The voluntary nature of abandonment, the strict construction of Section 21(2) of the Trade Marks Act, and the importance of valid service of opposition notices.

JUDGMENT (Oral)

1. This appeal under Section 91 of the Trade Marks Act, 1999 assails order dated 14th June 2019, passed on behalf of the Registrar of Trade Marks, whereby Application No. 779092, filed by the appellant seeking registration of the trade mark PRIME CAB has been rejected as having been deemed to have been abandoned by the appellant, invoking, for the purpose, Section 21(2)^{1[21. Opposition to registration.--
(1) Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.]}

of the Trade Marks Act.

2. The application seeking registration of the mark PRIME CAB in Class 9 of the NICE classification was submitted by the appellant on 20th November 1997 in the office of the Registrar. First Examination Report (FER) was issued on or on behalf of the Registrar on 29th June 2001, to which the appellant filed his reply on 5th September 2001.

3. Various other proceedings took place with respect to the said application, including proceedings which travelled to this Court, which are not of particular relevance to the dispute at hand.

4. For the purpose of the present dispute, suffice it to state that an opposition was filed by Respondent 2, to the application of the appellant, on 14th July 2006.

5. The appellant's case is that neither was the appellant, nor was any of its authorised agents, ever served with notice of the opposition filed by Respondent 2, as required by Section 21(2) of the Trade Marks Act.

6. Ms. Shreya Mehra, learned Counsel who appears for Respondent 1 (the Registry of Trade Marks) submits that notice of the opposition filed by Respondent 2 was sent to M/s Manmohan Singh and Associates, the agent of the appellant, by speed post on 18th March 2019. Mr. Akash Swami, learned Counsel for the appellant submits, on instructions, that his client never received any such speed post.

7. Apart from making a statement to the effect that the notice was sent by speed post, Ms. Mehra is unable to provide any document containing any postal receipt of the notice of opposition having been sent by speed post or of the speed post having been delivered to any addressee mentioned therein. All that this Court has, therefore, is a bald assertion, contained in a note handed over by Ms. Mehra to the effect that the notice of opposition was sent to the agent of the appellant by speed post on 18th March 2019. Ms Mehra offers to say so on affidavit; but, in the absence of any proof of the document having in fact been despatched to the appellant by speed post, I cannot, quite obviously, accept the said statement, even if stated on affidavit. Ms Mehra is candid in admitting that her client has no documentary material evidencing proof of despatch, to the appellant, of the notice of hearing of the opposition, at any point of time.

8. Mr. Ghorai, who appears on behalf of the Respondent 2, submits that, in fact, there was an earlier service of the notice of opposition on the appellant vide letter dated 22nd October 2008. He has filed a reply to the present petition, placing a copy of the said letter on record.

9. However, a perusal of the letter dated 22nd October 2008 reveals that, while it is addressed to the appellant as well as its agent, the copy has been forwarded only to M/s R K Diwan and Co., as is manifest from the tick mark alongside the name of M/s R K Diwan and Co. There is nothing to indicate that the said notice da