given any legal interpretation. Subsequently, the registrar proceeded with a reading of the Rule 8 of the Trade Mark Rules 2017, which covers the leaving of documents with the trade mark registry. 

According to the appellant, the last date for filing the evidence affidavit was 7th May 2018. They had made various attempts to submit the evidence online on the trade mark registry website, failing to do so due to technical issues related to the website. Hence, they proceeded to send the evidence by way of courier, which was received by the registry on 10th May 2018, which was only 3 days later than the prescribed timelines. 

Issues of the case

Two main issues were discussed herein: 

1. Whether there was a delay in complying; and
2. If there was a delay, would the registrar be able to give an extension of time. 

Judgement of the case

The Delhi High Court decided, looking at the condonation of delay provided by the appellant that there could be no way to prove that the appellant had not tried to file and submit the evidence on the last day, i.e., 7th, when the website was not in a working condition. Moreover, they submitted the evidence on the very next day, through courier. Hence, ensuring that they made their complete efforts in trying to file, submit or leave the evidence with the Registrar. 

While relying on the fact that the legal provisions must not be interpreted in a rigid way, they highlighted the significance of the right to oppose a registration of a trade mark. It was held that since such efforts were made, and the website did indeed not function on the last prescribed day of the evidence filing limit, it would be unfair to think or assume that the party did not even try to submit the evidence in support of their statements. As a result, the order passed by the Deputy Registrar was dismissed, and they were asked to take a look at the evidence and proceed with the opposition proceedings. 

Like a coin has two sides, there is some criticism to this rule as well. 

Criticism of Rule 45 of the Trade Marks Rules 2017

Rule 45 of the Trade Mark Rules 2017, is designed to provide a chance to protect the interest of an opponent over their trade mark rights. However, there has been a debate regarding the interpretation of the term ‘leaving with the Registrar’, in the case of M/S V-Guard Industries Ltd vs. The Registrar Of trade marks & Anr (2023) discussed hereinabove. The decision of the Registrar with respect to the delay in filing evidence was criticised by the Delhi High Court and a more liberal interpretation was given to the meaning of Rule 45. 

As we know how important an affidavit is under Rule 45 let’s check out some tips to draft an affidavit. 

Tips to prepare affidavit under Rule 45 of the Trade Marks Rules 2017

Now that we’re reaching towards the end  of this article, here are some tips that can help you in preparing the strongest possible evidence affidavit under Rule 45 of Trade Marks rules to protect the identity and integrity of your brand: 

• Always keep a track on the notices issued by the Registry once the opposition process starts;
• The law gives ample amount of time for the trade mark owners at each stage of the opposition to complete the filings, so don’t miss out on any deadlines; 
• Try to use as much evidence as you can find with your brand name on it, we’ve also covered the different types of materials that can work out as evidence in opposition proceedings hereinabove; 
• Proper signature of the trade mark owner is also required throughout the evidence;
• Attach the hard copies of evidence materials as annexures to the evidence affidavit; 
• Do not forget to get it notarized by a public notary before finalising and submitting it; and 
• Always consult an expert legal or intellectual properties advisor before filing the final affidavit.  

Along with tips let us also discuss some key mistakes which you have to avoid when you are filing evidence under Rule 25 of the Trade Marks Rule,2017.

Mistakes to avoid while filing evidence under Rule 45 of the Trade Marks Rules 2017

These tips above are there to help you prepare an evidence affidavit that makes your opposition stronger. However, as humans, we are all prone to making errors, so, here’s a list of the common mistakes that you need to avoid at all costs: 

• Do not miss the deadline – This point cannot be emphasised enough, because even if you have the best possible case, the evidence might not get accepted if you miss out on the deadline. 
• Do not rely on insufficient research – From the time you get to know about the infringing mark and plan to file an opposition, you have to conduct thorough research at each stage of opposition, especially at the evidence stage, as it becomes your final chance to protect the brand. Research is not limited to seeing the infringing mark, but also taking out your old records and research on the value your brand has created and continues to create. 
• Not having a proper legal advisor – A lack of access to proper advice can also make you lose an opposition, even if your contentions were strong. As a professional, a lawyer or legal consultant will easily be able to pinpoint minute details that you can use in your affidavit. 
• Not keeping track of updates – Once you start the opposition towards a trade mark applicant, it becomes your responsibility to keep a track on each of their moves. It can happen that they miss a deadline, and you can use such information or inaction to make your case even stronger. 

All the countries have their own trade mark registration process. So they must have their own way of filing evidence in the trade mark opposition process too. Let us do a comparative analysis and see how Indian laws are different from other countries in this aspect. 

Comparative analysis of Rule 45 of Trade Marks Rule 2017 with other jurisdictions

India and the United States

Basis	Evidence in TM opposition in India	Evidence in TM opposition in the US
Governing Act/Rule	Submission of evidence in India by the opponent is done under Rule 45 of Trade Marks Rules 2017.	Discovery and exchange of evidence in the US is done under the provisions of Trade mark Rules of Practice.
Submission of evidence	The opponent submits evidence under Rule 45 to the Registrar as well as the applicant.	In the US, the exchange of evidence and other interrogations happen through a discovery conference between the parties.
Procedure of submitting evidence	In India, an opposition show cause hearing happens after submission of evidence by both the Parties.	In the US, if the applicant fails to provide a counter-statement, the show cause hearing takes place prior to the discovery conference.
Format of submitting the evidence	Submission of evidence in India includes duly notarized affidavit along with the hard – copies of the evidence.	It includes depositions, electronically stored information, requests for inspections, and more.
Time period for submission of evidence	The time period given for submission of evidence under Rule 45 is 2 months.	The entire phase of discovery lasts for 180 days.

India and the United Kingdom

Basis	TM evidence filing in India	TM evidence filing in UK
Filling Counterstatment	In India submission of evidence takes place after the submission of a counterstatement by the applicant through form TM-O.	In the UK, a time table to file evidence is issued by the Tribunal to both the parties once the submission of a counter statement takes place with form TM-8.
Submission of evidence	Submission of evidence is important irrespective of the grounds of opposition.	Submission of evidence is only required when the opponent needs to prove the earlier usage of the trade mark.
Format of submitting the evidence	It is submitted in the form of an affidavit.	Evidence in the UK trade mark opposition proceedings is submitted in the form of a witness statement, along with a statement of truth.
Copy of Evidence	The opponent is required to send the copy of the evidence affidavit along with the exhibits to the applicant.	In the UK as well, the opponent has to submit the copies of his written statement and statement of truth to the other side.

India and China

Basis	Trade mark evidence in India	Trade marks evidence filing in China
Responsible authority	In India, trade marks opposition and evidence are handled by the Trade Marks Registry.	In China, it is governed by the China National Intellectual Property Administration (CNIPA).
Time frame	The time frame of submission of an evidence affidavit in support of opposition is two months.	In China, the time frame for submission of evidence is three months.
Process of opposition	Once submission is complete, a date is fixed  for the opposition hearing.	However, the CNIPA directly issues an order with their decision under completion of 12 months from submission of evidence.

Is it beneficial for legal professionals and students to be aware of what Rule 45 is?

Importance of understanding trade mark evidence filing for law students and professionals

Many things and concepts look different in theory and practice. trade mark filings, oppositions, etc are also in the same category. So, it is very important for the young and budding legal professionals to know the practicalities of how things work, to get the best possible knowledge on the subject. By learning about the intricacies of the evidence filing stage as a law student, you can: 

• Indulge in a habit of constant learning and development;
• Figure out your level of interest in trade marks or the intellectual properties as a whole; 
• Refurbish your research skills; 
• Try and figure out evidence materials and the processes from a young age; 
• Give you an edge over your competition. 

Conclusion

When you fail to take the stages involved in opposition of a trade mark seriously, it can cost you more than just a few bucks of money. This failure can cost you your uniqueness in the competitive market. Remember, if you want to safeguard your trade mark even after the registration process is complete, you must keep a track of the trade marks journal and initiate opposition proceedings as and when required. 

And that’s not all! Even after you initiate the trade mark opposition, you have to stay vigilant of the rules and the stages involved. Even if you miss on a simple deadline like submission of the evidence in opposition, your opposition or application may get abandoned. The entire purpose of including this stage in opposition proceedings is to allow the trade mark owners to put forth their points and stop the registration of infringing marks. 

Frequently Asked Questions (FAQs)

What is the time limit for filing evidence in support of trade marks opposition? 

The time limit for filing the evidence in support of an opposition is 2 months from the date of  receipt of the counter statement from the applicant. 

What happens if I don’t file evidence for trade marks opposition within the timeline?

In case you fail to submit the evidence in support of your trade mark opposition within the prescribed time period of two months, your opposition will be deemed to be abandoned by the trade marks registry. 

On what grounds can a trade mark be opposed? 

A trade mark can be opposed when it infringes upon the rights of an prior existing trade mark, or it lacks the distinctiveness or distinguishable characteristics, if it is deceptively similar to an existing mark, or if it is against the public morals or values, or finally, if it contains a name restricted under the Emblems and Names (Prevention of Improper Use) Act, 1950. 

What is evidence of a trade mark? 

Evidence in a trade mark opposition process comes into play when the parties need to prove that the grounds of opposition, or the denials of it made through the counter statement are based on reliable facts. Evidence can be either in the form of packaging materials, invoices, advertisement materials, the brand value, and more. 

Why is evidence in support of the opposition important? 

It is very important to submit evidence in support of a trade mark opposition within the prescribed time limit. The idea is to provide the registry with all such information, documents and other proofs, that they can see the value of your mark, extent of infringement, and the negative impact that the continuation of such an infringement can have on your business or brand reputation. 

References 

• https://ipindia.gov.in/administrative-steps-involved.htm
• https://ipindia.gov.in/trade-marks.htm
• https://ipindia.gov.in/writereaddata/images/pdf/TMR_DraftManual_11March2015.pdf
• https://ipindia.gov.in/resources.htm#acts
• https://ipindia.gov.in/writereaddata/images/pdf/proposed-tm-manual-for-comments.pd
• https://www.wipo.int/portal/en/index.html
• https://www.gov.uk/government/publications/trade-marks-standard-opposition/guidance-standard-opposition-proceedings-before-the-trade-marks-tribunal
• https://www.cohnlg.com/ttab-discovery-conference/#:~:text=Ultimately%2C%20the%20primary%20purpose%20of,exchanging%20relevant%20information%20and%20evidence.
• https://www.lexology.com/library/detail.aspx?g=47bd481f-3849-4d4c-be9e-d4b6083d4289

SEO OPTIMISATION GUIDANCE

 Clarity and Coherence

Clarity:

– Simplify Complex Sentences: Some sentences are lengthy and complex, which might confuse readers. For example:

  > “During the trade mark procedure, the trade marks registry goes through all the trade mark applications, and during the examination stage, if they find issues pertaining to any of the above-mentioned points, they issue an examination report under Section 9 and/or Section 11 of the trade marks Act, 1999 (hereinafter referred to as ‘the Act’).”

  Suggestion: Break this into shorter sentences for better understanding.

– Define Legal Terms: Provide simple definitions for legal jargon. For instance, explain terms like “deceptively similar,” “counterstatement,” and “affidavit” in layman’s terms when first introduced.

Coherence:

– Improve Logical Flow: Rearrange sections for better flow. For example, consider discussing “Who can initiate opposition of a trade mark” immediately after “Meaning of trade mark opposition” to maintain topic continuity.

– Use Transitional Phrases: Add transitional sentences at the beginning or end of paragraphs to guide the reader through your arguments. This will help connect ideas smoothly.

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 Grammar and Style

Grammar:

– Proofread for Errors: There are grammatical mistakes and typos throughout the article. For instance:

  – “This explanation of Rule 45 of trade marks may seem to be a bit difficult to understand. However, it’ll be simplified if you have an understanding of the entire trade mark opposition proceedings.”

    Correction: “This explanation of Rule 45 may seem a bit difficult to understand. However, it can be simplified if you have an understanding of the entire trade mark opposition proceedings.”

– Consistency in Tense: Ensure that you maintain the same verb tense throughout the article to avoid confusion.

Style:

– Adopt a Conversational Tone: Rewrite sentences to sound more conversational and engaging. For example:

  – Original: “Not all marks that are applied before the trade marks office are registrable.”

  – Revised: “Remember, not every mark submitted to the trade marks office gets registered.”

– Vary Sentence Lengths: Use a mix of short and long sentences to create a dynamic rhythm in your writing.

– Use Informal Language Where Appropriate: Replace formal words with more relatable language. For example, use “you’ll need to” instead of “you will have to.”

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 Structure and Organization

Structure:

– Enhance the Introduction: Start with a hook that draws the reader in—perhaps a surprising fact or a question about trade marks.

– Strengthen the Conclusion: Summarize the key takeaways and reinforce the importance of Rule 45 in protecting trade mark rights.

Organization:

– Topic Sentences: Ensure each paragraph begins with a clear topic sentence that outlines the main idea.

– Logical Subheadings: Use subheadings that accurately reflect the content of each section. For example, change “Explanation of Rule 45” to “Understanding Rule 45 in trade mark Opposition.”

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 Relevance and Audience Engagement

Relevance:

– Connect to Career Opportunities: Emphasize how understanding Rule 45 can benefit students and professionals looking to advance in legal or business careers.

  Suggestion: Add a section on “How Mastery of trade mark Opposition Can Enhance Your Legal Career” or “The Importance of trade mark Knowledge in Business.”

Engagement:

– Include Real-Life Scenarios: Introduce hypothetical situations or anecdotes to illustrate key points, making the content more relatable.

– Interactive Elements: Pose rhetorical questions to the reader to engage them further.

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 Tone and Voice

Tone:

– Friendly and Relatable: Adjust the tone to be more approachable. For example, instead of saying “It is very important to submit evidence,” try “You’ll definitely want to submit evidence because…”

Voice:

– Maintain Consistency: While adjusting the tone, ensure that the voice remains consistent throughout the article.

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 Content Completeness

Completeness:

– Address Missing Subtopics: Consider adding:

  – Practical Tips: Steps on how to effectively prepare and submit evidence under Rule 45.

  – Common Mistakes to Avoid: Highlight pitfalls that applicants or opponents often encounter in the opposition process.

  – Updates in Law: Mention any recent amendments or important changes in trade mark laws.

Support:

– Cite More Examples: While you have included case laws, adding brief summaries of their outcomes and implications can enhance understanding.

– Use Data or Statistics: If available, include statistics on the number of oppositions filed or success rates to support your claims.

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 Formatting and Presentation

Formatting:

– Headings and Subheadings: Ensure all headings are consistently formatted as discussed in groups.

– Bullet Points and Numbered Lists: Use them to break down complex information, like in the “Features of a Registrable trade mark” section.

– Paragraph Length: Break up long paragraphs into shorter ones to improve readability.

Presentation:

– Add Visuals: Incorporate relevant charts or diagrams created by the author. No copy-pasting is allowed as it will create copyright issues. For example:

  – Flowchart: A diagram/flowchart illustrating the trade mark opposition process step-by-step.

  – Table: Summarize key differences between rules or list essential documents required.

– Captions and Alt Text: Ensure all visuals have captions and alt text for accessibility.

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Additional Suggestions:

– Update Legal References: Verify that all legal references and case laws are up-to-date.

– Hyperlinks: Where appropriate, add hyperlinks to external resources or legal documents for readers who want more information.

• Are primary/secondary keywords added to the title, meta description, and subheadings properly?
• Is the primary keyword used in the first 100 words of the article? 
• Are the secondary keywords used at least once in the article? (if they are provided)
• Is the title clear, benefits-oriented, and “scroll-stopping”?
• At least five internal outlinks added? 
• At least two external outlinks added? 
• Title/meta description within the character and pixel limits?
• Is the structure exhaustive?
• Is the topic covered in depth? Are all possible subtopics covered?
• Does the article provide additional value than that in the existing RANKING articles on Google?
• Is the article free of grammatical/spelling mistakes?
• Is the article free of plagiarism? 
• Does the article seem to be human-written and free of AI? 
• Is the readability high? (Short paragraphs, short sentences, simple language, and structuring)