Bombay High Court
The Institute Of Cost Accountants Of ... vs The Registrar Of Trade Marks on 1 March, 2013
Equivalent citations: AIR 2013 BOMBAY 107, 2013 (3) ABR 284, 203 (114) CORLA 14, (2013) 2 ALLMR 853 (BOM), (2013) 114 CORLA 14, 2013 (2) ALL MR 853, (2013) 3 MAH LJ 418, (2013) 2 BOM CR 533
Author: S.J. Vazifdar
Bench: S.J. Vazifdar, Mridula Bhatkar
wp2088-12
vai
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
WRIT PETITION NO.2088 OF 2012
The Institute of Cost Accountants of India,
A body corporate established under
section 3 of The Cost and Works Accounts
Act, 1959 having its Head Office at 12,
Dudder Street, Kolkata - 700 016 ...Petitioner
..Versus..
1) The Registrar of Trade Marks,
Mumbai, Government of India,
Trade Marks Registry, Trade Marks
Division, Intellectual Property,
Beside Antop Hill Post Office,
S.M. Road, Antop Hill, Mumbai - 400037.
2) The Registrar of Trade Marks,
Intellectual Property Bhavan,
CP-II, Sector-V, Salt Lake City,
Kolkata - 700 091. ...Respondents
Mr.Abhijit Chatterjee with Mr.N.B. Boral and Mr.Rakesh Pandey i/b
Ashwin Ankhad & Associates for the Petitioner.
Mr.D.A. Athavale with Mr.A.R. Varma for the Union of India -
Respondents.
CORAM : S.J. VAZIFDAR &
MRS.MRIDULA BHATKAR, JJ.
DATE : 1ST MARCH, 2013.
ORAL JUDGMENT (PER S.J. VAZIFDAR,J). :-
1. Rule. Rule is made returnable forthwith and the writ 1/5 ::: Downloaded on - 09/06/2013 19:41:34 ::: wp2088-12 petition is heard finally.
2. The petitioner is a body corporate constituted under the provisions of The Institute of Cost and Works Accountants Act, 1959.
Respondent Nos.1 and 2 are the Registrars of Trade Marks at Mumbai & Kolkata respectively.
3. The petitioner seeks a writ of mandamus directing respondent No.1 to fix a date of hearing in respect of its application for registration of a trade mark "CMA" in class 41.
4. On 01.10.2010, the petitioner applied for registration of the said mark for goods and services. The petitioner by a letter dated 30.03.2011, inter-alia stated that it had not received any response from the respondents in respect of its application for registration despite several enquiries having been made from time to time and that as a result thereof, it was unable to provide training and award degrees / certificates on the "newest branches of management and accountancy".
5. On 13.03.2012, the petitioner noticed on the respondents' website a letter / examination report dated 19.09.2011 from respondent No.1 to its advocate in Kolkata stating that its application had been examined under the Trade Marks Act, 1999 and Trade Mark Rules, 2002 and that the mark was open to objection for the reasons mentioned therein. For the purpose of this writ petition, the 2/5 ::: Downloaded on - 09/06/2013 19:41:34 ::: wp2088-12 objections are not relevant. The petitioner was requested to submit its response within one month from the date of receipt of the said letter / examination report or to apply for a hearing. It was further stated that if no reply was received or a request for a hearing was not applied for, the application would be treated as having been abandoned for lack of prosecution under section 132 of the said Act.
6. Admittedly, the letter / examination report dated 19.09.2011 was not forwarded to the petitioner or its advocates. It was merely placed on the respondents' website.
7. The petitioner's advocate by a letter dated 28.03.2012 stated the above facts. It was inadvertently stated that he had logged into the respondents' website on 28.03.2012, whereas he had in fact done so on 13.03.2012. The same however is of no consequence.
The petitioner's advocate requested the respondents to treat the date of downloading from the website as the date of the petitioner's knowledge of the order contained in the said letter / examination report dated 19.09.2011 ; exercised the option for furnishing the objections and applied for a hearing.
8. Rule 38 of the Trade Marks Rules, 2002 reads as under :-
"38. Expedited examination, objection to acceptance, hearing :-
.....................................
(4) If on consideration of an application for 3/5 ::: Downloaded on - 09/06/2013 19:41:34 ::: wp2088-12 registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think fit to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the applicant.
(5) If within one month from the date of communication referred to in sub-rule(4), the applicants fails to comply with any such proposal or fails to submit his comments regarding any objection or proposal to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned."
9. The respondent was bound to communicate any objection or proposal in writing to the applicant. The respondent admittedly did not do so. Placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The respondents have not indicated anything that obliged the petitioner to inspect the website on a daily basis. Nor did they indicate any rule or practice by which the petitioner was bound legally to take notice of anything that is posted on the respondents' website. Rule 38(4) by itself does not require an applicant for registration to inspect the respondents' website. The petitioner therefore cannot be imputed with the knowledge of the said letter dated 19.09.2011. The mere posting of the letter on the website does not constitute communication of the 4/5 ::: Downloaded on - 09/06/2013 19:41:34 ::: wp2088-12 objection or proposal in writing as required by rule 38(4).
10. The letter dated 19.09.2011, at the highest, can be said to have been communicated to the petitioner only on the date on which the petitioner noticed it on the website viz. 13.03.2012. Within one month thereof, the petitioner's advocate by the said letter dated 30.03.2012 applied for a hearing, which he has been denied thus far.
The petitioner's application for registration cannot therefore, be deemed to have been abandoned.
11. In the circumstances, the writ petition is disposed of by the following order :-
i). It is declared that the petitioner's application for registration of its mark under class 41 has not been abandoned.
ii). Rule is made absolute in terms of prayer (a).
No order as to costs.
(MRS.MRIDULA BHATKAR, J.) (S.J. VAZIFDAR, J.) 5/5 ::: Downloaded on - 09/06/2013 19:41:34 :::