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2022 Supreme(Del) 1806
IN THE HIGH COURT OF DELHI AT NEW DELHI
Jyoti Singh, J.
Bell Sports, Inc. - Appellant
Versus
Registrar Of Trademarks - Respondent
C.A. (Comm.IPD-TM) 150 of 2022 & I.A. 15362 of 2022
Decided On : 19-10-2022
Mr. Surinder Singh, Advocate., for the Appellant; Mr. Harish Vaidyanathan Shankar, Central Government Standing Counsel with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat & Mr. Alexander Mathai Paikaday, Advocates., for the Respondent
The duty of the Registrar to maintain the purity of the Register of Trade Marks and the requirement for timely communication regarding any discrepancies in the filing process.
Headnote:
Trade Marks Act - Appeal against cancellation of Opposition - Section 91 of the Trade Marks Act, 1999 - Summary of Acts and Sections: Trade Marks Act, 1999, Section 91 - The court found merit in the contentions of the Appellant and remanded the matter back to the Registrar for acceptance of the prescribed fee and considering the Opposition filed.
Fact of the Case:
The Appellant filed an Opposition to a trademark application, but the Opposition was cancelled due to a purported 'Poor Image' of the Bank Draft. The Appellant contended that the cancellation was arbitrary and illegal, and the Respondent failed to inform them in a timely manner.
Finding of the Court:
The court found merit in the Appellant's contentions, stating that the Opposition was filed within the prescribed timelines and accompanied by a valid Demand Draft. The court also noted that the Bank confirmed the validity of the instrument. The court remanded the matter back to the Registrar for acceptance of the prescribed fee and considering the Opposition filed.
Issues: The issues included the validity of the Bank Draft, the timeliness of the Respondent's communication, and the duty of the Registrar to maintain the purity of the Register of Trade Marks.
Ratio Decidendi: The court held that the cancellation of the Opposition was unjust and unfair, as the Appellant had taken all requisite steps within its power and control to file the Opposition within the permissible time limit along with a valid Demand Draft.
Final Decision: The Appeal was allowed and disposed of, setting aside the impugned order and permitting the Appellant to tender a fresh Demand Draft within a specified period.
JUDGMENT
Jyoti Singh, J. - Present appeal has been preferred under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the 'Act'), assailing the decision of cancellation of Opposition, communicated to the Appellant vide letter dated 24.05.2022 by the Respondent, received on 10.06.2022 as well as for a direction to the Respondent to accept the official fee of Rs. 3,000/- in Opposition No. 1164769.
2. Brief and necessary facts for adjudication of the present appeal, which are in a narrow compass, are that Appellant filed an Opposition No. 1164769 on 17.05.2022 to the trademark Application No. 4908323 in Class 25 for the trademark GIROMORE published in the Trade Marks Journal No. 2014 on 23.08.2021, based on its prior adoption and use of the trademark GIRO for goods falling in Class 25.
3. It is averred that public notice was issued by the learned Controller General of Patents, Designs & Trade Marks, Mumbai ('CGPTDM') on 28.03.2022, in compliance of directions passed by this Court vide judgment dated 21.03.2022 in W.P.(C)-IPD 4/2022, regarding filing of Oppositions to the applications falling in Trademark Journal Nos. 1928 to 2036 upto 30.05.2022. Last date for filing the Oppositions was 30.05.2022 and Appellant filed the Opposition accompanied by a Demand Draft bearing No. 054136 dated 17.05.2022, towards fee of Rs. 3,000/-, in favour of Registrar of Trade Marks, drawn on Standard Chartered Bank, Janak Puri Branch, New Delhi. The application was filed physically, since online filing was not available for Oppositions.
4. It is stated that Registrar of Trade Marks scanned and uploaded the said Opposition on the official website www.ipindia.gov.in and till date, the status of the Application is showing as 'Opposed'. However, on 10.06.2022, Appellant received a communication dated 24.05.2022, from the Respondent, intimating that the Opposition has been cancelled as the Bank Draft was returned unpaid due to 'Poor Image', along with a Return Memo dated 23.05.2022, which reads as follows:-
'... We have cancelled form TM-O to application no. 4908323 vide receipt no. 3253819 also return DD No. 054136 ...' ... 'for the reason 'Poor Image'.
5. On 11.06.2022, Appellant contacted the officials of the concerned Branch of Standard Chartered Bank requesting them to look into the matter. The Bank, after re-checking the status of the Draft confirmed, both orally on 11.06.2022 and in writing on 13.06.2022, that the same was a valid instrument with clear image, as the names, figures, codes etc. were clearly visible and there was no overwriting or cutting on the instrument.
6. Based on this information received from the Bank, Appellant wrote to the Respondent on 11.06.2022, seeking liberty to deposit the same Bank Draft again for clearance or in the alternative to accept payment through any other mode. However, Respondent refused to entertain any request.
7. On 13.06.2022, Appellant through its Attorney again visited the Trade Marks Office and apprised the Registrar of the factual position, including the feedback from the Bank on the validity of the instrument. However, the Registrar issued the impugned order cancelling the Opposition filed by the Appellant.
8. Learned counsel appearing on behalf of the Appellant submits that the impugned order is arbitrary and illegal. The reason assigned for cancelling the Opposition in the Return Memo, i.e., poor image of the Bank Draft is wholly misplaced and without any basis. On a bare perusal of the photocopy and the original of the Draft, it is apparent that all figures, codes, etc. on the Bank Draft are clearly visible and it was fallacious to return the same with an endorsement 'Poor Image'. Additionally, in response to a pointed query to the Drawer Bank, it was confirmed that the Demand Draft was a valid instrument.
9. It is contended that the Opposition was filed by the Appellant on 17.05.2022, well before the last date, i.e., 30.05.2022 along with the prescribed fee, by way of a Bank Draft drawn o
