Case Law: Ramya S. Moorthy V. Registrar of Trade Marks And Others

Introduction

The Madras High Court recently delivered a significant judgment in the case of Ramya S. Moorthy vs. Registrar of Trade Marks & Anr, [W.P.(IPD).Nos.3 & 4 of 2023] dated 10 August 2023. This case revolves around the interpretation of Section 21(2) of the Trade Marks Act, 1999, and its application to the receipt of a notice of opposition in trade mark registration proceedings. The petitioner, Ramya S. Moorthy, sought redress against two orders, both dated 28 April 2023, in which her trade mark applications were deemed abandoned due to her alleged failure to file counter statements to notices of opposition.

Details of the Case

On 4 February 2022, the petitioner, Ramya S. Moorthy, filed two trade mark applications under different classes. Subsequently, the applications were accepted for advertisement, and the advertisement was published on 12 September 2022. However, on 12 January 2023, the second respondent, Nirma Ltd., filed opposition against these trade mark applications.

A dispute arose over the delivery of the notice of opposition to the petitioner. While the Trade Marks Registry claimed to have electronically transmitted the notice on 19 January 2023, the petitioner denied receiving it. Due to the alleged non-receipt of the notice of opposition, the petitioner was unable to file counter statements within the two month time limit specified in Section 21(2) of the Trade Marks Act, leading to the impugned orders stating that the petitioner’s trademarks had been abandoned dated 28 April 2023.

The Point Of Contention

The primary issue in this case is the interpretation of Section 21(2) of the Trade Marks Act, 1999, specifically, whether the two-month period for filing counter statements commences upon the dispatch of the notice of opposition or upon the actual receipt of the notice by the applicant.

The petitioner argues that the clock for filing counter statements begins upon the applicant’s receipt of the notice of opposition. Since she claims not to have received the notice, she contends that the conclusion of the Trade Marks Registry that she abandoned her applications is unjustifiable.

The Trade Marks Registry argues that Rules 17 and 18 of the Trade Marks Rules, 2017, allow for service of notice through e-mail. They assert that service by e-mail is deemed complete upon dispatch, which they believe aligns with the statute’s requirements.

The Court’s Decision

The Madras High Court allowed WP (IPD) Nos. 3 and 4 of 2023, quashing the orders dated 28 April 2023. In doing so, the Court noted that the provisions of Rule 18 (2) of the Trade Mark Rules, 2017 which states that documents will be deemed to have been served upon sending the email runs contrary to Section 21 (2) of the Trade Marks Act 1999, which stipulates that the window for filing the counterstatement starts upon receipt of the notice by the applicant. As the substantive right of the applicant seeking registration was at stake, the Court rules in favor of the Petitioner.

The two trade mark applications were reinstated and remanded to the Registrar of Trade Marks for reconsideration. The petitioner was directed to file counter statements within one month from the date of receipt of the court’s order. The Registrar of Trade Marks was instructed to re-evaluate the matter on its merits, providing a fair opportunity to both the petitioner and the second respondent.

Conclusion and Significance

The Madras High Court’s decision in Ramya S. Moorthy vs. Registrar of Trade Marks (10 August 2023) serves as a precedent clarifying the interpretation of Section 21(2) of the Trade Marks Act, 1999. By ensuring that the prescribed time limit for filing counter statements commences upon receipt of notices of opposition, this judgment upholds fairness and justice in trade mark registration proceedings, safeguarding the rights of applicants. This judgment carries substantial implications for trade mark applicants and the Trade Marks Registry. It clarifies that the clock for filing counter statements begins upon the receipt of the notice of opposition, ensuring that applicants are not unfairly prejudiced by electronic communication glitches or non-receipt of notices. This interpretation aligns with the fundamental principle of natural justice and safeguards the substantive rights of trade mark applicants.

Author: Antas Deep, Legal Intern at PA Legal.

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