The Registrar of Trade Marks has a statutory duty to serve the counter statement to the opponent, and failure to do so invalidates the proceedings as per Section 21(3) of the Trade Marks Act, 1999.

JUDGMENT :

(R.I. Chagla, J.) :

1. By this Petition, the Petitioner is seeking quashing and setting aside of the impugned Order dated 7th October, 2022 passed by the Examiner of Trade Marks, Trade Marks Registry, Mumbai. Further, direction is sought to the Trademark Registrar to take the evidence in support of opposition filed by the Petitioner on record and to re-open the Opposition No.757461 and Application No.1551485.

2. Heard the arguments on behalf of the Petitioner and Respondent No.1. The Respondent No.2 was given ample opportunities to remain present before this Court and the Petition had been adjourned on prior occasions vide orders dated 26th February, 2024 and 21st March, 2024. The Respondent No.2 has failed to avail such opportunities and remained absent during the hearing before this Court. Accordingly, the Respondent No.2 has not been represented during the arguments.

3. The Petitioner is a company engaged in the business of inter alia manufacturing, marketing and sale of footwear.

4. In the year 1999, the predecessor of the Petitioner, namely its family owned company Apex Shoes Co. Pvt. Ltd., honestly and bona fide coined and adopted the trade mark “TRAVEL FOX” in respect of manufacture and sale of footwear. Since the year 2000, the trade mark TRAVEL FOX has been continuously and extensively used by the Petitioner through its predecessor and through itself.

5. The Petitioner has applied for and secured trade mark registration for the mark in class 25. The Petitioner has reproduced a table comprising of the particulars of the Petitioner’s trade mark registration bearing No.1339103 in Class 25 at paragraph 22 of the Petition. Copies of online status, registration certificate and journal copy in respect of the Petitioner’s trade mark registration No.1339103 in Class 25 are at Exhibits V to V2 to the Plaint.

6. The Petitioner’s products are sold in a considerable number of department stores, other authorized specialty retail stores, with traders/wholesalers and various e-commerce retailers which deliver across all the major cities in India. The Petitioner has also widely used and extensively promoted and advertised its trade marks to the public in connection with its products. To demonstrate its goodwill and reputation in respect of its goods bearing the TRAVEL FOX trade mark, the Petitioner has furnished a statement of its nationwide sales figures in respect of its goods bearing the trade mark “TRAVEL FOX” for the years 2012-2023.

7. The Respondent No.1 is the Registrar of Trade Marks who had passed the impugned order which is being challenged by the present Petition.

8. The facts leading to the present Petition are as under:

(i) On 19th April 2007, the Respondent No. 2 filed the impugned trade mark applications under Nos. 1551485 and 1646145 in Classes 25 and 18 (hereinafter referred to as “impugned applications”) for the impugned mark on a “proposed to be used” basis before the Registrar of Trade Marks, i.e. the Respondent No. 1.

(ii) On 1st November 2009, the Respondent No. 2’s impugned applications in respect of the impugned mark were advertised in Trade Mark Journal No. 1427-0. On 8th March 2010, the Petitioner duly filed Notice of Oppositions against Respondent No. 2’s impugned applications under Nos. 1551485 and 1646145 in Classes 25 and 18.

(iii) The not