Madras High Court

Dated: 19.06.2025 vs The Assistant Registrar Of Trade Marks on 19 June, 2025

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

    2025:MHC:1430




                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                                  DATED: 19.06.2025

                                                           CORAM

                           THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                               (T)CMA(TM)/101/2023
                                               (OA/41/2020/TM/CHN)


                     Godrej Consumer Products Limited,
                     a Company incorporated under the provisions of
                     Companies Act, 1956, having its registered
                     office at Pirojshanagar, Eastern Express
                     Highway, Vikhroli, Mumbai 400 079, India                            ... Appellant
                                                          -vs-


                     1.The Assistant Registrar of Trade Marks,
                       Trade Marks Registry, IPR Building,
                       Industrial Estate, GST Road, Guindy,
                       Chennai 600 032.

                     2.The Good Stuff Private Limited,
                       443, 9th Cross, 2nd Phase,
                       JP Nagar, Bangalore 560 078,
                       Karnataka, India.                                              ... Respondents

                     (Amendment carried out as per Order in C.M.P(TM) No.6 of 2024 dated
                     29.08.2024 by SKRJ)




                     1/9




https://www.mhc.tn.gov.in/judis             ( Uploaded on: 20/06/2025 03:41:36 pm )
                     PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) is filed

                     under Section 91 of the Trade Marks Act, 1999, pleased to call for the

                     records of Application No.3455894 in class 03 and of opposition thereto

                     being Opposition No.889207 and quash and set aside the impugned order

                     dated 24th February 2020 passed by the first respondent.

                                  For Appellant         : Mr.Arun C.Mohan
                                                          for M/s.W.S.Kane and Co.,

                                  For Respondents       : Ms.R.Mithra
                                                          for M/s.Fox Mandal & Associates for R2
                                                          Ms.V.Sudha, SPC for R1

                                                                **********

                                                               JUDGMENT

This appeal is directed against order dated 24.02.2020 holding that the

appellant / opponent is deemed to have abandoned the opposition in terms of

Rule 45(2) of the Trade Marks Rules, 2017 (the TM Rules).

2. The second respondent herein had applied for registration of the

trade mark 'DND Easy' in relation to cosmetic preparations for hair care,

skin and body care, etc. under Application No.3455894 in Class 3 on a

https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 03:41:36 pm ) proposed to be used basis. Upon the advertisement relating thereto being

published in the Trade Marks Journal on 13.02.2017, the appellant filed

notice of opposition on or about 03.06.2017. According to the appellant, the

first respondent had called upon the second respondent to file a counter

statement by communication dated 26.07.2017. Thereafter, it is stated that

the appellant did not receive any communication in the matter from either of

the respondents. By notice dated 07.11.2019, the appellant states that the

first respondent informed the appellant that the counter statement had been

served earlier by e-mail dated 08.11.2017 and that the appellant had not

submitted evidence upon receipt thereof. In response, the appellant filed

affidavit dated 14.11.2019 stating that the counter statement was not

received via e-mail of 08.11.2017. The order impugned herein was issued in

the said facts and circumstances.

3. Learned counsel for the appellant invited my attention to

communication dated 07.11.2019 from the Registrar of Trade Marks and

submitted that the appellant became aware of the alleged service of the

counter statement only upon receipt of this communication. Therefore, he

https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 03:41:36 pm ) states that affidavit dated 14.11.2019 was submitted shortly thereafter

wherein the appellant categorically stated that the counter statement was not

received under e-mail of 08.11.2017. By referring to paragraph 2 of the

affidavit, he states that the appellant had enclosed copies of all e-mails

received between 07.11.2019 and 09.11.2019. Without dealing with or

discussing these aspects, he states that the first respondent refused to accept

the explanation set out in the affidavit. He further submits that the appellant

would be in a position to file evidence in support of the opposition within

two weeks from today. He seeks a remand of the matter.

4. In response, learned counsel for the second respondent states that

the affidavit was affirmed by an office assistant in the office of the agent of

the appellant. She also submits that the affidavit is bereft of material

particulars and the appellant should not be permitted to circumvent the

requirements of Rule 45 of the TM Rules.

https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 03:41:36 pm )

5. Rule 45 of the TM Rules reads as under:

"45. Evidence in support of opposition.- (1) Within two months from service of a copy of the counter statement, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence including exhibits, if any, that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.

(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition."

6. Under sub-rule (1), the opponent is required to do one of the

following within two months from the date of service of a copy of the

counter statement:

(i) Leave with the Registrar evidence by way of affidavit in support of

the opposition.

(ii) Inform the Registrar and the applicant that no evidence would be

https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 03:41:36 pm ) adduced in support of the opposition and that the opponent intends to rely on

facts stated in the notice of opposition.

7. The legal fiction in sub-rule (2) is triggered only if an opponent

fails to take action under sub-rule (1) within the time mentioned therein and,

in such event, the opponent shall be deemed to have abandoned the

opposition. As is evident from the preceding paragraph, the two options that

the opponent may exercise are contingent on service of a copy of the counter

statement. While Rule 18 of the TM Rules provides for deemed service at

the time of sending the e-mail if such e-mail was sent to the e-mail ID

provided by the party concerned, the said rule is intended to raise a

presumption. In this case, shortly after being notified on 07.11.2019 that the

application shall be treated as abandoned on account of the appellant /

opponent not filing evidence in support of the opposition, the appellant

responded by filing affidavit dated 14.11.2019. Paragraph 2 of the affidavit

contains a categorical assertion that the counter statement was not received.

Since receipt of the counter statement is a condition precedent to trigger the

actions specified in sub-rule (1) of Rule 45, the legal fiction under sub-rule

https://www.mhc.tn.gov.in/judis ( Uploaded on: 20/06/2025 03:41:36 pm ) (2) cannot be pressed into service in light of the affidavit of the appellant.

8. The order impugned herein does not deal with or discuss the

reasons set out in the appellant's affidavit. As a consequence, the opposition

was deemed to be abandoned and the application was allowed. For reasons

set out in this and earlier paragraphs, this order cannot be sustained.

9. The impugned order is dated 24.02.2020 and the second

respondent's mark has been on the register for about five years. In these

circumstances, it is not just or equitable to cancel such registration at this

juncture. The first respondent is empowered to rectify the register under the

Trade Marks Act, 1999. Therefore, the ends of justice would be served if

the matter is remanded for re-consideration. In case the first respondent

concludes that the opposition is sustainable, the Register of Trade Marks

shall be rectified. Otherwise, the registration shall stand.