The Hon’ble Madras High Court in Ramya S. Moorthy v. Registrar of Trade Marks and Anr. [W.P.(IPD).No.3 of 2023 & W.P.(IPD).No.4 of 2023] held that the timeline for filing the Counter Statement would run from the date of receipt of the notice of opposition by the Applicant.

Background

• The Petitioner’s trade mark applications for the mark “Nimaya” bearing no. 5314494 in class 99, i.e., classes 9 and 41 (“said applications”), were advertised on 12 th September, 2022 in the Trade Marks Journal No.2069, inviting oppositions, if any;

• On 12 th January 2023, notice of opposition was filed by the Respondent No. 2 against the said applications bearing no. 5314494 in classes 9 and 41 (“said oppositions”). A copy of the said oppositions were electronically transmitted (emailed) by the Trade Marks Registry to the Petitioner. The said oppositions invited the Petitioner to file its Counter Statement within two months from the receipt of the said oppositions as per Section 21(2) of the Trade Marks Act, 1999 (Opposition to registration);

• Due to non-receipt of the said oppositions, the Petitioner was unable to file the Counter Statements within the two-month period. Consequently, the Trade Mark Registry, vide orders dated 28 th April, 2023 (“impugned orders”), held that the Petitioner has deemed to have abandoned the said applications. [Reliance is placed on Section 21(2) of the Trade Marks Act, 1999 - Opposition to registration]; and

• In view of the above, the Petitioner preferred the present Writ Petitions under Article 226 of the Constitution of India (“said Petitions”) seeking the records contained in the impugned orders and prayed to quash the said order directing the Respondent No. 1 to grant the Petitioner an opportunity to file its Counter Statements against the said oppositions.

Petitioner’s contentions

• It is incorrect or untenable to say that the Applicant abandoned the said applications by not filing the Counter Statements within time. The clock (to file the Counter Statements) starts ticking only upon receipt of the notice of opposition by the Applicant. However, the notice of the said oppositions were not received by the Applicant/Petitioner; and

• The document relied upon by the Respondent No. 1, i.e., Trade Mark Registry, indicating the transmission of the said oppositions upon the agent of the Petitioner on 19 th January, 2023, does not evidence receipt of said oppositions by the Petitioner.

Respondent No. 1’s contentions

• Notice may be served through e-mail to the address provided by the Applicant, and that service of notice by e-mail is deemed to be proper service upon dispatching the e- mail as per Rule 17 (Address for service) and Rule 18 (Service of Documents by the Registrar) of the Trade Marks Rules, 2017; and

• The status of the document shows as ‘success’, evidencing dispatch of the notice of the said oppositions to the Applicant / Petitioner on 19 th January, 2023.

Observations

• The prescribed time limit to file the Counter Statements would only run from the date of receipt of the e-mail (serving the notice of opposition) by the Petitioner and the document indicating transmission of the said oppositions, do not qualify as evidence of receipt by the Petitioner;

• The said Petitions are allowed by quashing the impugned orders permitting the Petitioner was directed to file the Counter Statements in respect of the said oppositions within a maximum period of one month from the date of receipt of a copy of this order; and

• The Registrar of Trade Marks is directed to re-consider and decide the matter on said applications on its merits after providing a reasonable opportunity to both the Petitioner and the Respondent No. 2.

Comment

Although a transmission document was shown to the Madras High Court by the Trade Marks Registry, it appears that delivery receipt was not shown by them. The Trade Marks Registry does not appear to have a mechanism in place to show receipt of documents dispatched from their end. Whether this order will be used or misused will have to be seen.