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IN THE HIGH COURT OF JUDICATURE AT MADRAS
R. SUBBIAH, C. SARAVANAN, JJ.
K. Dalpat Singh – Petitioner
Versus
Intellectual Property Appellate Board, Rep. by Deputy Registrar and Others – Respondents
W.P. No. 5486 of 2019, W.M.P. No. 6241 of 2019
Decided On : 02-08-2019
Trademark - Intellectual Property - Trade Marks Rules, 1999/2017 - Rule 45 (2) - Rule 46 - Summary of Acts and Sections: The court discussed the Trade Marks Rules, 1999/2017, particularly Rule 45 (2) and Rule 46, which govern the filing of evidence in support of opposition and the consequences of failing to do so. The court emphasized the importance of complying with these rules and the consequences of abandonment of opposition proceedings.
Fact of the Case:
The petitioner sought to quash an order by the Intellectual Property Appellate Board (IPAB) setting aside the abandonment of opposition proceedings against the registration of the trademark 'Gold Mehal.' The petitioner claimed continuous use of the trademark since 2011 for C.P. Bath Fittings.
Finding of the Court:
The court found that the IPAB's order was valid and fair, dismissing the petitioner's allegations of irregularity in the proceedings. The court emphasized the importance of complying with the Trade Marks Rules and upheld the decision to remand the case for a proper determination.
Issues: The issues revolved around the abandonment of opposition proceedings, compliance with the Trade Marks Rules, and the fairness of the IPAB's decision.
Ratio Decidendi: The court emphasized the importance of complying with the Trade Marks Rules, particularly regarding the filing of evidence in support of opposition. The court upheld the IPAB's decision to remand the case for proper determination.
Final Decision: The writ petition was dismissed, and no costs were awarded. The connected miscellaneous petition was closed.
JUDGMENT :
C. SARAVANAN, J.
Prayer: Writ Petition has been filed under Article 226 of the Constitution of India to issue a Writ of Certiorari calling for the entire records of the 1st respondent pertaining to OA/5/2018/TM/CH dated 12.11.2018 and quash the same.
1. The petitioner is aggrieved by the impugned order dated 12.11.2018 passed by the 1st respondent Intellectual Property Appellate Board (IPAB) in OA/5/2018/TM/CH.
2. By the impugned order, the 1st respondent Intellectual Property Appellate Board (IPAB) has set aside the order dated 06.07.2018 passed by the 2nd respondent-Assistant Registrar of Trade Marks, Trade Marks Registry in Opposition No. 890521 treating the said Opposition proceeding filed by the 3rd respondent as “abandoned.”
3. The said Opposition proceeding was filed by the 3rd respondent against the proposed registration of the Trade Mark “Gold Mehal” in T.M. Application No. 2573910.
4. The petitioner had claimed a continuous user of the said word as a trademark since 08.12.2011 for products falling under in respect of C.P. Bath Fittings in class 11.
5. After initial scrutiny the aforesaid application, the Trademark was advertised in the trademark journal on 08.05.2017. Under these circumstances, the 3rd respondent herein filed opposition proceedings vide Opposition No. 890521 against the proposed registration of the aforesaid Trade Mark in T.M. Application No. 2573910.
6. The petitioner thereafter filed a counter statement to notice of Opposition No. 890521. The 2nd respondent thereafter called upon the 3rd respondent to file evidence in support of the opposition in terms of Rule 45 of the Trade Marks Rules, 1999/2017 within a period of two months vide communication dated 18.09.2017.
7. By a communication dated 05.10.2017 addressed to the office of the Registrar of Trademarks, Chennai but sent to the Mumbai office of the 2nd respondent, the 3rd respondent’s advocates informed that they did not wish to file evidence in support of the opposition under Rule 45 of the Trade Marks Rules, 1999 but would rely on the notice of opposition alone. A copy of the said communication was also marked to the petitioner’s attorney.
8. The 3rd respondent thus decided to give up its right to file evidence in support of the opposition proceedings and confined opposition to the legality of the proposed registration of the aforesaid trademark in favour of the petitioner.
9. Though the aforesaid communication dated 05.10.2017 was addressed to the office of the Registrar of Trademarks, Chennai, it was not 2nd respondent’s Chennai Office.
10. Under these circumstances, the petitioner’s trademark attorney Mr. Selvarajan also sent a letter dated 05.10.2017 to the office of the Registrar of Trade Marks Chennai and stated that the petitioner was also waiving the option to file evidence in support of the registration under Rule 46 of their Trade Marks Rules, 1999/2017.
11. The 2nd respondent by a communication dated 17.5.2018 informed the petitioner, the 3rd respondent and their respective trademark agents/advocates that the opposition proceeding was deemed to have been abandoned in view of Sub-Rule (2) of Rule 45 [Old Rule 50 (2)] and therefore the hearing was fixed to decide the same on 20.06.2018.
12. Taking cue from the said notice fixing personnel hearing, the petitioner’s Trade Mark agent/Attorney also filed a written representation dated 20.6.2018 treating the said Opposition No. 890521 as having been abandoned and requested for registration of the trademark in T.M. Application No. 2573910.
13. Curiously, the 3rd respondent did not participate in the hearing fixed on 20.6.2018 before the 2nd respondent. Thus, by an order dated 6.7.2018, the Assistant Registrar of Trade Mark concluded that the opposition initiated by the 8th respondent was deemed to have been abandoned in view of the operation of Rule 45 (2) Trade Mark Rules, 1999.
14. In the aforesaid order, it was recorded that the petitioner was informed by the 3rd respondent that they did not
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