VERDICTUM.

IN

W.P.(IPD).Nos.3 & 4 of 2023

IN THE HIGH COURT OF JUDICATURE AT MADRAS

DATED: 10.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

W.P.(IPD).No.3 of 2023
(WMP.(IPD) Nos.1 & 2 of 2023
&
W.P.(IPD).No.4 of 2023
(WMP.(IPD) Nos.3 & 4 of 2023

1.Ramya S.Moorthy,
2B, Krishna Sarathy Apartments,
194-196. Royapettah High Road,
Mylapore,
Chennai-600 004. ... Petitioner in both WPs

Vs

1.Registrar of Trade Marks

Trade Marks Registry,
Intellectual Property Building,
GST Road, Guindy, Chennai-600 032.
2.Nirma Ltd.,
Nirma House, Ashram Road,
Ahmedabad,
Gujarat-380 009. ... Respondents in both WPs

Prayer in WP(ID)No.3 of 2023: Writ Petitions (IPD) has been filed

under Article 226 of the Constitution of India to grant a writ of
certiorarified mandamus calling for the records contained in order

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W.P.(IPD).Nos.3 & 4 of 2023

dated 28.04.2023 passed by the 1st respondent in respect of

Application No. 5314494 filed by the petitioner under the Trade
Marks Act, 1999 and to quash the same as illegal, unjust , arbitrary
and contrary to principles of natural justice and to consequently
direct the 1st respondent to grant the petitioner an opportunity to file
a counter statement to Notice of Opposition bearing Nos. 1202542.

Prayer in WP(ID)No.3 of 2023: Writ Petitions (IPD) has been filed

under Article 226 of the Constitution of India to grant a writ of
certiorarified mandamus calling for the records contained in order
dated 28.04.2023 passed by the 1st respondent in respect of
Application No. 5314494 filed by the petitioner under the Trade
Marks Act, 1999 and to quash the same as illegal, unjust , arbitrary
and contrary to principles of natural justice and to consequently
direct the 1st respondent to grant the petitioner an opportunity to file
a counter statement to Notice of Opposition bearing Nos. 1202543.
For Petitioner : Mr.Arun Karthik Mohan &
Mr.Suhrith Parthasarathy

For Respondents : Mr.S.Janarthanam, SPC for R1

**********
COMMON ORDER

In both writ petitions, the petitioner assails two orders, both

dated 28.04.2023, by which the application for registration of the

relevant marks was deemed to be abandoned. The petitioner filed the

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W.P.(IPD).Nos.3 & 4 of 2023

two trade mark applications on 04.02.2022 under different classes.

On 08.03.2022, the petitioner was notified of the examination report

in respect of the respective application. The applications were

accepted for advertisement and such advertisement was published

on 12.09.2022. Thereafter, it appears that an opposition was filed by

the second respondent herein on 12.01.2023. While the Trade Marks

Registry asserts that the notice of opposition was electronically

transmitted to the petitioner on 19.01.2023, the petitioner denies

receipt thereof. On account of non-receipt of the notice of opposition,

the petitioner asserts that the counter statement to the notices of

opposition could not be filed within the two month period specified

in Section 21(2) of the Trade Marks Act, 1999 (The Trade Marks Act).

In these circumstances, the Trade Mark Registry issued the

impugned orders dated 28.04.2023 holding that the petitioner is

deemed to have abandoned the two applications. Hence, these writ

petitions.

2. Learned counsel for the petitioner places reliance on the text

of Section 21(2) and contends that the clock starts ticking only upon

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W.P.(IPD).Nos.3 & 4 of 2023

receipt by the applicant of a copy of the notice of opposition. Since

the notice of opposition was not received by the applicant/petitioner,

it is further contended that the conclusion that the applicant

abandoned the applications is untenable. Although the Trade Mark

Registry relies upon a document indicating transmission of the

opposition notice on 19.01.2023 to the agent of the applicant, learned

counsel contends that this document does not evidence receipt of the

notice of opposition by the applicant.

3. Mr.S.Janarthanam, learned Special Panel Counsel, relies on

Rules 17 and 18 of the Trade Marks Rules, 2017, and contends that

notice may be served through e-mail to the address provided by the

applicant, and that service of notice by e-mail is deemed to be proper

service upon dispatching the e-mail. By drawing reference to the

document evidencing dispatch of the opposition notice to the

applicant / petitioner on 19.01.2023, he points out that the status

specified therein is “success”.

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W.P.(IPD).Nos.3 & 4 of 2023

4. The case turns on Section 21 (2), which is set out below:

“(2) 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
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.”

5. Rules 17 and 18 deal with the address for service and service

of notice, respectively, and Rule 18(2), which is of particular

relevance, is set out below:

“(2) 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 e-mail.”

6. Rule 18(2) incorporates a legal fiction with regard to service

of notice by post and e-mail. As regards service of notice by e-mail, it

provides that notice would be deemed to be served “at the time of

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W.P.(IPD).Nos.3 & 4 of 2023

sending the e-mail”. If construed literally, this would mean no more

than proof of transmission of the e-mail. Especially in the context of

the non-incorporation of the provision for deemed receipt in the

statute, if so construed, Rule 18(2) would not be in consonance with

Section 21(2) which provides that the time limit for filing the counter

statement would run from the date of receipt by the applicant of the

notice of opposition. In this regard, it should also be borne in mind

that the substantive right of an applicant seeking registration of trade

marks is at stake. Therefore, I conclude that the prescribed time limit

would only run from the date of receipt of the e-mail, and the

document relied on by the Registrar of Trade Marks does not qualify

as evidence of receipt by the petitioner. The petitioner, however ,

acknowledges receipt of the notices of opposition after the impugned

orders were passed.

7. For reasons set out below, WP(IPD) Nos.3 and 4 of 2023 are

allowed by quashing the orders impugned in these writ petitions. As

a corollary, the two applications are restored to the file of the

Registrar of Trade Marks and the matter is remanded for

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W.P.(IPD).Nos.3 & 4 of 2023

reconsideration by the Registrar of Trade Marks. The petitioner shall

file the counter statement in respect of the respective notices of

opposition within a maximum period of one month from the date of

receipt of a copy of this order. The Registrar of Trade Marks is

directed to re-consider and decide the matter on merits after

providing a reasonable opportunity to both the petitioner and the

second respondent herein. Consequently, connected miscellaneous

petitions are closed. No costs.

10.08.2023
Index : Yes / No
Internet : Yes / No
Neutral Citation:Yes /No

SENTHILKUMAR RAMAMOORTHY,J

kal

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W.P.(IPD).Nos.3 & 4 of 2023

W.P.(IPD).No.3 of 2023
(WMP.(IPD) Nos. 1 & 2 of 2023
&
W.P.(IPD).No. 4 of 2023
(WMP.(IPD) Nos. 3 & 4 of 2023

10.08.2023

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