Delhi High Court
Intellectual Property Attorneys ... vs The Controller General Of ... on 16 October, 2019
$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 16th October, 2019
+ W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019
INTELLECTUAL PROPERTY ATTORNEYS
ASSOCIATION ..... Petitioner
Through: Mr.C.M. Lall, Senior Advocate with
Ms.Nancy Roy and Mr.Rahul
Vidhani, Advocates
Mr.Amarjit Singh with Ms.Shubhi
Sharma, Advocates for Interveners.
versus
THE CONTROLLER GENERAL OF PATENTS,
DESIGNS & TRADE MARKS & ANR ..... Respondents
Through: Mr.Ravi Prakash, CGSC with
Mr.Farman Ali, Advocate
CORAM:
HON'BLE MR. JUSTICE J.R. MIDHA
J U D G M E N T (ORAL)
1. The petitioner is aggrieved by the non-speaking orders passed by the
Registrar of Trade Marks while refusing applications for registration of
Trade Marks in violation of Section 18(5) of the Trade Marks Act.
2. Section 18(5) of the Trade Marks Act mandates the Registrar to
record in writing the grounds for refusal or conditional acceptance of the
application for registration of Trade Marks. Section 18 of the Trade Marks
Act is reproduced hereunder:-
"Section 18--Application for registration
(1) Any person claiming to be the proprietor of a trade mark
used or proposed to be used by him, who is desirous of
registering it, shall apply in writing to the Registrar in the
prescribed manner for the registration of his trade mark.
(2) A single application may be made for registration of a
trade mark for different classes of goods and services and fee
payable therefor shall be in respect of each such class of
goods or services.
(3) Every application under sub-section (1) shall be filed in the
office of the Trade Marks Registry within whose territorial
limits the principal place of business in India of the applicant
or in the case of joint applicants the principal place of
business in India of the applicant whose name is first
mentioned in the application as having a place of business in
India, is situate: Provided that where the applicant or any of
the joint applicants does not carry on business in India, the
application shall be filed in the office of the Trade Marks
Registry within whose territorial limits the place mentioned in
the address for service in India as disclosed in the application,
is situate.
(4) Subject to the provisions of this Act, the Registrar may
refuse the application or may accept it absolutely or subject to
such amendments, modifications, conditions or limitations, if
any, as he may think fit.
(5) In the case of a refusal or conditional acceptance of an
application, the Registrar shall record in writing the grounds
for such refusal or conditional acceptance and the materials
used by him in arriving at his decision."
(Emphasis Supplied)
3. Learned senior counsel for the petitioner urged at the time of the
hearing that Section 18(5) of the Trade Marks Act, 1999 mandates the
Registrar to record in writing the ground for refusal/conditional acceptance
and the material used by him in arriving at his decision and the same has to
be communicated to the applicant forthwith. It is submitted that Rule 36 of
the Trade Marks Rules, 2017 is violative of Section 18(5) insofar as it
provides for sending the copy of the order to the applicant without the
grounds for refusal/conditional acceptance. It is submitted that Rule 36 is
inconsistent with the mandatory provision of Section 18(5) of the Trade
Marks Act and the Registrar of Trade Marks be directed to send the copy of
the order containing the grounds of refusal/conditional acceptance to the
applicant.
4. Learned Standing Counsel fairly submits that the Registrar of Trade
Marks has to comply with Section 18(5) of the Trade Marks Act, 1999.
Learned counsel however submits that Rule 36 of Trade Marks Rules
provides that the Registrar shall communicate the decision in writing to the
applicant and if the applicant intends to appeal from such decision, he may
apply within 30 days in Form TM-M to the Registrar whereupon the grounds
of refusal/conditional acceptance shall be furnished.
5. This Court is of the view that the Registrar of Trade Marks is duty
bound to send the copy of the order passed under Section 18(5) of the Trade
Marks Act containing the grounds for refusal/conditional acceptance and
material used by him in arriving at his decision to the applicant. Rule 36 of
the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the
mandatory provision of the statute insofar as it empowers the Registry to
communicate the decision without the grounds for refusal/conditional
acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act
shall prevail over Rule 36 of the Trade Marks Rules.
6. The writ petition is allowed and the Registrar of Trade Marks is
directed to strictly implement Section 18(5) of the Trade Marks Act by
recording in writing grounds for refusal/conditional acceptance and the order
containing the grounds of refusal/conditional acceptance be sent to the
applicant within two weeks of the passing of the order.
7. This Court appreciates the assistance rendered by learned counsel for
all the parties in this matter.
8. The pending applications are disposed of.
9. Copy of this judgment be given dasti to counsel for the parties under
the signature of the Court Master.
J.R. MIDHA, J.
OCTOBER 16, 2019
ak/dk
