Retrospectivity of Procedural Amendments in Trademark Law

Introduction

This case revolves around a significant legal reference placed before a Division Bench of the High Court of Delhi concerning the applicability of procedural rules under the Trade Marks Rules, 2017 to ongoing trademark opposition proceedings initiated under the repealed Trade Marks Rules, 2002.

The reference arose from doubts expressed by a learned Single Judge in SAP SE v. Swiss Auto Products & Anr. regarding the correctness of an earlier decision in Mahesh Gupta v. Registrar of Trademarks & Anr. The core issue pertains to whether changes introduced by the 2017 Rules—particularly timelines for filing evidence and the concept of deemed abandonment—should apply retrospectively.

The Division Bench, comprising Justices Yashwant Varma and Dharmesh Sharma, examined the statutory framework, repeal provisions, and procedural amendments to resolve whether such rules alter pre-existing proceedings. This judgment clarifies the interplay between old and new rules in trademark adjudication, emphasizing the preservation of actions taken under prior regimes.

Factual Background

The factual matrix involves two separate trademark disputes consolidated for reference:

• SAP SE Case: SAP SE sought registration of the mark “SAP” under Class 9 on December 6, 1999. The application was advertised on January 1, 2007, and opposed by Swiss Auto Products on August 14, 2007. After multiple extensions, SAP SE submitted evidence on May 9, 2014, but the Registrar rejected it on June 12, 2019, citing non-compliance with the 2002 Rules.
• Mahesh Gupta Case: Mahesh Gupta opposed the mark “JKENT” filed on April 28, 1998. Opposition was filed in 2006, counter-statement in 2008, and evidence in 2010. On August 7, 2019, the Registrar deemed the opposition abandoned by invoking the 2017 Rules.

Procedural Background

Both matters commenced under the 2002 Rules. In SAP SE’s case, opposition filings and extensions occurred before the enforcement of the 2017 Rules (March 6, 2017). The Registrar’s rejection came later, applying the 2002 timelines. SAP SE appealed, and the matter was referred to a larger bench on July 3, 2023.

In Mahesh Gupta’s case, the Registrar applied the 2017 Rules to deem abandonment. A Single Judge in 2023 upheld the abandonment but applied the 2002 Rules, interpreting the repeal clause to preserve prior actions.

Core Dispute

The central issue is whether the 2017 Rules apply retrospectively to oppositions initiated under the 2002 Rules, especially Rules 45 and 46 (2017) versus Rules 50 and 51 (2002). The question is whether failures under the 2002 regime are “anything done” saved by Rule 158 of the 2017 Rules, or if new procedural rules revive abandoned proceedings.

This raises broader concerns on statutory interpretation, repeal effects, and balancing procedural efficiency with vested rights.

Discussion on Judgments

The court considered multiple precedents:

• Garikapati Veeraya v. N. Subbiah Choudhry (1957) – procedural changes are retrospective unless they impair vested rights.
• New India Assurance Co. Ltd. v. Shanti Misra (1975) – procedural amendments do not affect accrued rights.
• Hitendra Vishnu Thakur v. State of Maharashtra (1994) – procedural rules apply retrospectively only if not prejudicial.
• Commissioner of Income Tax v. Shah Sadiq & Sons (1987) – repeal erases prior rules unless expressly saved.
• Wyeth Holdings Corporation v. Registrar of Trade Marks (2009) – abandonment under 2002 Rules discussed but later distinguished.
• Jose Paulo Coutinho v. Maria Luiza Valentina Pereira (2019) – procedural retrospectivity does not extend to substantive rights.

Reasoning and Analysis of the Judge

Justice Yashwant Varma, writing for the Bench, emphasized Rule 158 of the 2017 Rules, which repeals the 2002 Rules but saves “anything done” under them. This was interpreted broadly to include all steps in ongoing proceedings.

The Bench held that procedural changes generally apply retrospectively, but not when they disturb vested positions or finalities achieved under earlier laws. The phrase “not exceeding one month” in Rules 50 and 51 (2002) created an inflexible cap, amounting to deemed abandonment for non-compliance. Thus, abandonment under the 2002 Rules attained finality and could not be revived by 2017 Rules.

Final Decision

The Division Bench held that the 2017 Rules do not apply retrospectively to proceedings initiated under the 2002 Rules.

• SAP SE Appeal: Registrar’s rejection upheld under 2002 Rules, appeal dismissed.
• Mahesh Gupta LPA: Single Judge’s order affirmed, abandonment applied under 2002 Rules, appeal dismissed.

Law Settled in This Case

This judgment establishes that the Trade Marks Rules, 2017 do not apply retrospectively to evidence timelines in oppositions initiated under the 2002 Rules. Rule 158 preserves prior actions, and abandonment under the 2002 regime remains final and irrevocable.

Case Details

• Case Title: Mahesh Gupta vs Registrar Of Trademarks & Anr.
• Date of Order: 13 March, 2024
• Case Number: LPA 429/2023
• Neutral Citation: 2024:DHC:2053-DB
• Court: High Court of Delhi
• Judges: Yashwant Varma and Dharmesh Sharma