Madras High Court
Samsudeen A vs The Registrar Of Trade Marks on 7 November, 2024
Author: Abdul Quddhose
Bench: Abdul Quddhose
2024:MHC:3809
C.M.A.(TM)No.10 of 2024
IN THE HIGH COURT OF JUDICATUE AT MADRAS
DATED: 07.11.2024
CORAM
THE HONOURABLE MR. JUSTICE ABDUL QUDDHOSE
C.M.A(TM).No.10 of 2024
Samsudeen A .. Appellant
Vs
1.The Registrar of Trade Marks,
Trade Mark Registry,
Intellectual Property Rights Building,
GST Road, Guindy,
Chennai – 32.
2.A1 Salama Eye Hospital Limited,
Perinthalmanna, Malappuram District,
Kerala – 679 322. .. Respondents
Prayer: This Appeal is filed under Section 91 of the Trade Marks
Act, 1999, against the order dated 05.02.2024 passed by the Registrar of
Trade Marks/first respondent.
For Appellant : Mr.Suresh
For R1 : Mr.S.Janarthanam
For R2 : Mr.Ramesh Ganapathy
https://www.mhc.tn.gov.in/judis
1/12
C.M.A.(TM)No.10 of 2024
JUDGMENT
The question that arises for consideration in this appeal is whether
it would suffice for the purpose of complying with the requirements of
Rule 18(2) of the Trade Marks Rules, 2017 (in short “TM Rules”), if the
first respondent (Trade Mark Registry) had despatched the email notice
to the e-mail address given by the appellant in his trademark application
seeking for registration of a trademark.
2. Under the impugned order, the application for registration of a
trademark submitted by the appellant has been ordered to be abandoned
on the ground that the appellant failed to file a counter-statement to the
opposition petition filed by the second respondent within the statutory
period, despite the fact that the appellant is alleged to have received the
notice through email as per Rule 18(2) of the TM Rules.
3. However, the appellant in this appeal contends that the appellant
never received the notice from the first respondent (Trade Mark Registry)
in accordance with Rule 18(2) of the TM Rules, as the email said to have
been sent by the first respondent was never received by him. The
appellant also contends that in respect of three other trademark
https://www.mhc.tn.gov.in/judis
applications seeking for registration under different classes, the appellant
had received notice from the first respondent and had also filed a counter-
statement to the opposition petition within the statutory period.
Therefore, according to the appellant, arbitrarily, by total non-application
of mind, the impugned order has been passed by the first respondent
ordering abandonment under Section 21(2) of the Trade Marks Act, 1999
(in short "TM Act") of the application submitted by the appellant seeking
for trademark registration.
4. The learned counsel for the appellant drew the attention of this
Court to Section 21(2) of the “TM Act” and would submit that two
months' time shall commence for the appellant to file counter-statement
only from the date of receipt of notice of opposition. Therefore, according
to him, since the appellant did not receive notice of opposition, the
question of ordering abandonment of the appellant's application seeking
for registration of trademark is unjustified.
5. The learned counsel for the appellant also drew the attention of
this Court to Rules 18 and 42 of the TM Rules, and would submit that as
https://www.mhc.tn.gov.in/judis
per Rule 42(5), the first respondent will have to serve notice of opposition
on the appellant within three months of the receipt of the same by the
appropriate office, the first respondent herein. According to him, unless
and until the appellant receives notice of opposition from the first
respondent, the time limit prescribed for filing counter-statement will not
commence.
6. The learned counsel for the appellant also drew the attention of
this Court to the decision of a learned Single Judge of this Court in
Ramya S.Moorthy Vs. Registrar of Trade Marks and others
[MANU/TN/5971/2023] and would submit that in similar circumstances,
the writ petition filed by a similarly placed person was allowed.
7. On the other hand, learned Special Panel Counsel for the first
respondent would submit that since the notice of opposition has been
duly sent and received by the appellant as seen from the despatch details
maintained by the first respondent, this appeal is not maintainable, as the
impugned order has been passed only in accordance with Section 21(2) of
the TM Act by following the service of notice procedure prescribed under
Rule 18(2) of the TM Rules.
https://www.mhc.tn.gov.in/judis
8. He would also submit that the decision of the learned Single
Judge relied upon by the learned counsel for the appellant referred to
supra was taken up on appeal before the Division Bench of this Court and
in the said appeal, even though the Division Bench had confirmed the
order passed by the learned Single Judge, the Division Bench had made it
clear that the order passed by the learned Single Judge cannot be treated
as a precedent in other matters.
9. The learned counsel for the second respondent would reiterate
that the mandatory procedure contemplated under Rules 18(2) and 18(3)
of the TM Rules for service of notice was followed by the first respondent
and therefore, there is no infirmity in the impugned order passed by the
first respondent under Section 21(2) of the TM Act ordering for
abandonment of the appellant's trade mark application.
DISCUSSION:
10. Insofar as the case on hand is concerned, a purposive
interpretation will have to be given to Rule 18(2) of the TM Rules in
order to meet the ends of justice. With regard to issuance of notice to the
https://www.mhc.tn.gov.in/judis
appellant in respect of a petition filed for opposition of a trademark
registration, Rule 42(5) of the TM Rules makes it clear that notice of
opposition shall be ordinarily served by the Registrar to the applicant
within three months of the receipt of the same by the appropriate office
(first respondent). Rule 42 of the TM Rules reads as follows:-
42. Notice of Opposition.
(1)A notice of opposition to the registration
of a trademark under sub-section (1) of section
21, with such particulars as specified in Rule 43,
shall be filed in form TM-O within four months
from the date of publication of the trademark
journal in which the application for registration
of the trademark was advertised or re advertised.
(2)Where a notice of opposition has been
filed in respect of a single application for the
registration of a trademark for different classes
of goods and services, it shall bear the fee in
respect of each class in relation to which the
opposition is filed.
(3)Where an opposition is filed only for a
particular class or classes in respect of a single
application made under sub-section (2) of section
https://www.mhc.tn.gov.in/judis
18, the application for remaining class or classes
shall not proceed to registration until a request in
Form TM-M for division of the application
together with the divisional fee is made by the
applicant.
(4)Where in respect of a single application
for the registration of a trademark no notice of
opposition is filed in a class or classes, the
application in respect of such class or classes
shall, subject to section 19 and sub-section (1) of
section 23, proceed to registration after the
division of the application in the class or classes
in respect of which an opposition is pending.
(5)A copy of notice of opposition shall be
ordinarily served by the Registrar to the
applicants within three months of the receipt of
the same by the appropriate office:
Provided that where the applicant has
already filed the counter statement on the basis of
the copy of notice of opposition made available in
the electronic records on the official website, the
requirement of service of copy of the notice of
opposition to the applicant shall be dispensed
with.
11.Therefore, only from the date of receipt of notice by the
https://www.mhc.tn.gov.in/judis
appellant as per Rule 42(5) of the TM Rules, the time for filing counter
statement by the appellant commences. However, Rule 18(2) of the TM
Rules, which pertains to service of documents by the Registrar, which is
relied upon by the first respondent under the impugned order, stipulates
that any communication or document sent by the first respondent 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.
12.In the case on hand, the appellant has categorically pleaded that
he has not received the notice in the opposition petition filed by the
second respondent from the first respondent. He has also contended that
in respect of three other registrations applied for, he had received notice
and he had also filed counter-statements. It is also contended that only for
the opposition petition filed by the second respondent herein in respect of
another application submitted by the appellant seeking for registration, he
was unable to file a counter-statement to the opposition petition, since he
had not received notice of opposition from the first respondent.
13. Section 21(2) of the TM Act stipulates that the first respondent
https://www.mhc.tn.gov.in/judis
(Registrar) shall serve a copy of the notice on the applicant for
registration and within two months from the receipt of the same by the
applicant of such a 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 upon for his application, and if he does not do
so, he shall be deemed to have abandoned his application.
14. In the case on hand, the appellant contends that he had not
received the notice from the first respondent. However, the first
respondent, excepting for producing despatch details and opposition
details, which are self-serving documents, has not placed on record before
this Court any other proper acknowledgment from the appellant for
having received the notice in the opposition petition filed by the second
respondent.
15. The appellant, having filed counter-statement in other three
opposition petitions pertaining to three different applications for
trademark registration, should not be left high and dry, that too, when he
categorically contends before this Court that he has never received notice
from the first respondent as per Rule 18(2) of the TM Rules.
https://www.mhc.tn.gov.in/judis
16. A purposive interpretation was already given by this Court in
Ramya S.Moorthy's case (cited supra). However, though the said
decision cannot be cited as a precedent but, however, considering the
facts and circumstances of the present case, this Court has independently
taken a view that in the ends of justice a purposive interpretation will
have to be given to Rule 18(2) of the TM Rules. In the interest of justice,
this Court will have to necessarily quash the impugned order, as the same
has been passed by total non-application of mind to the fact that the
appellant, in respect of three other opposition petitions, had filed counter-
statements, but, only is respect of the case on hand, he did not file
counter-statement. It is also possible that the first respondent may have
sent notice and the recipient may not have opened his inbox and would
not have noticed the email sent by the first respondent.
17.For the foregoing reasons, this Court after giving due
consideration to the facts of the case on hand regarding service of notice
has come to the conclusion that the appellant is deemed to have not
received the notice from the first respondent.
18.In the result, the impugned order dated 05.02.2024 passed by
https://www.mhc.tn.gov.in/judis
the first respondent is quashed and the appellant is permitted to file a
counter-statement to the opposition petition filed by the second
respondent within a period of three weeks from the date of receipt of a
copy of this order. On receipt of the same, the first respondent shall
decide the opposition petition on merits and in accordance with law, after
affording a fair hearing to the appellant as well as the second respondent.
In the result, this appeal is allowed. No Costs.
07.11.2024
rkm
Index:yes/no
Neutral citation: yes/no
To
The Registrar of Trade Marks,
Trade Mark Registry,
Intellectual Property Rights Building,
GST Road, Guindy,
Chennai – 32.
https://www.mhc.tn.gov.in/judis
ABDUL QUDDHOSE,J.
rkm
07.11.2024
https://www.mhc.tn.gov.in/judis
