Statutory periods for filing evidence must be adhered to and ‘negligent counsel’ defences will be rejected, according to a noteworthy judgment involving the tech giant’s ‘Tivoli’ mark, say C A Brijesh and Simranjot Kaur of Remfry & Sagar.
In a significant ruling reinforcing the mandatory nature of procedural timelines under the Trade Marks Act, the Delhi High Court has set aside a Trade Mark Registry’s order that condoned an inordinate delay in filing evidence.
The judgment, in the matter of International Business Machines v Tivoli Gardens & Anr [CA(COMM.IPD-TM) 45/2025], underscores that statutory periods for filing evidence in opposition proceedings are non-extendable and that the negligence of counsel offers no sanctuary to a non-vigilant litigant.
Factual matrix
The dispute centred on the mark ‘Tivoli’, a cornerstone of the appellant’s (IBM) enterprise software suite. The appellant sought registration for the mark in the year 2003 under Class 42, which was opposed by respondent No. 1 (Tivoli Gardens—hereinafter referred to as ‘respondent’), a hospitality entity, in 2006.
The Trade Marks Registry served the appellant’s counter statement on the respondent on July 8, 2019. Under the Trade Marks Rules, an opponent must file evidence in support of their opposition within two months of receiving the counter statement, failing which the opposition is statutorily “deemed to have been abandoned”.
In the present case, the respondent failed to file evidence within the prescribed window. It was only in the year 2022 that the respondent moved an interlocutory petition seeking to condone a delay of nearly two years and eight months.
The registry allowed this petition in April, 2025, which became the impugned decision the appellant challenged before the Delhi High Court.
Several legal issues were raised and addressed in the extant matter, as briefly encapsulated below:
- Applicability and mandatory nature of Trade Mark Rules
A primary contention raised by the respondent was that the proceedings should be governed by the Trade Marks Rules, 2002, rather than the Trade Marks Rules, 2017. However, the court observed that this distinction was immaterial to the outcome of the case.
Both Rule 50 of the 2002 Rules, and Rule 45 of the 2017 Rules, utilise the phrase “deemed to have been abandoned”. Relying on established precedents such as Sun Pharma Laboratories v Dabur India (2024 SCC OnLine Del 813) and Mahesh Gupta v Registrar of Trademarks (2024 SCC OnLine Del 1750), the court held that these timelines are mandatory.
The registrar possesses no inherent discretion to extend the period for filing evidence once the statutory limit has expired. The “deemed abandonment” is a legal fiction that takes effect automatically upon the lapse of the two-month period.
- Limitation period under the Trade Marks Act
Section 91(1) of the Trade Marks Act, 1999 prescribes a three-month period to ‘prefer’ an appeal from the date the order is ‘communicated’ to the aggrieved person. The respondent contended that the subject appeal was barred by limitation.
In this regard, the court held that limitation runs from the date of communication, not from the date of the order; and in the present case, the appeal was filed within the statutory three-month window.
- Effective service by the Trade Marks Registry
The respondent also contended that it was never served with the counter statement by the registry in the first place and its limitation to file evidence affidavit in support of opposition would only commence upon effective service by the registry as well as effective receipt by the respondent.
In this regard, the court perused the registry’s affidavit and dispatch register, which clearly recorded the dispatch of the counter statement to the respondent’s erstwhile agent. Under Rule 18 of the 2017 Rules, service is deemed sufficient if the document is properly addressed and posted.
Accordingly, the court found the service to be effective and the respondent’s denial to be an afterthought.
- The ‘negligent counsel’ defence
The respondent further contended that the delay was attributable to negligence of its erstwhile counsel, who did not communicate the service of the counter statement, and that a party cannot be made to suffer because of its advocate’s fault/mistake.
The court rejected this submission, relying upon recent Supreme Court decisions emphasising litigant vigilance (Rajneesh Kumar & Anr v Ved Prakash, 2024 SCC OnLine SC 3380 and Nitin Mahadeo Jawale & Ors v Bhaskar Mahadeo Mukte, 2024 SCC OnLine SC 3468).
The court reiterated that while a lawyer may be negligent, a litigant owes a duty to be vigilant of their own rights and about the judicial proceedings pending before any forum, which were initiated at their instance.
The court also noted that the respondent had shown a pattern of disregard for timelines, including a separate opposition against the appellant for the same mark, that was dismissed for want of prosecution in 2018.
Conclusion
The extant judgment strengthens a consistent line of Delhi High Court precedents emphasising procedural certainty in trademark proceedings.
By allowing the appeal and setting aside the Trade Marks Registry’s order, the Delhi High Court has reaffirmed that where the statute prescribes a consequence for non-compliance, the authority cannot dilute it via equitable discretion. The finality of the “deemed abandonment” clause is essential to prevent the indefinite stalling of trademark registrations.
For the appellant, this judgment finally provides an end to its 23-year-long quest for registration.
C A Brijesh is a partner at Remfry & Sagar and can be contacted at: ca.brijesh@remfry.com.
Simranjot Kaur is a senior associate at Remfry & Sagar and can be contacted at: simranjot.kaur@remfry.com.
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