Delhi High Court Sets Aside Order Reviving Opposition To IBM's “TIVOLI” Trademark Application

The Delhi High Court has recently set aside an order of the Assistant Registrar of Trade Marks that permitted Tivoli Gardens to revive its opposition to International Business Machines Corporation's application for registration of the mark “TIVOLI”.

Justice Tejas Karia allowed IBM's appeal. The court held that the statutory timeline for filing evidence in support of opposition admits of no discretion.

The court ruled that under Rule 45 of the Trade Marks Rules, the two-month period for filing evidence is the maximum time limit. Once this period expires, the opposition stands deemed abandoned by operation of law.

Referring to precedent, the Court observed:

“Perusal of the above-quoted decision shows that under Rule 45 of the 2017 Rules, evidence in support of opposition is liable to be tendered within two months from the service of a copy of the counter-statement. It is further noted that Rule 45 of the 2017 Rules also deleted the additional time of one month, which could have been sought under Rule 50 of the 2002 Rules. Therefore, it is clear that upon the expiry of the maximum period as prescribed under the said Rule, the consequence of failure to abide by the time frame would be deemed abandonment of the opposition.”

IBM had challenged the Assistant Registrar's order dated April 23, 2025. That order had allowed Tivoli Gardens to place evidence on record more than two years after service of the counter-statement.

The Court noted that the Trade Marks Registry produced extracts of the Dispatch Register and Excel sheets. These showed that the counter-statement was dispatched in August 2019 to the respondent's registered trade mark agent and counsel.

Referring to Rule 18 of the 2017 Rules, the Court held that service is deemed sufficient if the letter is properly addressed and put into post.

Tivoli Gardens argued that the delay was caused by negligence of its erstwhile counsel. The Court rejected this plea.

Relying on Supreme Court decisions, the Court held that a litigant “owes a duty to be vigilant of his own rights”. It further held that a party cannot escape the consequences of inaction by placing the entire blame on its advocate.

The court observed that the interlocutory petition was filed after an inordinate delay of over two years. It added that the respondent's conduct “does not inspire confidence”.

Holding that the assistant registrar had no jurisdiction to condone such delay, the High Court quashed the impugned order dated April 23, 2025.