No deemed abandoning of trade mark registration application on the ground that applicant failed to file counter to opposition filed if notice was not served – High Court
ABCAUS Case Law Citation:
ABCAUS 2116 (2017) (11) HC
The petitioner was aggrieved by the order passed by Registrar of Trade Marks (the Registrar), whereby the Registrar had held that by virtue under Section 21(2) of the Trademarks Act, 1999 (the Act) the petitioner was deemed to have abandoned his application for registration of the Trade Mark on the basis that the petitioner had failed to file a Counter Statement to the Notice of Opposition filed.
Important Case Laws Cited/relied upon by the parties:
M/s Allied Blenders and Distillers Pvt. Ltd. v. Intellectual Property Appellate Board & Ors: AIR 2009 Mad 196
Mahinder Nagpal v. Union of India & Ors: 2015 (63) PTC 387 (Del)
Rakesh Kumar v. Union of India & Ors: W.P.(C) 6093/2011
Grounds raised by the appellant Assessee:
The Petitioner’s case was that he had not received the Notice of Opposition filed by and therefore, there was no question of the petitioner abandoning its application for registration of the trademark.
Brief Facts of the Case:
The petitioner had filed an application for registration of a trade mark. The said application was advertised in the Trade Marks Journal.
One Private Limited Company filed an opposition to the petitioner‟s application under Section 21(1) of the Act. According to the Registrar, notice of such opposition was sent to the petitioner. On the other hand, the petitioner claimed that no such Notice of Opposition was received by him or his agent. Thereafter, the Registar passed the impugned order.
The petitioner on receiving the impugned order caused his advocates to inspect the physical files maintained by the Intellectual Property Office to ascertain the factual position about filing of the opposition and the alleged service of the same to the petitioner.
The petitioner also filed an application under the Right to Information Act, 2005 about filing of the opposition and service of the same to the petitioner. The reply to the RTI application revealed that the Notice of Opposition was dispatched from the office of the Registrar, Trade Marks bearing proper dispatch nos.
Observations made by the High Court:
The Hon’ble High Court noted that in terms of sub section (2) of Section 21 of the Act, the Registrar is required to serve a copy of the notice of opposition to the applicant and the applicant is required to send it to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, within two months from the receipt of such copy of the notice of opposition. It is only if the applicant fails to send a counter – statement within the specified period of the receipt of the notice of opposition that his application can be treated as abandoned.
Regrading the contention of the Registrar that even if the petitioner had not received a Notice of Opposition, the petitioner was required to be diligent and make suitable enquiries from the Trademark Registry, the Hon’ble High Court dismissed it as unmerited.
It was noted that the petitioner had applied for registration of the trademark in 1998. The said application was advertised first in 2003, however, the Court is informed that the trademark was not clear and therefore, the application was again advertised in the Trademark Journal in 2005 which was published in 2006; that is, almost eight years after the petitioner had filed his application. Further, the Opposition was filed in 2006 and it was dispatched in 2011 which is more than five years after such opposition had been received by the Trademark Registry.As per the Hon’ble High Court, gGiven the delays endemic in the Trademark Registry, the contention that petitioner was required to be diligent and ought to have enquired about the filing of any notice of opposition and dispatch thereof and on failure to do so should be visited with the consequence of deemed abandonment of his application, is unsustainable. Even otherwise, the conclusion that the applicant is deemed to have abandoned his application can only follow once the notice of opposition is served on the applicant and he fails to respond to the same.
Perusing the Despatch Register of the Registry revealed that the Notice of Opposition had been dispatched in 2011. However, as per the register the name / designation of the addressee (written in scribbled form) was not that of the petitioner’s agent. The Hon’ble High Court opined that the Despatch Register indicated that the Notice of Opposition was not sent to the petitioner but to a third party who was not involved in the matter.
The Registrar contended that in the despatch register, there was an inadvertent error and, infact, the Notice of Opposition was sent to the applicant’s agent. The Hon’ble High Court opined that it was possible that the contention was correct an incorrect entry had been recorded in the Despatch Register and the notice was, in fact, sent to the correct address. However, there was no material which would substantiate the same and it was equally possible that there was no error in the Despatch Register and the notice of opposition was, in fact, dispatched to wrong entity erroneously. Further, given that the petitioner has affirmed that he had never received the Notice of Opposition, the same had to be accepted.
Thus the Hon’ble High Court opined that the impugned order treating the petitioner as having abandoned his application on the ground that the petitioner had failed to file a counter-statement to the opposition cannot be sustained.
The appeal was allowed and the impugned order was set aside. The petitioner was directed to file his counter-statement within a further period of eight weeks. The Registrar was directed to consider the same in accordance with law.