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2017 Supreme(Del) 3928
IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, J.
PRAVEEN KUMAR MAAKAR - Petitioner
Versus
UNION OF INDIA AND ANR - Respondents
W.P.(C) 1625 OF 2017
Decided On : 06-11-2017
For the Petitioner: Mr Sharabh Shrivastava with Ms. Isha Mital
For the Respondents: Ms Shiva Lakshmi, CGSC with Mr Ruchir Ranjan Rai and Ms Tarandeep Mahal.
The main legal point established in the judgment is that an application for registration of a trademark can only be deemed abandoned if the applicant fails to respond to the notice of opposition served on them, as per the provisions of Section 21(2) of the Trademarks Act, 1999.
Headnote:
Trademark - Abandonment of Application - Trademarks Act, 1999, Section 21(2) - The judgment discusses the application for registration of the trademark 'FRONTIER BAKERY' and the opposition filed by M/s Frontier Bakery Pvt. Ltd. under Section 21(1) of the Act. The court examines the service of the Notice of Opposition and the petitioner's failure to file a Counter Statement within the prescribed period. The judgment highlights the provisions of Section 21 of the Act and emphasizes that the application can only be deemed abandoned if the applicant fails to respond to the notice of opposition served on them.
Fact of the Case:
The petitioner filed an application for registration of the trademark 'FRONTIER BAKERY'. M/s Frontier Bakery Pvt. Ltd. filed an opposition, claiming that the petitioner had abandoned the application by not filing a Counter Statement to the Notice of Opposition. The petitioner contended that they had not received the Notice of Opposition.
Finding of the Court:
The court found that the petitioner was not served with the Notice of Opposition and therefore had not abandoned their application. The impugned order treating the petitioner as having abandoned the application was set aside, and the petitioner was given a further period to file the counter-statement.
Issues: The main issue was whether the petitioner had abandoned the application for registration of the trademark 'FRONTIER BAKERY' by failing to file a Counter Statement to the Notice of Opposition.
Ratio Decidendi: The court held that the application can only be deemed abandoned if the applicant fails to respond to the notice of opposition served on them. Since the petitioner was not served with the Notice of Opposition, the impugned order was unsustainable.
Final Decision: The petition was allowed, and the impugned order was set aside. The petitioner was granted a further period to file the counter-statement, and respondent no.2 was directed to consider the same in accordance with the law.
VIBHU BAKHRU, J.
1. The petitioner has filed the present petition, inter alia, impugning an order dated 05.03.2016 (hereinafter “the impugned order”) passed by respondent no.2, Registrar of Trade Marks (hereinafter “the Registrar”), whereby the Registrar has held that by virtue under Section 21(2) of the Trademarks Act, 1999 (hereinafter “the Act”) the petitioner is deemed to have abandoned his application for registration of the Trade Mark “FRONTIER”. The impugned order is premised on the basis that the petitioner had failed to file a Counter Statement to the Notice of Opposition filed by M/s Frontier Bakery Pvt. Ltd. and was served on the petitioner on 29.05.2006.
2. It is the petitioner’s case that he had not received the Notice of Opposition filed by Frontier Bakery Pvt. Ltd. and therefore, there was no question of the petitioner abandoning its application for registration of the trademark in question.
3. Briefly stated, the relevant facts necessary to address the controversy involved in the present petition are as under:
4. The petitioner filed an application bearing no. 797498 for registration of the trade mark “FRONTIER BAKERY” on 03.04.1998 in class 30 in respect of “Biscuits, Confectionary, Pastry, Cakes, Cookies, Rusks, Namkeens, Sweets, Burgers, Sandwich, Pizza, Ice cream, Bread, Buns, Kulcha, Patties and Bakery Products”. The said application was advertised in the Trade Marks Journal in 2003, but the trademark was not clear and therefore was once again advertised in the Trade Marks Journal, being Trade Mark Journal no. 1333-1 dated 15.08.2005, which was published on 31.01.2006.
5. M/s Frontier Bakery Pvt. Ltd. filed an opposition to the petitioners application under Section 21(1) of the Act on 29.05.2006. According to respondent no.2, notice of such opposition was sent to the petitioner on 19.07.2011. On the other hand, the petitioner claims that no such Notice of Opposition was received by him or his agent (Delhi Trademark Company). Thereafter, respondent no. 2 passed the impugned order on 05.03.2016. The petitioner claims that he received the impugned order on 06.06.2016. Thereafter, the petitioner caused his advocates to inspect the physical files maintained by the Intellectual Property Office to ascertain the factual position about filing of the opposition and the alleged service of the same to the petitioner.
6. The petitioner filed an application under the Right to Information Act, 2005 on 04.11.2017 about filing of the opposition and service of the same to the petitioner. By the letter dated 02.12.2016 sent in response to the said application, the petitioner became aware that the Notice of Opposition was dispatched on 20.07.2011 from the office of the Registrar, Trade Marks (bearing dispatch nos. 1671 & 1672).
7. It is the petitioners case that he did not receive the Notice of Opposition. Mr Shrivastava, the learned counsel for the petitioner relied upon an order of Madras High Court, in M/s Allied Blenders and Distillers Pvt. Ltd. v. Intellectual Property Appellate Board & Ors: AIR 2009 Mad 196, wherein the Court considered a plea for extension of limitation period, when notice of opposition had not been filed within the prescribed time. He also relied upon an order of this Court, in Mahinder Nagpal v. Union of India & Ors: 2015 (63) PTC 387 (Del) and Rakesh Kumar v. Union of India & Ors: W.P.(C) 6093/2011, decided on 11.09.2014, wherein the Court directed the respondent to deliver the Registration Certificate to the petitioner on their inability to dispatch the same.
8. Ms Lakshmi, learned counsel appearing for the respondent contended that Notice of Opposition was sent to the petitioner on 19.07.2011 and since the petitioner failed to file the Counter Statement - which was required to be filed within 2 months from the date of receipt of the Notice of Opposition - respondent no. 2 passed the impugned order.
9. Before proceeding further, it is relevant to refer to the provisions of Section 21 of the Act, w
