Rule 46 Trade Marks Rules 2017: Applicant's Evidence

Introduction

Rule 46 of the Trade Marks Rules, 2017 governs the evidence an applicant files in support of a trademark application after an opposition has been filed. The deadline is two months, and missing it can mean the application is treated as abandoned. This guide explains where Rule 46 fits in the opposition process, what it requires, and how to avoid the mistakes that cost applicants their marks.

The Trademark Opposition Stage: Why It Catches Applicants Out

Publication of your mark in the Trade Marks Journal feels like the finish line. It is closer to the halfway point.

From the date of publication, anyone can file a notice of opposition under Section 21 of the Trade Marks Act. The window is four months. Older rules allowed the Registrar to extend this period, but the 2017 Rules removed that discretion, so a notice filed after four months is not accepted.

If nobody opposes, the mark moves to registration. If someone does, the file becomes a contest with fixed steps. Rule 46 is the step that belongs to the applicant.

Where Rule 46 Sits in the Opposition Timeline

The steps run in a chain:

1. The applicant has two months from receiving the notice of opposition to file a counter-statement under Rule 44. Missing this deadline is fatal on its own.

2. The Registry serves the counter-statement on the opponent. The opponent has two months under Rule 45 to file evidence, or to say they will rely on the notice of opposition alone.

3. Only after that does Rule 46 begin to run for the applicant.

4. Rule 47 then allows the opponent to file evidence in reply.

5. The Registrar hears the parties under Section 21(5) and issues a decision.

What Rule 46 Requires From the Applicant

Rule 46 gives the applicant two months, counted from receiving the opponent's evidence or the opponent's notice that none will be filed. The applicant then chooses between two paths.

Option 1: File an Evidence Affidavit

The first path is an evidence affidavit aimed at the specific grounds in the opposition. The affidavit comes from the applicant or an authorised representative, who confirms the facts on oath. Useful evidence includes:

• Invoices and sales records showing real use of the mark, which carry the most weight

• Advertising samples, brochures and packaging

• Anything that proves distinctiveness or reputation

Option 2: Notice of Reliance on the Record

The second path is a written notice that the applicant will rely on the counter-statement and what is already on the record. It saves money, but it should be treated with caution. The opponent has just put evidence in front of the Registrar, and a bare record can look thin beside it. Use this notice only when your existing papers truly answer every ground raised.

Two Further Duties: Serve and Inform

Whichever path you take, two further duties follow:

• Deliver copies of the evidence and exhibits, or the notice, to the opponent.

• Tell the Registrar in writing that you have done so.

Filing and serving are separate acts, and the rule expects both.

What Happens If You Miss the Rule 46 Deadline

Under Rule 46(2), an applicant who takes no action in time is deemed to have abandoned the application. There is no warning letter in between.

The mark falls out of the process, and the applicant may have to file again. A fresh application carries a later filing date, which could matter if a rival files in the meantime.

The Sun Pharma Ruling: How to Read It Carefully

The case most often cited on this point is Sun Pharma Laboratories Ltd v. Dabur India Ltd, decided by the Delhi High Court in February 2024. It needs careful handling, because it is sometimes described as if it concerned an applicant's evidence. It did not:

• Sun Pharma was the opponent, and the evidence at issue was the opponent's.

• The dispute arose under the old 2002 Rules, with the court tracing how the 1959, 2002 and 2017 Rules

What the Court Held

The court held that the opposition timelines are mandatory and that the Registrar has no discretion to extend them.

It also dealt with a narrower point. Sun Pharma had filed its evidence at the Registry on time but served Dabur a day late (some reports say three days). The Registrar treated the opposition as abandoned. The court reversed that, holding that late service alone, with timely filing, is not abandonment.

After a review petition, the court clarified in October 2024 that parties serve evidence on each other directly, and that such service starts the reply period for the other side.

What It Means for Rule 46

Rule 46 has the same two-month structure and the same deemed-abandonment wording as Rule 45, so the reasoning carries over to applicants. The case is not, however, a ruling on Rule 46 itself. Two lessons come out of it:

• Do not plan around an extension.

• Do not treat filing and serving as one task.

Do All Courts Treat the Deadline the Same Way?

No. Before relying on the strictness of the rule, note that the courts are not uniform.

• Delhi High Court: A division bench, dealing with Rule 45, held the two-month period absolute and denied the Registrar any power to extend it under Section 131 of the Act.

• Bombay High Court: It has taken a different view of the same rule. It treats the deadline as directory, allows the Registrar to extend time under Section 131 even after expiry, and reads the deemed-abandonment language so that it does not wipe out substantive rights.

That split is why the safe policy is to behave as though the Delhi position is the law everywhere. An applicant who bets on Bombay-style leniency is betting a trademark on a point the courts have not settled.

Best Practices for Filing Rule 46 Evidence

• Calendar the deadline immediately. Enter it on the day the opponent's evidence arrives. Count two months from the receipt date, not the date on the cover letter.

• Start collecting evidence early. Begin when the notice of opposition lands. Invoices, advertisements and packaging take longer to find than anyone expects.

• Answer the actual grounds. Write the affidavit against the grounds the opponent raised. A pointed answer to each ground persuades far more than pages on general goodwill.

• Organise exhibits. Number and label every exhibit so the Registrar can follow them without a guide.

• Sign and verify properly. An improperly verified affidavit is a common failure.

• Serve, inform and keep proof. Serve the opponent, inform the Registry in writing, and keep proof of both steps.

• Consider professional help. If the mark matters commercially, a trademark attorney who tracks these dates for a living is cheap insurance.

Common Mistakes That Sink Trademark Applications

• Assuming an extension will be granted

• Filing the evidence but forgetting to serve the opponent

• Serving the opponent but never writing to the Registrar

• Lodging an unsigned or improperly verified affidavit

• Submitting a pile of evidence that never touches the grounds of opposition

None of these is hard to avoid, and all of them have cost someone a mark.

Conclusion

Rule 46 is short and procedural, and that is the trap. Nothing in it looks dangerous until the two months are gone. With the courts still disagreeing on how strict the neighbouring deadline is, treat every date in this chain as final. Check the current rules and forms on the Trade Marks Registry website before filing anything.

KEY TAKEAWAYS

• Publication in the Trade Marks Journal is not the finish line; opposition can be filed within four months.

• Rule 46 gives the applicant two months to file evidence or a notice of reliance, counted from receiving the opponent's evidence or notice.

• The applicant can file an evidence affidavit or notify that they will rely on the counter-statement and the record.

• Filing and serving are separate acts. Serve the opponent and inform the Registry in writing.

• Under Rule 46(2), missing the deadline means the application is deemed abandoned, with no warning.

• Sun Pharma v. Dabur concerned an opponent's evidence under the 2002 Rules, so it informs Rule 46 but does not decide it.

• The Delhi and Bombay High Courts differ on whether the Rule 45 deadline can be extended, so plan as if no extension exists.

• Calendar the date from the day the opponent's evidence is received, and answer each ground of opposition directly.

FAQ SECTION

1. What is Rule 46 of the Trade Marks Rules, 2017?
It is the rule governing the applicant's evidence in an opposition. The applicant either files an evidence affidavit or gives notice of reliance on the counter-statement and the existing record.

2. How long does an applicant have under Rule 46?
Two months, counted from receiving the opponent's evidence or the opponent's notice that no evidence will be filed.

3. When does Rule 46 begin to run?
Only after the opponent has filed evidence under Rule 45 or notified that they will rely on the notice of opposition alone.

4. What happens if the applicant misses the Rule 46 deadline?
Under Rule 46(2), the application is deemed abandoned. The applicant may have to file again with a later filing date.

5. Can the Registrar extend the Rule 46 deadline?
The Delhi High Court has held the opposition timelines mandatory, with no Registrar discretion to extend them. The Bombay High Court has taken a different view of the neighbouring Rule 45. Applicants should plan as if no extension is available.

6. What can an applicant file under Rule 46?
Either an evidence affidavit addressing the grounds of opposition, or a written notice of reliance on the counter-statement and the record.

7. What evidence carries the most weight?
Invoices and sales records showing real use of the mark carry the most weight. Advertising samples, brochures, packaging and proof of distinctiveness or reputation also help.

8. Who signs the affidavit?
The applicant or an authorised representative, who confirms the facts on oath.

9. Is a notice of reliance safer than filing evidence?
It saves money, but it can look thin against opposing evidence. Use it only when your existing papers truly answer every ground raised.

10. Is filing the evidence enough?
No. You must also deliver copies to the opponent and tell the Registrar in writing that you have done so.

11. How long is the opposition window after publication?
Four months from publication in the Trade Marks Journal. The 2017 Rules removed the Registrar's discretion to extend it.

12. What is the deadline for the counter-statement?
Two months from receiving the notice of opposition, under Rule 44.

13. What is Rule 47?
It allows the opponent to file evidence in reply to the applicant's evidence.

14. Who decides the opposition?
The Registrar, who hears the parties under Section 21(5) and issues a written decision.

15. Was Sun Pharma v. Dabur about applicant's evidence?
No. Sun Pharma was the opponent, and the case arose under the 2002 Rules. Its reasoning is relevant to Rule 46 because of the similar structure, but it is not a ruling on Rule 46.

16. What did the Delhi High Court say about late service?
In that case, timely filing with late service was not treated as abandonment. The court also clarified that parties serve evidence on each other directly, and that service starts the other side's reply period.

17. Why is the Delhi–Bombay split important?
The courts disagree on whether the deadline can be extended, so relying on leniency risks the mark. The safer policy is to treat the deadline as final.

18. When should I start collecting evidence?
As soon as the notice of opposition arrives, since invoices, advertisements and packaging take time to locate.

19. How should I count the two months?
From the date you received the opponent's evidence, not from the date on the cover letter.

20. What are the most common Rule 46 mistakes?
Assuming an extension, forgetting to serve, not writing to the Registrar, filing an unsigned or improperly verified affidavit, and submitting evidence unrelated to the grounds of opposition.

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