Madras High Court
Dated: 11.08.2023 vs The Registrar Of Trade Marks on 11 August, 2023
2023:MHC:3715
(T)CMA(TM)/103/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 11.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/103/2023
(OA/43/2020/TM/CH)
M/s. Goldmedal Electricals Pvt Ltd.,
A/302, Kemp Plaza, Mind Space Off. Link Road,
Chincholi Bunder Malad (W) ,
Mumbai - 400 064. ... Appellant
Vs
1.The Registrar of Trade Marks,
Intellectual property Building,
G.S.T. Road,
Guindy
Chennai - 600032
2.K. Dalpat Singh
148-150, K.K. Lane No. 1
Avinashi Road
Coimbatore - 641 018. ...Respondents
Prayer: This Transfer Civil Miscellaneous Appeal (Trademarks) filed
under Section 91 of the Trade Marks Act, 1999 to (i) quash set aside
the impugned order dated 09.08.2019, passed by Respondent No.1 in
1/11
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(T)CMA(TM)/103/2023
Opposition No.891715 filed by the Appellant to the trademark
Application of the Respondent No.2 under No.2826665 in class 19
and registration certificate issued be withdrawn. (ii) Summon the
records in respect of Opposition No. 891715 filed by the Appellant to
the trademark Application of the Respondent No. 2 under 2826665 in
class 19 from the office of the Respondent No.1.
For Appellant : Mr. Somnath De
for M/s.K.G.Bansal and Company
For Respondents : Mr. N. Ramesh, SPC for R1
Mrs.Devi N.
for M/s. Sanjeev Singh for R2
JUDGMENT
This appeal is directed against the order dated 09.08.2019 in
respect of a notice of opposition filed by the appellant herein on
24.06.2017 in relation to an application filed by the second
respondent herein for registration of the mark “GOLD MEDAL
PIPE” in class 19 in respect of non-metallic building materials, non-
metallic rigid pipes for buildings and the like. By the impugned
order, the opposition of the appellant was deemed to be abandoned
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(T)CMA(TM)/103/2023
and A.No.2826665 was directed to be proceeded with as per the
rules. The order impugned herein was assailed by the appellant
originally before the Intellectual Property Appellate Board. By order
dated 16.10.2020, the impugned order was stayed and the said order
of stay continues to operate as on date. Meanwhile, it appears that a
certificate of registration was issued to the appellant.
2. The primary ground on which the impugned order was
issued was that the appellant submitted a communication dated
05.10.2017 to the Mumbai instead of the Chennai Office of the Trade
Marks Registry to the effect that the appellant/opponent does not
wish to rely upon evidence in support of the notice of opposition but
intends to rely upon submissions made in the notice of opposition. In
those circumstances, by taking recourse to Rule 8 of the Trade Marks
Rules, 2017 (the Trade Marks Rules) and Rule 45(2) thereof, the
opposition was treated as abandoned.
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(T)CMA(TM)/103/2023
3. Learned counsel for the appellant submitted that the
appellant received the counter statement from the second respondent
on 27.09.2017. The said counter statement was dispatched to the
appellant by the Trade Marks Registry and the relevant e-mail set out
the e-mail address of the Mumbai office of the Trade Marks Registry.
Therefore, by e-mail of 05.10.2017, the appellant /opponent
communicated to the said e-mail address of the Mumbai Office that it
did not wish to file evidence in support of the opposition but intends
to rely upon submissions made in the notice of opposition. Learned
counsel also pointed out that a similar communication was sent on
behalf of the 2nd respondent/applicant by communication dated
05.10.2017. Thus, he submitted that both parties decided not to rely
upon evidence and to rely upon the notice of opposition and counter
statement, respectively.
4. Learned counsel also pointed out that the same scenario
played out in relation to trademark application No.2573910 in class
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(T)CMA(TM)/103/2023
11. Upon the appellant sending a similar letter stating that it did not
intend to rely upon evidence, an order was passed treating the
opposition as abandoned. The said order was assailed before the
Intellectual Property Appellate Board and the said appeal was
allowed by order dated 12.11.2018. Assailing the said order, the
second respondent filed W.P.No.5486 of 2019. By judgment dated
02.08.2019, the writ petition was dismissed by the Division Bench of
this Court.
5. Learned counsel also pointed out that an infringement action
was instituted by the appellant against the second respondent before
the District Court in Delhi and that an order of interim injunction is
in force in the said suit. In conclusion, learned counsel for the
appellant submitted that the impugned order is unsustainable and
that the opposition of the appellant is not liable to be treated as
abandoned in terms of Rule 45 of the Trade Marks Rules.
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(T)CMA(TM)/103/2023
6. In response to these contentions, learned counsel for the
second respondent submitted that the present appeal is belated and
that it was filed about six months after the registration certificate was
granted to the second respondent. Because a certificate of registration
was granted, learned counsel also submitted that the appeal is
infructuous and that only a rectification petition should have been
filed. Learned counsel also submitted that the Trade Marks Rules
prescribe that all notices, statements or other documents should be
served or sent to the appropriate office of the Trade Marks Registry.
By relying upon Rules 4 to 8 of the Trade Marks Rules, learned
counsel contended that the appropriate office, in this case, is the
Chennai Office of the Trade Marks Registry. Since the e-mail of
05.10.2017 was admittedly sent to the Mumbai Office of the Trade
Marks Registry, learned counsel contended that the opposition of the
appellant was liable to be treated as abandoned in terms of Rule
45(2). Leaned counsel for the second respondent also invited my
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(T)CMA(TM)/103/2023
attention to Section 21(1) which prescribes that the opposition should
be made in the prescribed manner.
7. At the outset, the contention that the appeal is infructuous
should be dealt with. The appeal was filed within the prescribed
time and an order of interim stay was granted by the Intellectual
Property Appellate Board on 16.10.2020. In these circumstances, the
grant of the certificate does not render the appeal infructuous.
8. From the rival contentions, it is evident that the case turns
largely on Section 21 of the Trade Marks Act and Rule 45 of the Trade
Marks Rules. While Section 21(2) prescribes the consequence of not
filing a counter statement in response to a notice of opposition, it
does not prescribe the consequence of not adducing evidence. In fact,
sub section 4 merely enables both the applicant and the opponent to
adduce evidence, if so intended. Rule 45, which deals with evidence
in support of opposition, is set out below:-
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45. Evidence in support of opposition.—(1)
Within two months from service of a copy of the
counterstatement, the opponent shall either leave with
the Registrar, such evidence by way of affidavit as he
may desire to adduce in support of his opposition or shall
intimate to the Registrar and to the applicant in writing
that he does not desire to adduce evidence in support of
his opposition but intends to rely on the facts stated in
the notice of opposition. He shall deliver to the applicant
copies of any evidence including exhibits, if any, that he
leaves with the Registrar under this sub-rule and
intimate the Registrar in writing of such delivery.
(2) If an opponent takes no action under sub-rule
(1) within the time mentioned therein, he shall be deemed
to have abandoned his opposition.
9. Rule 45(1) clearly indicates that the opponent has the option
of adducing evidence or communicating to the Registrar and to the
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(T)CMA(TM)/103/2023
applicant in writing that such opponent does not desire to adduce
evidence in support of his opposition but intends to rely on the facts
stated in the notice of opposition.
10. The record discloses that the appellant issued a
communication dated 05.10.2017, which is addressed to the Registrar
of Trade Marks, Chennai, but transmitted to the e-mail address of
the Trade Marks Registry at Mumbai ([email protected]). The
principal ground on which the opposition was treated as abandoned
by the impugned order is the transmission of this communication to
the Mumbai Office. While Rule 8 specifies that notices and
documents should be delivered or sent to the appropriate office,
which is the Chennai Office in this case, in the factual context of the
appellant having addressed the communication to the Trade Marks
Office, Chennai, albeit by transmitting such communication to the
e-mail id of the Mumbai Office of the Trade Marks Registry, there is
substantial compliance with the mandate of Rule 45(1). It should also
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(T)CMA(TM)/103/2023
be noticed that the appeal relating to Trade Mark A.No.2573910 was
allowed on almost identical facts and circumstances.
11. For reasons set out above, (T)CMA(TM)/103/2023 is
allowed, the impugned order is set aside and the matter is remanded
for re-consideration by the Registrar of Trade Marks. The Registrar of
Trade Marks is directed to provide a reasonable opportunity to both
parties and decide the matter, on merits, within a period of three
months from the date of receipt of a copy of this order. The
registration of Trade Mark No.2826665 shall not be relied upon by
the second respondent until the matter is decided on merits and
thereafter shall be subject to such decision. There shall be no order as
to costs.
11.08.2023
kal
Index : Yes / No
Internet : Yes / No
Neutral Citation : Yes / No
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/103/2023
SENTHILKUMAR RAMAMOORTHY, J
kal
(T)CMA(TM)/103/2023
(OA/43/2020/TM/CH)
11.08.2023
https://www.mhc.tn.gov.in/judis
