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Importance of Proper Service of Notice in Trademark Opposition Proceedings

This article delves into the legal intricacies surrounding the service of notice in trademark opposition proceedings, focusing on the case where the mere dispatch receipt of an email was deemed insufficient to initiate the time period for filing a counter statement. The case examined involves the petitioner challenging two orders dated 28.04.2023, which deemed their trademark registration applications as abandoned due to an opposition.

The central question revolves around whether the mere transmission of a notice of opposition via email constitutes proper service under the Trade Marks Act, 1999 and Trademarks Rules, 2017. This article critically analyses the arguments presented by both parties and dissects the court's decision to set aside the impugned orders.

Trademark opposition proceedings serve as a crucial mechanism for safeguarding the rights of trademark applicants against potential conflicting marks. The service of notice of opposition marks the commencement of a time-bound process for the applicant to file a counter statement defending their mark. The focal point of this analysis is the recent legal case where the validity of an email as a means of serving notice was debated.

The petitioner, who had filed two trademark registration applications, found themselves in a predicament when its 2 trademark applications were deemed abandoned due to the alleged non-filing of counter statements within the stipulated two-month period under Section 21(2) of the Trade Marks Act, 1999. The central issue revolved around the service of notice of opposition, with the petitioner contesting the receipt of such notice via email.

The Trade Marks Registry asserted that email service of the notice of opposition was proper and deemed to be complete upon dispatch of the email as per Rule 17 and 18 of the Trademarks Rules, 2017. On the other hand, the petitioner contended that Section 21(2) of the Trade Marks Act, 1999 necessitates that the time period for filing a counter statement only commences from the date of actual receipt of the notice by the applicant. The petitioner argued that their substantive right to seek trademark registration was at stake, making the date of receipt pivotal.

Court's Analysis:
In the legal precedent examined, the court critically analyzed the compatibility of Rule 18(2) with Section 21(2). The court held that the time limit prescribed for filing a counter statement would only begin from the date of receipt of the email containing the notice of opposition. The court emphasized the importance of ensuring a fair process for the applicant and noted that the document relied upon by the Registrar of Trade Marks did not suffice as evidence of receipt. It was highlighted that the petitioner acknowledged receiving the notices of opposition only after the impugned orders were passed, further emphasizing the significance of proving the service of the notice of opposition on the applicant.

Implications and Conclusion:
The court's decision in this case serves as a significant reminder of the fundamental principle that the service of notice in trademark opposition proceedings should not merely be construed as dispatching an email. The importance of proving the actual receipt of the notice by the applicant was emphasized to protect the applicant's substantive rights. The case underscores the need for accuracy and diligence in ensuring proper service of notices, especially in cases where the outcome significantly impacts an applicant's rights.

The Concluding Note:
This highlights the nuanced interplay between email communication, legal requirements, and the protection of substantive rights within the realm of trademark opposition proceedings. The court's decision serves as a precedent that emphasizes the necessity of tangible evidence of service of notice, rather than relying solely on the dispatch receipt of an email, in order to initiate the time period for filing a counter statement in a Trademark Opposition proceeding.

Case Law Discussed:
Case Title: Ramya S. Moorthy Vs Registrar of Trademarks
Date of Judgement:10.08.2023
Case No. WP C IPD 3 and 4 of 2023
Neutral Citation No: NA
Name of Hon'ble Judge: Senthil Kumar Ramamoorthy, H.J.
Name of Court:Madras High Court

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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