Introduction
The case of Yokogawa Electric Corporation v. Union of India represents a significant judicial pronouncement on the procedural rigours governing trademark opposition proceedings in India, particularly concerning the nature of time limits prescribed for filing evidence in support of opposition under the Trade Marks Rules. Decided by the High Court of Madras, the judgment underscores the imperative of adhering to strict timelines in trademark disputes to prevent undue delays in the registration process.
The court was confronted with a challenge to the Deputy Registrar of Trade Marks’ refusal to accept belated evidence filed by the opponent, raising a pivotal question that has divided judicial opinions across various High Courts: whether the time limits under Rule 50 of the Trade Marks Rules, 2002 (and by extension, analogous provisions in subsequent rules) are mandatory or directory.
By aligning itself with the stricter interpretation adopted by the Delhi High Court and rejecting the more lenient view of the Gujarat High Court, the Madras High Court reinforced the policy objective of expediting trademark registrations while curtailing procedural indulgences that could prolong opposition proceedings indefinitely.
Factual Background
Yokogawa Electric Corporation, a Japanese entity renowned globally for its solutions in industrial automation, control, test, and measurement, has long used the trademark CENTUM/CENTUM.
Upon discovering that Centum Industries Pvt. Ltd., the third respondent, had applied for registration of a similar mark in Class 09 under Application No. 1587782, Yokogawa promptly filed a Notice of Opposition on 17 November 2011.
The third respondent’s counter-statement was served on Yokogawa on 19 March 2012, triggering the period for filing evidence in support of the opposition.
Timeline of Key Events
| Event | Date |
|---|---|
| Notice of Opposition Filed | 17 November 2011 |
| Counter-Statement Served | 19 March 2012 |
| First Extension Sought | Up to 19 June 2012 |
| Second Extension Sought | Up to 19 September 2012 |
| Interlocutory Petition and Affidavit Filed | 24 August 2012 |
| Deputy Registrar’s Order Rejecting Evidence | 21 October 2014 |
Yokogawa sought extensions of time, first until 19 June 2012 and subsequently until 19 September 2012, citing the need to collate documents from its offices spread across multiple countries.
Eventually, on 24 August 2012, Yokogawa filed an interlocutory petition along with an affidavit of evidence, which was served on the third respondent.
However, the Deputy Registrar rejected this evidence vide order dated 21 October 2014, holding that Rule 50 evidence is mandatory and that the Registrar lacks power to extend time beyond the prescribed limits, relying on decisions of the Intellectual Property Appellate Board (IPAB).
Procedural Background
The opposition proceedings commenced with Yokogawa’s timely notice of opposition, followed by the third respondent’s counter-statement.
Under the Trade Marks Rules, 2002, Rule 50 mandated that evidence in support of opposition be filed within two months of receipt of the counter-statement, extendable by the Registrar for a further period not exceeding one month in aggregate.
Rule 50 Time Limits
- Initial period: Two months from receipt of counter-statement
- Maximum extension: One additional month in aggregate
- Registrar’s power: No authority to extend beyond prescribed limits
Yokogawa’s requests for extensions and subsequent filing through an interlocutory petition fell outside this window.
The Deputy Registrar’s impugned order explicitly declined to take the late evidence on record, emphasising the binding nature of IPAB precedents that curtailed the Registrar’s discretion.
Aggrieved, Yokogawa filed the writ petition under Article 226 in 2015 (after receiving the order copy that year), seeking certiorarified mandamus to quash the Registrar’s order and direct acceptance of the evidence.
Reasoning And Decision Of Court
The Madras High Court looked into conflicting judicial precedents on the interpretation of Rule 50 of the 2002 Rules. It noted the Gujarat High Court’s view in Wyeth Holdings that the provision was directory, drawing from principles of subordinate legislation and the Supreme Court’s observations in Salem Advocate Bar Association regarding the contextual interpretation of the word “shall”.
In contrast, the court placed greater reliance on Delhi High Court decisions in Sunrider Corporation v. Hindustan Lever Limited and Mahesh Gupta v. Registrar of Trademarks, which highlighted deliberate legislative changes:
Legislative Changes Highlighted
- The inclusion of “not exceeding one month in aggregate” as a cap on extensions.
- The removal of discretionary phrases like “unless the Registrar otherwise directs” from earlier rules.
These amendments, the Delhi High Court reasoned, manifested a clear intent to make the timeline mandatory and to deem opposition abandoned upon non-compliance.
The Madras High Court found this reasoning persuasive, observing that even under the Trade Marks Rules, 2017 (where the one-month extension phrase was omitted), the absence of discretionary language reinforced the mandatory nature.
The court emphasised the Trade Marks Registry’s policy of strict timelines to prevent opponents from indefinitely stalling registrations. Consequently, it held that the Registrar lacked power to condone delays beyond the prescribed period, dismissed the writ petition as devoid of merit, and upheld the impugned order without costs.
Point Of Law Settled In The Case
The judgment settles, within the jurisdiction of the Madras High Court, that the time limit for filing evidence in support of trademark opposition under Rule 50 of the Trade Marks Rules, 2002 (and corresponding provisions in the 2017 Rules) is mandatory rather than directory.
The Registrar possesses no discretion to extend time beyond the statutory maximum of one month aggregate extension under the 2002 Rules, and failure to file evidence within the overall three-month window results in deemed abandonment of the opposition.
By expressly preferring the Delhi High Court’s interpretation over that of the Gujarat High Court and the IPAB’s earlier view in Sahil Kohli (which treated similar provisions under the 2017 Rules as directory by invoking Section 131 of the Trade Marks Act, 1999), the court has aligned itself with a stricter construction that prioritises expeditious disposal of trademark applications.
This ruling reinforces the legislative intent evident from deliberate drafting changes aimed at curtailing delays and establishes that procedural lapses in opposition evidence cannot be condoned indefinitely, thereby promoting certainty and efficiency in trademark adjudication.
Case Details
| Case Title | Yokogawa Electric Corporation Vs. Union Of India & Ors. |
|---|---|
| Date Of Order | 10.10.2025 |
| Case Number | W.P. No. 5703 Of 2016 |
| Name Of Court | High Court Of Judicature At Madras |
| Name Of Hon’ble Judge | Mr. Justice M. Dhandapani |
Disclaimer: Readers are advised not to treat this as substitute for legal advise as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
