The High Court quashed an order deeming a trademark application abandoned due to a format change in the counter-statement form. The petitioner was directed to have the application considered on merits with reasonable notice to the opponent.
Asked to quash the impugned order and restore the trademark application to the Registry for consideration on merits.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
W.P.No.27430 of 2018
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 01.09.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
W.P.No.27430 of 2018 WMP. Nos.31933 & 31934 of 2018
N.C.Nanu,
Proprietor, M/s.Neeraja's Payyoli Mixture, Mini Industrial Estate,
Koyyode P.O.,
Kannur District, Kerala-670 621.
... Petitioner
Vs
GST Road, Guindy, Chennai.
Prayer : Writ Petition has been filed under Article 226 of the Constitution of India to grant a writ of certiorarified mandamus calling for the records in Order bearing No.TOP/2723,
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2724/16/07/2018 dated 11.07.2018 on the file of the second respondent herein and quash the same and consequently direct the first respondent herein to receive the petitioner's counter statement and restore the petitioner's trade mark Application No.3053314 on his file and consider the same in accordance with the Trade Marks Act, 1999.
For Petitioner : Mr.A.Umapathy
For Respondents : Mr.P.r.Ramesh Babu, Senior Panel Counsel for R1 & R2 No appearance for R3 **********
ORDER
The petitioner is engaged in the business of manufacturing and selling a bakery product under the mark “PAYYOLI MIXTURE”. The petitioner applied for registration of the aforesaid mark in Class 30 under Application No.3053314 on 11.09.2015. The application was accepted and directed to be advertised on 20.06.2016. The third respondent filed Opposition No.859085 on 28.07.2016. Upon receipt of such notice of opposition, by communication dated 12.04.2017, the Registrar of Trade Marks issued a notice to the agent of the petitioner calling upon the petitioner to file its counter statement in Form TM-6,
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which was the prescribed form under the Trade Marks Rules, 2002 (the 2002 Rules). In compliance with such direction, the petitioner filed the counter statement, in Form TM-6, on 02.09.2017. On receipt thereof, by communication dated 03.10.2017, the Registrar of Trade Marks returned the counter statement both on the ground that a cheque would not be accepted and on the ground that the format had changed in view of the entry into force of the Trade Marks Rules, 2017. In those circumstances, the petitioner filed the counter statement in Form TM-O, which is the prescribed form under the Trade Marks Rules, 2017 (the 2017 Rules), on 22.07.2017. By impugned order dated 11.07.2018, the application of the petitioner for registration of its trademark was deemed to be abandoned. Hence, this writ petition.
respondent failed to enter appearance. Therefore, the matter is proceeded with in their absence.
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was returned on 03.10.2017 both on the ground that a cheque would not be accepted and on the ground that the format had changed under the 2017 Rules. Within two months from the date of receipt of such communication, on 22.10.2017, the petitioner filed the counter statement in the prescribed format under the 2017 Rules. Hence, learned counsel submitted that the impugned order, which is unreasoned, is liable to be quashed.
that Section 21(2) of the Trade Marks Act incorporates a legal fiction by which the application shall be deemed to be abandoned if the counter statement is not filed within two months from the receipt of the notice of opposition. Therefore, he submits that the impugned order does not contain any infirmity.
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“(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.”
of two months runs from the date of receipt of the notice of opposition by the applicant. The documents on record indicate conclusively that the notice dated 12.04.2017 was dispatched to the petitioner by speed post on 14.07.2017. In fact, the impugned order records that the counter statement ought to have been filed on or before 21.09.2017. The petitioner has placed a copy of the counter statement on record. Such counter statement is dated 01.09.2017 and
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has been filed in the Trade Marks Registry on 02.09.2017. Another aspect to be taken note of is that the notice dated 12.04.2017 called upon the petitioner to file the counter statement in Form TM-6. In compliance with this direction, the petitioner filed the counter statement in Form TM-6 on 02.09.2017. In these circumstances, it is clear that the petitioner has duly complied with the obligation imposed under Section 21(2) of the Trade Marks Act. Especially in view of the incorporation of a legal fiction therein, which has the effect of defeating a substantive right of the petitioner, the petitioner's application should not have been treated as abandoned merely because the format in which the counter statement should be filed was revised under the 2017 Rules.
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Consequently, the impugned order dated 11.07.2018 is quashed. As a corollary, the respondents are directed to consider Application No.3053314 on merits after providing a reasonable opportunity to the petitioner and the third respondent herein. In view of the lapse of considerable time since the said application was lodged, the respondents are directed to conclude the hearing and issue a reasoned order within a period of three months from the date of receipt of a copy of this order.
Consequently, the connected miscellaneous petitions are closed.
01.09.2023
Index : Yes / No Internet : Yes / No Neutral Citation:Yes / No kal
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To
SENTHILKUMAR RAMAMOORTHY,J
kal
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W.P.No.27430 of 2018 WMP. Nos.31933 & 31934 of 2018
01.09.2023
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3 issues framed by the court
Whether the petitioner's failure to file a counter-statement in the old form constituted abandonment of the trademark application under Section 21(2) of the Trade Marks Act.
Whether the impugned order deeming the application as abandoned was liable to be quashed.
Whether the Registrar was directed to provide an opportunity to the third respondent for consideration of the application.
2 provisions across 2 enactments
N.C.Nanu
Registrar of Trade Marks
Assistant Registrar of Trade Marks
M/s.Shining Bakery
Senthilkumar Ramamoorthy
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
