The Delhi High Court has held that the Registrar of Trade Marks is duty-bound to send to an applicant the copy of an order passed under Section 18(5) of the Trade Marks Act, 1999 containing the ground for refusal/conditional acceptance along with the materials used by him to arrive at the decision.
While doing so, the Court has held that Rule 36 of the Trade Marks Rules, 2017 is arbitrary, unreasonable and inconsistent with the Act insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance.
The judgment was passed by a Single Judge Bench of Justice JR Midha in a petition preferred by the Intellectual Property Attorneys Association.
The Association had moved the Court after being aggrieved by non-speaking orders passed by the Registrar of Trade Marks while refusing applications for registration of trademarks.
It was contended that such refusal was in violation of Section 18(5) of the Trade Marks Act. It was argued that the provision mandated the Registrar to record in writing the ground for refusal or conditional acceptance and the material used by him to arrive at his decision.
In contrast, Rule 36 of the Trade Marks Rules, 2017 provides that the Registrar shall communicate the decision in writing to the applicant and if the applicant intended to file an appeal, he might apply within 30 days in Form TM-M for the supply of grounds behind the decision.
The Association, therefore, contended that insofar as the supply of reasons was concerned, Rule 36 was in violation of Section 18(5).
After hearing the parties, the Court agreed with the Association and held that the Registrar was duty-bound to send the copy of the order passed under Section 18(5) containing the ground for refusal/conditional acceptance as well as the materials used by him to arrive at his decision to the applicant.
Holding that Rule 36 was arbitrary, unreasonable and inconsistent with the Act, the Court ordered,
"The writ petition is allowed and the Registrar of the 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."
The Association was represented by Senior Advocates CM Lall with Advocates Nancy Roy and Rahul Vidhani.
Central Government Standing Counsel Ravi Prakash appeared for the Centre, along with Advocate Farman Ali.
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