This article sheds light on an important decision by the Hon'ble Delhi High Court, offering a beacon of hope and a practical guide for those who find their trademark opposition dismissed under such circumstances. We explore how an appellant, Dr. Smita Naram, successfully challenged a Trademark Registry order that dismissed her opposition for non-appearance, emphasizing the importance of due process and the avenues available to fight an unfair TM opposition dismissal and win your appeal. This case serves as a crucial example of how to navigate the appeal process when faced with a dismissal due to a "no hearing notice" scenario.
1 Brief Facts of the Case: The 'AYURSHAKTI' Opposition
The case revolves around an appeal filed by Dr. Smita Naram under Section 91 of the Trademarks Act, 1999. She challenged an order passed by the Trademark Registry on 5th April, 2016. This order had dismissed her opposition, no. DEL 129200, dated 8th October, 2003. The opposition was against the trademark application no.701490 for the mark 'AYURSHAKTI', filed by respondent no. 3 on 13th May, 1996. The appellant had initially come across the advertisement of the 'AYURSHAKTI' mark in the Journal dated 29th June, 2003.
2 Timeline of the Trademark Dispute
The procedural history highlights the appellant's engagement in the opposition process:
13th May, 1996: Respondent no. 3 files application no. 701490 for the mark 'AYURSHAKTI'.
29th June, 2003: The appellant notices the advertisement of the 'AYURSHAKTI' application.
8th October, 2003: The appellant files opposition no. DEL 129200.
17th December, 2003: The appellant receives a letter from respondent no. 1 (Registrar of Trademarks) dated 10th October, 2003, confirming service of the opposition notice on respondent no. 3.
Sometime after 13th April, 2004: The appellant's advocates receive the copy of the counter-statement filed by respondent no. 3 under a cover letter dated 13th April, 2004, from Respondent no.1.
5th July, 2004: The appellant files her evidence by way of an affidavit dated 26th June, 2004.
13th October, 2015: The Trade Marks Registry issues the first hearing notice for a hearing scheduled on 5th November, 2015.
5th November, 2015: During the hearing, respondent no.1 called upon the appellant to show proof of having received the counter-statement on 5th May, 2004, to justify timely evidence filing.
31st December, 2015: The appellant files an RTI application requesting the actual dispatch date of the counter-statement and copies of the dispatch register.
26th November, 2015 & 9th January, 2016: While awaiting the RTI response, respondent no. 1 issues two hearing notices for hearings on 22nd December, 2015, and 2nd February, 2016, respectively.
18th December, 2015 & 8th February, 2016: The appellant's advocates file Form TM 56 for adjournments for these hearings.
22nd February, 2016: The appellant receives an RTI reply stating the counter-statement was dispatched on 13th April, 2004, but dispatch details for 2004 could not be traced.
5th April, 2016: The impugned order is passed by the Trademark Registry, dismissing the opposition.
19th August, 2016: The appellant receives the impugned order.
3 The Core Grievance: Dismissal by the Trademark Registry
The Trademark Registry dismissed the appellant's opposition under Rule 56(4) of the Trademark Rules, 2002. The impugned order stated that no one appeared for the appellant during hearings scheduled on 9th February, 2016, and 5th April, 2016, despite hearing notices dated 11th January, 2016, and 10th March, 2016, allegedly being sent. It was also mentioned that no adjournment requests were made by the appellant for these hearings.
4 Why the Appellant Felt Aggrieved
The appellant was aggrieved by this decision primarily because she contended that she never received the hearing notice for the crucial hearing scheduled on 5th April, 2016. To support this claim, the appellant relied on responses received from the Post Office to various Right to Information (RTI) applications she had filed, exhibited as Exhibits P and Q along with the appeal. Furthermore, adjournments had been sought for earlier hearings (22nd December 2015 and 2nd February 2016) while awaiting critical information via an RTI. The dismissal for non-prosecution felt unjust given her consistent efforts in pursuing the opposition since 2003.
5 The Hon'ble Delhi High Court's Review and Findings
The Hon'ble Mr. Justice Amit Bansal heard the appeal. The counsel for the respondents no. 1 and 2, Ms. Nidhi Raman, CGSC, submitted that the impugned order was correctly passed as the appellant failed to respond to multiple hearing notices. She drew the Hon'ble Court's attention to the dispatch register maintained by the Trade Marks Registry, which purportedly showed that hearing notices were duly sent to the appellant.
However, the Hon'ble Court took a different view after examining the evidence.
6 Key Issues and Hon'ble Court's Determinations
The Hon'ble High Court considered the appellant's claims and the circumstances leading to the dismissal:
| Issue Considered by the Hon'ble Court | Hon'ble High Court's Finding |
|---|---|
| Receipt of Hearing Notices by the Appellant | Even though the extracts of the dispatch register maintained by the Trade Marks Registry showed that hearing notices were dispatched to the appellant, a perusal of various RTI applications and the responses thereto suggested that the appellant did not receive the hearing notices. |
| Appellant's Diligence and Intent in Pursuing the Opposition | The Hon'ble Court noted that the appellant was vehemently opposing the registration right from the year 2003 and therefore, it was inferred the appellant would not have missed the hearing. |
| Current Status of the Disputed Trademark Application ('AYURSHAKTI') | The Hon'ble Court observed that the impugned mark (subject application) was yet to be granted registration on account of other oppositions filed against the said application. |
| Interests of Justice | Considering all circumstances, the Hon'ble Court concluded it would be in the interest of justice that a fresh hearing also be given to the appellant in support of the opposition filed by her. |
7 Conclusion by the Hon'ble High Court: A Second Chance
Based on these findings, the Hon'ble Delhi High Court decided to set aside the Trademark Registry's impugned order dated 5th April, 2016. The Hon'ble Court directed that the opposition filed by the appellant, being opposition no. DEL 129200, shall be restored. Furthermore, the Trade Marks Registry was instructed to issue a fresh hearing notice to the appellant and, consequent to the hearing, decide the said opposition on merits. The Registry was also directed to send a copy of the Hon'ble Court's order to the office of the Controller General of Patents, Designs and Trade Marks at the e-mail 'llc-ipo@gov.in' for compliance. The appeal was thus disposed of in these terms on 5th March, 2025.
8 Key Takeaways for Appellants Facing Similar TM Issues
This judgment by the Hon'ble Delhi High Court offers several important lessons for trademark applicants and opponents:
Persistent Pursuit Matters: Demonstrating a consistent and diligent effort in prosecuting or defending your trademark matter can positively influence the court's view on your intentions.
Challenge Procedural Lapses: If an order is passed ex-parte due to non-receipt of a hearing notice, an appeal can be a viable option to seek redressal and ensure a fair hearing.
Interests of Justice: Courts may lean towards providing an opportunity for a hearing on merits, especially if the party has been diligent and the mark in question is still under contest.
Adjournment Requests: While the impugned order noted no adjournment requests for the final hearings, the appellant had previously filed adjournment requests when awaiting information. It underscores the importance of formally requesting adjournments if genuinely unable to attend and keeping records of such requests.
This case underscores that a dismissal for non-prosecution, particularly when clouded by issues of non-receipt of hearing notices, is not necessarily the end of the road. With diligent effort and proper legal recourse, it is possible to win your appeal and have your case heard on its merits.
Disclaimer: In compliance with the Bar Council of India guidelines, this article is intended for informational purposes only and does not constitute legal advice or a solicitation for legal services.
