Delhi High Court
Bell Sports, Inc. vs The Registrar Of Trademarks on 19 October, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
Neutral Citation Number: 2022/DHC/004441
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 19th October, 2022
+ C.A.(COMM.IPD-TM) 150/2022 & I.A. 15362/2022
BELL SPORTS, INC. ..... Appellant
Through: Mr. Surinder Singh, Advocate.
versus
THE REGISTRAR OF TRADEMARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
Central Government Standing Counsel with
Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and
Mr. Alexander Mathai Paikaday, Advocates.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J. (ORAL)
1. Present appeal has been preferred under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the 'Act'), assailing the decision of cancellation of Opposition, communicated to the Appellant vide letter dated 24.05.2022 by the Respondent, received on 10.06.2022 as well as for a direction to the Respondent to accept the official fee of Rs. 3,000/- in Opposition No. 1164769.
2. Brief and necessary facts for adjudication of the present appeal, which are in a narrow compass, are that Appellant filed an Opposition No. 1164769 on 17.05.2022 to the trademark Application No. 4908323 in Class 25 for the trademark GIROMORE published in the Trade Marks Journal No. 2014 on 23.08.2021, based on its prior adoption and use of the trademark GIRO for goods falling in Class 25.
Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 150/2022 Page 1 of 6 Signing Date:26.10.2022 13:00:58Neutral Citation Number: 2022/DHC/004441
3. It is averred that public notice was issued by the learned Controller General of Patents, Designs & Trade Marks, Mumbai ('CGPTDM') on 28.03.2022, in compliance of directions passed by this Court vide judgment dated 21.03.2022 in W.P.(C)-IPD 4/2022, regarding filing of Oppositions to the applications falling in Trademark Journal Nos. 1928 to 2036 upto 30.05.2022. Last date for filing the Oppositions was 30.05.2022 and Appellant filed the Opposition accompanied by a Demand Draft bearing No. 054136 dated 17.05.2022, towards fee of Rs. 3,000/-, in favour of Registrar of Trade Marks, drawn on Standard Chartered Bank, Janak Puri Branch, New Delhi. The application was filed physically, since online filing was not available for Oppositions.
4. It is stated that Registrar of Trade Marks scanned and uploaded the said Opposition on the official website www.ipindia.gov.in and till date, the status of the Application is showing as 'Opposed'. However, on 10.06.2022, Appellant received a communication dated 24.05.2022, from the Respondent, intimating that the Opposition has been cancelled as the Bank Draft was returned unpaid due to 'Poor Image', along with a Return Memo dated 23.05.2022, which reads as follows:-
"... We have cancelled form TM-O to application no. 4908323 vide receipt no. 3253819 also return DD No. 054136 ..." ... "for the reason "Poor Image".
5. On 11.06.2022, Appellant contacted the officials of the concerned Branch of Standard Chartered Bank requesting them to look into the matter. The Bank, after re-checking the status of the Draft confirmed, both orally on 11.06.2022 and in writing on 13.06.2022, that the same was a valid instrument with clear image, as the names, figures, codes etc. Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 150/2022 Page 2 of 6 Signing Date:26.10.2022 13:00:58 Neutral Citation Number: 2022/DHC/004441 were clearly visible and there was no overwriting or cutting on the instrument.
6. Based on this information received from the Bank, Appellant wrote to the Respondent on 11.06.2022, seeking liberty to deposit the same Bank Draft again for clearance or in the alternative to accept payment through any other mode. However, Respondent refused to entertain any request.
7. On 13.06.2022, Appellant through its Attorney again visited the Trade Marks Office and apprised the Registrar of the factual position, including the feedback from the Bank on the validity of the instrument. However, the Registrar issued the impugned order cancelling the Opposition filed by the Appellant.
8. Learned counsel appearing on behalf of the Appellant submits that the impugned order is arbitrary and illegal. The reason assigned for cancelling the Opposition in the Return Memo, i.e., poor image of the Bank Draft is wholly misplaced and without any basis. On a bare perusal of the photocopy and the original of the Draft, it is apparent that all figures, codes, etc. on the Bank Draft are clearly visible and it was fallacious to return the same with an endorsement 'Poor Image'. Additionally, in response to a pointed query to the Drawer Bank, it was confirmed that the Demand Draft was a valid instrument.
9. It is contended that the Opposition was filed by the Appellant on 17.05.2022, well before the last date, i.e., 30.05.2022 along with the prescribed fee, by way of a Bank Draft drawn on a scheduled bank in conformity with Rule 10 of the Trade Marks Rules, 2017. Even assuming, for the sake of argument that there was some issue with the Bank draft, Respondent, having received the Return Memo from the Bank on Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 150/2022 Page 3 of 6 Signing Date:26.10.2022 13:00:58 Neutral Citation Number: 2022/DHC/004441 23.05.2022, was duty bound to immediately inform the Appellant so that requisite steps to rectify could be taken within the deadline. However, the Respondent took more than 17 days to even intimate the Appellant of the non-clearance of the Draft as the letter of intimation was posted only on 09.06.2022, i.e., after the expiry of the last date.
10. It is also argued that Respondent failed to appreciate that as a Registrar of Trade Marks, it is his sole duty and responsibility to maintain the purity of the Register of Trade Marks and therefore, the action of sending intimations belatedly and cancelling Opposition on erroneous grounds, where the Appellant has a good case on merits, is detrimental to the entire system. Appellant has filed an Opposition as the impugned trademark GIROMORE in class 25 is identical to the Appellant's registered trademark GIRO for identical goods and the impugned action of arbitrarily cancelling the Opposition cannot be sustained.
11. Mr. Harish Vaidyanathan Shankar, learned Central Government Standing Counsel, candidly submits that if the Court is satisfied on the pleas raised by the Appellant and that the defect is curable, appropriate order be passed.
12. Having heard the learned counsel for Appellant, this Court finds merit in the contentions of the Appellant. It is an undisputed position that the Opposition was filed by the Appellant within the timelines prescribed by the public notice, issued in compliance of the judgment of this Court, i.e., before 30.05.2022. It is equally undisputed that the Opposition was accompanied with a Demand Draft in the sum of Rs.3,000/-, drawn on a scheduled bank, towards the prescribed fee. There is also merit in the contention that assuming the Respondent noticed some discrepancy in the Draft, he was Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 150/2022 Page 4 of 6 Signing Date:26.10.2022 13:00:58 Neutral Citation Number: 2022/DHC/004441 required to intimate the same to the Appellant well before the timelines expired, to enable the Appellant to take requisite steps for rectification, if any. Record, however, shows that the letter communicating that the Draft had a poor image was dispatched by the Respondent only on 09.06.2022, which was after the expiry of the last date for filing the Opposition.
13. Appellant has placed on record the photocopy of the Demand Draft and has also shown the original during the course of the hearing. A perusal of the instrument, in my view, does not reflect any discrepancy or poor image of any word, figure, code etc. Additionally, the Drawer Bank has, in response to the Appellant's communication clearly endorsed that the Bank Draft was a valid instrument. In view of this position, it would be unjust and unfair to uphold the order cancelling Opposition, once the Appellant had taken all requisite steps within its power and control to file the Opposition within the permissible time limit along with a Demand Draft for the requisite amount. The matter, therefore, deserves to be remanded back to the Registrar for acceptance of the prescribed fee of Rs.3,000/- and considering the Opposition filed.
14. At this stage, learned counsel for the Appellant submits that with the passage of time, the validity of the Demand Draft has since expired and, therefore, the Appellant be permitted to tender a fresh Demand Draft, especially, when the website of the Registrar of Trade Marks continues to show the status as 'opposed' even today.
15. In my view, the prayer of the Appellant is justified. The Appeal is accordingly disposed of, permitting the Appellant to tender a fresh Demand Draft within a period of three weeks from today and Respondent is directed Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 150/2022 Page 5 of 6 Signing Date:26.10.2022 13:00:58 Neutral Citation Number: 2022/DHC/004441 to accept the same towards Opposition no. 1164769, filed against trademark application no. 4908323 in class 25.
16. Needless to state that the Respondent is free to examine the validity of the Demand Draft, as and when the same is tendered, in accordance with law. It is made clear that this Court has not expressed any opinion on the merits of the Opposition filed by the Appellant.
17. The Appeal is allowed and disposed of, alongwith the pending application, setting aside the impugned order dated 24.05.2022, passed by the Respondent.
JYOTI SINGH, J OCTOBER 19, 2022/sn/rk/shivam Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 150/2022 Page 6 of 6 Signing Date:26.10.2022 13:00:58