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

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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