Trademarks – Filing of evidence in case of opposition – Rule 46(2) held ultra vires Section 21 and read down to mean deemed abandonment of letting in evidence only

The Madras High Court has held Rule 46(2) of the Trade Marks Rules, 2017 to be ultra vires Section 21 of the Trade Marks Act, 1999. Rule 46(1) provides for filing of evidence in support of the application for registration of trademark and sub-rule (2) of the said Rule states that ‘If an applicant takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his application’. Section 21 talks about opposition to registration.

The High Court noted that sub-section (2) of Section 21 alone prescribes as to when an application will be deemed to have been abandoned. It was noted that when it comes to evidence, sub-section (4) of said Section consciously does not provide for a consequence of deemed abandonment. According to the Court, if such an adverse consequence is provided under sub-rule (2) of Rule 46, it obviously overrides the Act and to that extent is ultra vires the Act.

Agreeing with the submission that no purpose will be served by merely providing for the manner of filing the affidavit of evidence and fixing the time limits, without providing for the consequences, the Court read down sub-rule (2). 

Accordingly, it was held that in case of non-compliance of sub-rule (1), there will be deemed abandonment of letting in evidence on the side of the applicant for the opposition made by the opponent. The High Court was of the view that in this way, the substantive right of the applicant to prosecute the application will not be defeated.

On the facts of the case, the Court in ACE Foods Private Limited v. Registrar of Trade Marks [Order dated 10 February 2026] allowed the affidavit of evidence filed by the appellant on 1 June 2020 to be taken for calculating the period of limitation. It was held that the signed and attested affidavit that was sought to be brought on record on 8 October 2024 was only the formal expession of affidavit of evidence that was already filed.

It was thus held that the affidavit of evidence filed in 2020 was in compliance with Rule 46(1) and there was thus no question of deemed abandonment.