Madras High Court: In a writ petition filed against the two orders, both dated 28-04-2023 passed by the Registrar of Trade Mark, wherein the application for registration of the relevant marks was deemed to be abandoned. Senthilkumar Ramamoorthy,J. while quashing the impugned orders, restored the two applications to the file of the Registrar of Trade Marks and the matter is remanded for reconsideration by the Registrar of Trade Marks. Further, it directed the petitioner to file the counter statement in respect of the respective notices of opposition within a maximum period of one month from the date of receipt of a copy of this order. It also directed the Registrar of Trade Marks to re-consider and decide the matter on merits after providing a reasonable opportunity to both the petitioner and Nirma Ltd.
The petitioner prayed for quashing the impugned order as illegal, unjust, arbitrary and contrary to principles of natural justice and to consequently direct the Registrar to grant the petitioner an opportunity to file a counter statement to notice of opposition.
In the case at hand, the petitioner filed two trade mark applications on 04-02-2022 under different classes. On 08-03-2022, the petitioner was notified of the examination report in respect of the respective application. The applications were accepted for advertisement and such advertisement was published on 12-09-2022. Thereafter, an opposition was filed by Nirma Ltd. while the Trade Marks Registry asserts that the notice of opposition was electronically transmitted to the petitioner on 19-01-2023, the petitioner denies receipt thereof. Because of non-receipt of the notice of opposition, the petitioner asserts that the counter statement to the notices of opposition could not be filed within the two-month period specified in Section 21(2) of the Trade Marks Act, 1999 (‘TM Act'). In these circumstances, the Trade Mark Registry issued the impugned orders dated 28-04-2023 holding that the petitioner is deemed to have abandoned the two applications. Hence, the petitioner filed these writ petitions.
The petitioner contended that as per Section 21(2) of the TM Act, the clock starts ticking only upon receipt by the applicant of a copy of the notice of opposition. Since the notice of opposition was not received by the petitioner, it is further contended that the conclusion that he abandoned the applications is untenable.
The petitioner further contended that although the Trade Mark Registry relied upon a document indicating transmission of the opposition notice on 19-01-2023 to the agent of the petitioner, this document does not evidence receipt of the notice of opposition by the petitioner.
After relying on Rules 17 and 18 of the Trade Marks Rules, 2017, the Registrar contended that notice may be served through e-mail to the address provided by the petitioner, and that service of notice by e-mail is deemed to be proper service upon dispatching the e-mail.
The Court took note of Section 21(2) of the TM Act that deals with service of copy of the notice and Rules 17 and 18 of the Trade Mark Rules, 2017, that deals with the address for service and service of notice, respectively. Further, it perused Rule 18(2) and noted that it contains legal fiction with regard to service of notice by post and e-mail. It provides that notice would be deemed to be served “at the time of sending the e-mail”. Thus, the proof of transmission of the e-mail is suffice.
The Court said that in the context of the non-incorporation of the provision for deemed receipt in the statute, if so construed, Rule 18(2) would not be in consonance with Section 21(2) which provides that the time limit for filing the counter statement would run from the date of receipt by the applicant of the notice of opposition.
However, as the substantive right of an applicant seeking registration of trade marks is at stake, the Court said that the prescribed time limit would only run from the date of receipt of the e-mail, and the document relied on by the Registrar of Trade Marks does not qualify as evidence of receipt by the petitioner.
Thus, the Court quashed the impugned orders.
[Ramya S. Moorthy v Registrar of Trade Marks, 2023 SCC OnLine Mad 5305, Order dated 10-08-2023]
Advocates who appeared in this case :
For Petitioner : Advocate Arun Karthik Mohan, Advocate Suhrith Parthasarathy
For Respondents : Advocate S. Janarthanam