Trademark Opposition- Service Of Notice Complete From Date Of Receipt And Not Dispatch Of E-Mail!

SR
S.S. Rana & Co. Advocates

Contributor

S.S. Rana & Co. is a Full-Service Law Firm with an emphasis on IPR, having its corporate office in New Delhi and branch offices in Mumbai, Bangalore, Chennai, Chandigarh, and Kolkata. The Firm is dedicated to its vision of proactively assisting its Fortune 500 clients worldwide as well as grassroot innovators, with highest quality legal services.
In a recent ruling by the Hon'ble Madras High Court in the case of Ramya S. Moorthy v. Registrar of Trade Marks (2023 SCC OnLine Mad 5305), the Court has dealt with a significant issue...
India Intellectual Property
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In a recent ruling by the Hon'ble Madras High Court in the case of Ramya S. Moorthy v. Registrar of Trade Marks (2023 SCC OnLine Mad 5305), the Court has dealt with a significant issue in respect of the service of notices via email in trademark opposition matters. It is often seen that due to various intractable factors, the delivery of the email from the internal server does not gaurantee successful delivery to the receiver.

Issue

In the said case, two writ petitions were filed seeking quashing of the orders passed by the Learned Registrar with respect to two applications which were declared to be deemed to be abandoned under Section 21(2) of the Trade Marks Act, 1999.

Contentions

A. The counsel for the Plaintiff Contentions before the Hon'ble High Court

The counsel argued that Section 21(2) of the Trade Marks Act, specifically states the following "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 trademark 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". The counsel argued that the section specifies that the period to respond to the opposition begins "from the receipt by the Applicant". Therefore, since the Plaintiff did not receive the opposition from the Registry, the deadline to file the counter statement did not begin, and the orders were incorrectly passed.

B. The counsel for the Respondent's Contentions before the Hon'ble High Court

The counsel based their arguments mainly on Rule 18 (2) of the Trade Marks Rules, 2017 which state the following "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 email" The counsel argued that any communication/document sent by the Registrar shall be deeemd to be served "at the time of sending the email". In view thereof, they references upon a document as proof to show successful transmission of the trademark opposition notice to the Applicant, and argued that the same shall be considered to be effective service. Therefore, the oppositions were served, and thereafter, the orders were correctly passed as the Plaintiff failed to file the counter statements.

Decision and Conclusion

The Hon'ble High Court stated that Rule 18(2) creates a legal fiction deeming the service of the notice to be effective upon dispatch by the Registry, which is contradictory to Section 21(2) which states that the period beings from the receipt of the notice by the Applicant. The Court emphasized that the rights of the proprietor shall be prioritized and therefore, importance shall be given to Section 21(2) of the Act. The Hon'ble Court ruled that the time limit to file the counter statement must start only from the date of the proprietor's actual receipt of the email. In view thereof, the writ petitions were allowed, and the orders by the Learned Registrar were quashed. The decision is significant and much needed in protecting the rights of the proprietors in cases where there is an inherent risks of delivery failure via emails.

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Trademark Opposition- Service Of Notice Complete From Date Of Receipt And Not Dispatch Of E-Mail!

India Intellectual Property

Contributor

S.S. Rana & Co. is a Full-Service Law Firm with an emphasis on IPR, having its corporate office in New Delhi and branch offices in Mumbai, Bangalore, Chennai, Chandigarh, and Kolkata. The Firm is dedicated to its vision of proactively assisting its Fortune 500 clients worldwide as well as grassroot innovators, with highest quality legal services.
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