Case Citation: W.P.(IPD).Nos.3 & 4 of 2023
The Madras High Court recently delivered a significant judgment in the case of Ramya S. Moorthy vs. Registrar of Trade Marks & Anr, dated 10 August 2023. This case revolves around the interpretation of Section 21(2) of the Trade Marks Act, 1999, and its application to the receipt of a notice of opposition in trade mark registration proceedings. The petitioner, Ramya S. Moorthy, sought redress against two orders, both dated 28 April 2023, in which her trade mark applications were deemed abandoned due to her alleged failure to file counter statements to notices of opposition. This analysis delves into the procedural history, the issues presented, the rules of law, contentions of both parties, the court’s analysis and reasoning, the final holding, and the implications and significance of this judgment.
On 4 February 2022, the petitioner, Ramya S. Moorthy, filed two trade mark applications under different classes. Subsequently, on 8 March 2022, she received an examination report for these applications. The applications were accepted for advertisement, and the advertisement was published on 12 September 2022. However, on 12 January 2023, the second respondent, Nirma Ltd., filed opposition against these trade mark applications. A dispute arose over the delivery of the notice of opposition to the petitioner. While the Trade Marks Registry claimed to have electronically transmitted the notice on 19 January 2023, the petitioner denied receiving it. Due to the alleged non-receipt of the notice of opposition, the petitioner was unable to file counter statements within the two months specified in Section 21(2) of the Trade Marks Act, leading to the impugned orders dated 28 April 2023.
The primary issue in this case is the interpretation of Section 21(2) of the Trade Marks Act, 1999, specifically, whether the two-month period for filing counter statements commences upon the dispatch of the notice of opposition or upon the actual receipt of the notice by the applicant.
Rules of Law
Section 21(2) of the Trade Marks Act, 1999, is the pivotal legal provision in question:
“The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.”
Additionally, Rules 17 and 18 of the Trade Marks Rules, 2017, are relevant:
Rule 17: Addresses for Service. Rule 18: Service of Notice.
Rule 18(2): “Any communication or document so sent shall be deemed to have been served, at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the e-mail.”
Contentions of the Plaintiff
The petitioner argues that the clock for filing counter statements begins upon the applicant’s receipt of the notice of opposition. Since she claims not to have received the notice, she contends that the conclusion of the Trade Marks Registry that she abandoned her applications is unjustifiable.
Contentions of the Defendants
The Trade Marks Registry argues that Rules 17 and 18 of the Trade Marks Rules, 2017, allow for service of notice through e-mail. They assert that service by e-mail is deemed complete upon dispatch, which they believe aligns with the statute’s requirements.
Analysis and Reasoning
The central issue revolves around the interpretation of Rule 18(2) in conjunction with Section 21(2). The critical question is whether the clock starts ticking upon the transmission or the receipt of the notice of opposition.
Section 21(2) clearly states that the applicant must file a counter statement within two months from “the receipt by the applicant of such copy of the notice of opposition.” Rule 18(2), on the other hand, deals with service by e-mail and deems service to occur “at the time of sending the e-mail.” However, this interpretation, if taken literally, would conflict with the language of Section 21(2) and could jeopardize the substantive rights of trade mark applicants.
Considering the significance of the right to seek trade mark registration, it is reasonable to conclude that the prescribed time limit for filing a counter-statement should only commence upon the applicant’s actual receipt of the e-mail. The document provided by the Registrar of Trade Marks, indicating successful transmission, does not serve as evidence of receipt by the petitioner.
Holding and Decision
The Madras High Court allows WP(IPD) Nos. 3 and 4 of 2023, quashing the orders dated 28 April 2023. The two trade mark applications are reinstated and remanded to the Registrar of Trade Marks for reconsideration. The petitioner is directed to file counter statements within one month from the date of receipt of the court’s order. The Registrar of Trade Marks is instructed to re-evaluate the matter on its merits, providing a fair opportunity to both the petitioner and the second respondent.
Implications and Significance
This judgment carries substantial implications for trade mark applicants and the Trade Marks Registry. It clarifies that the clock for filing counter statements begins upon the receipt of the notice of opposition, ensuring that applicants are not unfairly prejudiced by electronic communication glitches or non-receipt of notices. This interpretation aligns with the fundamental principle of natural justice and safeguards the substantive rights of trade mark applicants.
The Madras High Court’s decision in Ramya S. Moorthy vs. Registrar of Trade Marks (10 August 2023) serves as a precedent clarifying the interpretation of Section 21(2) of the Trade Marks Act, 1999. By ensuring that the prescribed time limit for filing counter statements commences upon receipt of notices of opposition, this judgment upholds fairness and justice in trade mark registration proceedings, safeguarding the rights of applicants.