Mahesh Gupta V. Registrar of TradeMarks & Anr.

Posted On - 22 April, 2024 • By - King Stubb & Kasiva

In an appeal filed by SAP SE against Swiss Auto Products and the Registrar of Trademarks, the Ld. Single Judge, Delhi High Court disagreed with the views expressed by the coordinate bench in the case of Mahesh Gupta Vs Registrar of Trademarks.

This resulted in the Court referring the matter to a larger bench and framed the following issues:

  1. Whether the rules which are related to the procedural aspect such as the filing of evidence, which had been introduced by the coming of the Trademark Rules, 2017 would also apply retrospectively to the proceedings which had been initiated under the Trademark Rules of 2002.; and
  2. Whether not filing of evidence supporting the trademark application would be covered under the expression, “anything done under the Trademark Rules, 2002, which is saved by the Rule 158 of the Trademark Rules, 2017, and would still be governed by the Trademark Rules, 2002.

These issues have recently been answered by the Division bench led by HMJ Yashwant Varma and HMJ Dharmesh Sharma

Here are the key takeaways from the ruling:

1.⁠ ⁠The Trademarks Rules, 2017, have been affirmed not to impact ongoing proceedings initiated before their enforcement. This means that liabilities incurred, or consequences suffered prior to the implementation of the 2017 Rules remain unaffected.

2.⁠ ⁠Further, the Court clarified that failure to furnish evidence in support of a trademark application is now deemed as falling within the purview of ‘anything done under the Trademarks Rules, 2002’. This crucially implies that such actions are preserved under Rule 158 of the Trademarks Rules, 2017, and continue to be governed by the 2002 Rules.


This judgment provides clarity on the interplay between old and new trademark rules, ensuring legal certainty for ongoing proceedings.