Madras High Court Revives ‘Modern Kitchens’ Trademark, Says Unsigned COVID-Era Affidavit Cannot Trigger Deemed Abandonment
Madras High Court Revives ‘Modern Kitchens’ Trademark, Says Unsigned COVID-Era Affidavit Cannot Trigger Deemed Abandonment
Introduction
The Madras High Court has revived the trademark application for the mark “MODERN KITCHENS – Delite in Every Bite”, setting aside the decision of the Trade Marks Registrar declaring the application abandoned under Rule 46(2) of the Trade Mark Rules, 2017. The Court held that the Registrar was not justified in treating the application as abandoned merely because an affidavit filed during the COVID-19 lockdown was unsigned.
Factual Background
In 2018, ACE Foods filed a trademark application for the mark “MODERN KITCHENS – Delite in Every Bite”. The application was opposed in late 2019 by Modern Snacks Pvt. Limited. In June 2020, during the peak of the nationwide COVID-19 lockdown, ACE Foods filed its evidence affidavit within the prescribed time. However, due to lockdown restrictions, the affidavit could not be signed or notarised at that time.
The Court noted that despite the filing of the unsigned affidavit, the opposition proceedings effectively went into “hibernation” for several years. In August 2020, Modern Snacks Pvt. Limited filed a reply to the unsigned affidavit, demonstrating that the document was acted upon by the parties.
In 2024, after paying the requisite fee to expedite proceedings, ACE Foods filed an interlocutory application seeking permission to substitute the earlier unsigned affidavit with a duly signed and notarised version containing identical contents. The Registrar rejected this request and declared the trademark application abandoned on the ground that a proper affidavit had not been filed within the extended limitation period during the pandemic.
Procedural Background
Aggrieved by the Registrar’s order declaring the application abandoned under Rule 46(2) of the Trade Mark Rules, 2017, ACE Foods approached the Madras High Court. The petitioner contended that the unsigned affidavit was filed within time and that the inability to notarise it was attributable to extraordinary lockdown circumstances.
The Registrar maintained that failure to file a properly executed affidavit within the prescribed period attracted the consequence of abandonment under Rule 46(2).
Issues
1. Whether the filing of an unsigned affidavit during the COVID-19 lockdown amounted to non-compliance under Rule 46(2) of the Trade Mark Rules, 2017.
2. Whether the Registrar was justified in declaring the trademark application abandoned.
3. Whether procedural non-compliance should result in complete forfeiture of the trademark application.
Contentions of the Parties
ACE Foods contended that it had demonstrated clear intent to prosecute the trademark application by filing the affidavit within the prescribed time, notwithstanding the extraordinary pandemic conditions. It was submitted that the 2024 filing was merely a formal rectification of the earlier affidavit and did not introduce any new material.
The petitioner further argued that no prejudice was caused to the opponent, as Modern Snacks Pvt. Limited had already filed a reply to the unsigned affidavit in August 2020. The delay in proceeding with the matter was partly attributable to the Registry, which had not issued any notice or direction between 2020 and 2024 calling upon the petitioner to rectify the defect.
The Registrar contended that Rule 46(2) mandates that if an opponent fails to file evidence within the prescribed time, the opposition is deemed abandoned.
Reasoning and Analysis
The Court criticised the approach adopted by the Registrar, observing that it “smacks with arbitrariness.” Justice N. Anand Venkatesh held that the Registrar, having contributed to the delay by failing to issue any notice or direction for rectification over a four-year period, could not shift the blame entirely onto the applicant.
The Court noted that Rule 46(2) provides that failure to file evidence within the prescribed time may result in deemed abandonment of opposition. However, in the present case, the affidavit was filed within time, albeit unsigned due to exceptional lockdown conditions. The Court found that the applicant’s intention to prosecute the application was evident.
Importantly, the Court held that procedural provisions must be “read down” to ensure that non-compliance results only in loss of the right to rely on that evidence, rather than the “evisceration” of the entire trademark application. Since the rectified affidavit filed in 2024 contained identical contents and no prejudice was caused to the opponent, strict application of Rule 46(2) was unwarranted.
On the peculiar facts of the case, the Court concluded that the affidavit must be treated as having been filed on time in June 2020.
Decision
The Madras High Court set aside the Registrar’s order declaring the trademark application abandoned. The Court directed the Trademark Registry to proceed with ACE Foods’ application and pass final orders within six months.
In this case Ace Foods was represented by Mr. Rajesh Ramanathan, Advocate. Meanwhile Modern Snacks Pvt Ltd was represented by Mr. Gladys Daniel and Mr. Somnath De, Advocates.
