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IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Dhiraj Kumar Nanda – Appellant
Versus
The Registrar of Trade Marks & Anr. – Respondents
C.A.(COMM.IPD-TM) 7 of 2023
Decided On : 03-07-2023
Trade Marks - Abandonment of Trade Mark Application - The court set aside the order abandoning the trade mark application as the appellant did not receive the hearing notice for the opposition proceedings, and the matter proceeded in default.
Fact of the Case:
The appellant filed a trade mark application for the mark 'NUTRILIFE' in Class 5 for pharmaceutical and medicinal preparations. The application was treated as abandoned as the appellant did not receive any hearing notices for the opposition proceedings.
Finding of the Court:
The court set aside the order abandoning the application as the appellant did not receive the hearing notice, and directed the Registrar of Trademarks to communicate a fresh date of hearing to the parties.
Issues: Failure to receive hearing notice, abandonment of trade mark application.
Ratio Decidendi: The Registrar is required to give notice to the parties of the opposition hearing. If the applicant is not present at the adjourned date of hearing and at the time mentioned in the notice, the application may be treated as abandoned.
Final Decision: The appeal is allowed, and a fresh date of hearing shall be communicated to the parties for the opposition proceedings.
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The Appellant-Dhiraj Kumar Nanda has filed the present appeal under Section 91(1) of the Trade Marks Act, 1999 seeking setting aside of the order dated 23rd September, 2022 by which the Appellant's Trade Mark Application No. 1844701 (hereinafter, `the Application') has been treated as abandoned.
3. The case of the Appellant is that the Appellant had filed a Trade Mark Application bearing no. 1844701 for the mark `NUTRILIFE' in Class 5 for `pharmaceutical and medicinal preparations' on 28th July, 2009. The said Application was advertised in the Trade Mark Journal No. 1705 on 10th August, 2015. Thereafter, Respondent No. 2-M/s Alticor Inc. filed a Notice of opposition to application for registration of a trade mark under Section 21(1) of the Trade Marks Act, 1999 and opposed the Application on 2nd December 2015. The hearing in the Opposition was scheduled for 6th July 2022 and 3rd September, 2022.
4. On 23rd September 2022, the Application was treated as abandoned. The case of the Appellant is that it did not receive any hearing notices in the matter and thus could not defend its position qua the trade mark which was applied for.
5. Heard. Vide order dated 3rd March 2023, notice was issued in this case. The service is effected.
6. Today, Mr. Amol Dixit, ld. Counsel for Respondent No. 2 appears for the contesting Respondent-M/s Alticor Inc., Ld. Counsel does not dispute the fact that hearing notice was not issued to the Appellant.
7. It is also submitted that Respondent No. 2 had received notice and had appeared on the date of the hearing.
8. Rule 50 of the Trade Marks Rules, 2017 provides as follows:
"(1) The Registrar, after the closure of the evidence, shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice.
[...]
(3) If the applicant is not present at the adjourned date of hearing and at the time mentioned in the notice, the application may be treated as abandoned.
(4) If the opponent is not present at the adjourned date of hearing and at time mentioned in the notice, the opposition may be dismissed for want of prosecution and the application may proceed to registration subject to section 19.
(5) The Registrar shall consider written arguments if submitted by a party to the proceeding.
(6) The decision of the Registrar shall be communicated to the parties in writing at the address given for service."
9. Further, the Bombay High Court in Institute of Cost Accountants v. Registrar of Trade Marks, 2013 SCC OnLine Bom 362 observed Rule 38 of the Trade Marks Rules, 2002 as follows:
"9. The respondent was bound to communicate any objection or proposal in writing to the applicant. The respondent admittedly did not do so. Placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The respondents have not indicated anything that obliged the petitioner to inspect the website on a daily basis. Nor did they indicate any rule or practice by which the petitioner was bound legally to take notice of anything that is posted on the respondents' website. Rule 38(4) by itself does not require an applicant for registration to inspect the respondents' website. The petitioner therefore cannot be imputed with the knowledge of the said letter dated 19.09.2011. The mere posting of the letter on the website does not constitute communication of the objection or proposal in writing as required by rule 38(4).
10. The letter dated 19.09.2011, at the highest, can be said to have been communicated to the petitioner only on the date on which the petitioner noticed it on the website viz. 13.03.2012. Within one month thereof, the petitioner's advocate by the said letter dated 30.03.2012 applied for a hearing, which he has been denied thus far. The petitioner's application for registration cannot therefore, be deemed to have been a
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.
The main legal point established in the judgment is the interpretation of the time limit for filing the counter statement in trade mark applications, emphasizing the requirement of actual receipt of ....
The court emphasized the importance of the Registrar's decision on the petitioner's request for abandonment being made within a specified time frame and in accordance with principles of natural justi....
The central legal point established in the judgment is the option given to the opponent to adduce evidence or communicate in writing the intention to rely on the facts stated in the notice of opposit....
The discretion of the authority in treating an application as abandoned under Rule 56(3) of the 2002 Rules is justified, and the absence of a provision enabling the setting aside of an ex parte order....
Timeliness in responding to trademark examination reports is crucial, and delays not condoned; rights in the mark persist despite abandonment.
Procedural ambiguities in trademark laws should favor the substantive rights of opponents, ensuring that minor delays do not unjustly negate the right to contest trademark registrations.
Refusal of a trademark application without a proper hearing violates the principles of natural justice, requiring reforms in the current hearing procedures.
The main legal point established is the peremptory nature of Rule 50(1) of the Trade Marks Rules 2002 and the statutory sequitur of deemed abandonment under Rule 50(2).
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