Purushottam Singhal Proprietor Ms. ... vs Registrar Of Trade Marks & Anr. on 20 March, 2023

[Cites 6, Cited by 0]

Delhi High Court

Purushottam Singhal Proprietor Ms. ... vs Registrar Of Trade Marks & Anr. on 20 March, 2023

1. This appeal under Section 91 of the Trade Marks Act, 1999 assails order dated 14th June 2019, passed on behalf of the Registrar of Trade Marks, whereby Application No. 779092, filed by the appellant seeking registration of the trade mark PRIME CAB has been rejected as having been deemed to have been abandoned by the appellant, invoking, for the purpose, Section 21(2) 1 of the Trade Marks Act.

21. Opposition to registration. -

(1) Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration. (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.

Signature Not Verified C.A.(COMM.IPD-TM) 13/2021 Page 1 of 8 Digitally Signed By:SUNIL SINGH NEGI Signing Date:21.03.2023 12:50:28

Neutral Citation Number : 2023:DHC:1993

2. The application seeking registration of the mark PRIME CAB in Class 9 of the NICE classification was submitted by the appellant on 20th November 1997 in the office of the Registrar. First Examination Report (FER) was issued on or on behalf of the Registrar on 29th June 2001, to which the appellant filed his reply on 5th September 2001.

3. Various other proceedings took place with respect to the said application, including proceedings which travelled to this Court, which are not of particular relevance to the dispute at hand.

4. For the purpose of the present dispute, suffice it to state that an opposition was filed by Respondent 2, to the application of the appellant, on 14th July 2006.

5. The appellant's case is that neither was the appellant, nor was any of its authorised agents, ever served with notice of the opposition filed by Respondent 2, as required by Section 21(2) of the Trade Marks Act.

6. Ms. Shreya Mehra, learned Counsel who appears for Respondent 1 (the Registry of Trade Marks) submits that notice of the opposition filed by Respondent 2 was sent to M/s Manmohan Singh and Associates, the agent of the appellant, by speed post on 18th March 2019. Mr. Akash Swami, learned Counsel for the appellant submits, on instructions, that his client never received any such speed post.

7. Apart from making a statement to the effect that the notice was sent by speed post, Ms. Mehra is unable to provide any document Signature Not Verified C.A.(COMM.IPD-TM) 13/2021 Page 2 of 8 Digitally Signed By:SUNIL SINGH NEGI Signing Date:21.03.2023 12:50:28 Neutral Citation Number : 2023:DHC:1993 containing any postal receipt of the notice of opposition having been sent by speed post or of the speed post having been delivered to any addressee mentioned therein. All that this Court has, therefore, is a bald assertion, contained in a note handed over by Ms. Mehra to the effect that the notice of opposition was sent to the agent of the appellant by speed post on 18th March 2019. Ms Mehra offers to say so on affidavit; but, in the absence of any proof of the document having in fact been despatched to the appellant by speed post, I cannot, quite obviously, accept the said statement, even if stated on affidavit. Ms Mehra is candid in admitting that her client has no documentary material evidencing proof of despatch, to the appellant, of the notice of hearing of the opposition, at any point of time.

8. Mr. Ghorai, who appears on behalf of the Respondent 2, submits that, in fact, there was an earlier service of the notice of opposition on the appellant vide letter dated 22nd October 2008. He has filed a reply to the present petition, placing a copy of the said letter on record.

9. However, a perusal of the letter dated 22nd October 2008 reveals that, while it is addressed to the appellant as well as its agent, the copy has been forwarded only to M/s R K Diwan and Co., as is manifest from the tick mark alongside the name of M/s R K Diwan and Co. There is nothing to indicate that the said notice dated 22nd October 2008 was ever served on the appellant or on any of its authorised agents, or even despatched to any of them.

10. At this juncture, Mr. Ghorai again intercedes to draw my attention Signature Not Verified C.A.(COMM.IPD-TM) 13/2021 Page 3 of 8 Digitally Signed By:SUNIL SINGH NEGI Signing Date:21.03.2023 12:50:28 Neutral Citation Number : 2023:DHC:1993 to a letter dated 30th March 2013, addressed by M/s R K Diwan and Company to the Registrar of Trade Marks, para 1 of which reads thus:

"We submit that the Notice of Opposition filed by us on July 14, 2006, was served on the Applicants' Attorneys under the cover of your letter No. TOP/3224 dated 22nd October 2008."

11. I fail to understand as to how the authorised agent of Respondent 2 could arrogate to itself the authority to certify service of notice of opposition on the appellant. To reiterate, there is no document to show that the notice dated 22nd October 2008 was ever served on the appellant or on its authorised agent.

12. Indeed, if, in fact, notice of the opposition had been served on the appellant or its authorised agent on 22nd October 2008, there is no reasonable expression as to why notice of the opposition was again sent to the appellant on 18th March 2019. The fact that the Registry deemed it appropriate to issue notice of the opposition to the appellant on 18th March 2019 also indicates, prima facie, that there was no prior valid service of the notice of opposition on the appellant. I have, in fact, queried of Ms. Mehra, as to whether there was any prior service of notice on the opposition filed by Respondent 2 on the appellant prior to 18th March 2019. She frankly submits that she is unaware of any such service.

13. The right to seek registration of a trademark is a valid and valuable right which vests in an applicant by the Trade Marks Act. Though there is no law which mandates registration of a trade mark, a mark, once registered, becomes entitled to valuable privileges under the Act, Signature Not Verified C.A.(COMM.IPD-TM) 13/2021 Page 4 of 8 Digitally Signed By:SUNIL SINGH NEGI Signing Date:21.03.2023 12:50:28 Neutral Citation Number : 2023:DHC:1993 including, most importantly, a right to combat infringement, conferred by Section 29.

14. Once an applicant applies for registration of a trademark, there is no reason why the applicant should abandon the application. It is well- settled, in law, that abandonment is necessarily a voluntary act, and cannot be presumed, save and except in the manner in which the law entitles such a presumption to be drawn. Insofar as the Trade Marks Act is concerned, no doubt, Section 21(2) deems an applicant, who has applied for registration of a trade mark, to have abandoned the application, if he fails to send, to the Registrar, a counterstatement in response to the notice of opposition, by any opponent opposing the application, within two months from the date of receipt, by him, of such notice of opposition. In view of the severe consequence of the inaction envisaged by Section 21(2) of the Trade Marks Act, the provision has to be strictly construed. There must, therefore, be positive evidence of (i) service of notice on the applicant, seeking registration of a trade mark, of the copy of the notice of opposition and (ii) failure, by the applicant, to send a counterstatement, in response to the opposition, within two months therefrom.

15. Rule 14 of the Trade Marks Rules, 2017 deals with service of documents, and sub-rules (1) to (3) thereof read thus:

"14. Service of documents. -

(1) All applications, notices, statements, papers having representations affixed thereto, or other documents authorised or required by the Act or the rules made thereunder, served, left or sent, at or to the Trade Marks Registry or with or to the Registrar or any other person may be delivered by hand or sent Signature Not Verified C.A.(COMM.IPD-TM) 13/2021 Page 5 of 8 Digitally Signed By:SUNIL SINGH NEGI Signing Date:21.03.2023 12:50:28 Neutral Citation Number : 2023:DHC:1993 through the post by a prepaid letter or may be submitted electronically in the manner as laid down by the Registry.

(2) An application or any document so sent shall be deemed to have been made, served, left or sent at the time when the letter containing the same would be delivered in the ordinary course of post.

(3) In proving such sending, it shall be sufficient to prove that the letter was properly addressed and put into the post."

16. Shorn of superfluities, Rule 14(1) envisages delivery, of all applications, notices, statements, papers or other documents, "by hand or sent through the post by a pre-paid letter" or electronically in the manner laid down by the Registrar.

17. In the present case, though the appellant was situated in Delhi, there is no proof of any effort having been made to serve the notice of opposition dated 14th July 2006, filed by Respondent 2 on the appellant by hand. Nor does Ms. Mehra so assert.

18. Nor is it Ms. Mehra's case that there was any electronic service of the notice of opposition on the appellant.

19. Service through post, under Rule 14(1), has to be by a pre-paid letter. I have already noted that, save and except for an averment contained in the note that Ms. Mehra has handed over across the Bar today, there is no proof of any postal service of the notice of the opposition dated 14th July 2006 filed by Respondent 2 having been effected on the appellant.

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Neutral Citation Number : 2023:DHC:1993

20. Mr. Ghorai also places reliance on Rule 17(3) 2 of the Trade Marks Rules. I am completely baffled as to how the said rule can be at of any application whatsoever in the present case. On its plain reading, Rule 17(3) applies only where no address for service in India is given as required by Section 17(1). The address for service of the appellant, as given in the plaintiff's application, was not only in India but was in Delhi. There was, therefore, no legitimate reason as to why, in fact, notice of the opposition was not served on the appellant by hand, which was the first method of service envisaged by Rule 14(1) of the Trade Marks Rules.

21. In the present case, there being no proof of any service of the notice of opposition of dated 14th July 2006 of Respondent 2 having been effected on the appellant in the manner envisaged by the Trade Marks Rules, the invocation, by the impugned order of Section 21(2) of the Trade Marks Act must be held to be misguided.

22. I am informed that the notice of opposition dated 14th July 2006 is available on the website of the Registrar of Trade Marks. Mr. Swami, learned Counsel for the appellant undertakes on behalf of his client to file 2

17. Address for service. -

(1) Every applicant or opponent or any person concerned in any proceeding under the Act or rules shall furnish to the Registrar an address for service in India comprising of a postal address in India and a valid e-mail address and such address shall be treated as the address for service of such applicant or opponent or person:

Provided that a trade mark agent shall also be required to furnish a mobile number registered in India.

(2) Any written communication addressed to a person as aforesaid at an address for service in India given by him shall be deemed to be properly addressed.

(3) Unless an address for service in India as required in sub-rule (1) is given, the Registrar shall be under no obligation to send any notice that may be required by the Act or the rules and no subsequent order or decision in the proceedings shall be called in question on the ground of any lack or non-service of notice.

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Neutral Citation Number : 2023:DHC:1993 his counterstatement to the notice of opposition within two weeks. It is made clear that the appellant should do so within the said time failing which the right to file counterstatement would stand closed.

23. The Registrar may thereafter proceed with the application in accordance with law.

24. This appeal stands allowed accordingly with no orders as to costs.

C. HARI SHANKAR, J MARCH 20, 2023 ar Signature Not Verified C.A.(COMM.IPD-TM) 13/2021 Page 8 of 8 Digitally Signed By:SUNIL SINGH NEGI Signing Date:21.03.2023 12:50:28

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Delhi High Court