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 notice of opposition for triggering the time limit.

JUDGMENT

(Prayer in WP(ID)No.3 of 2023: Writ Petitions (IPD) has been filed under Article 226 of the Constitution of India to grant a writ of certiorarified mandamus calling for the records contained in order dated 28.04.2023 passed by the 1st respondent in respect of Application No. 5314494 filed by the petitioner under the Trade Marks Act, 1999 and to quash the same as illegal, unjust , arbitrary and contrary to principles of natural justice and to consequently direct the 1st respondent to grant the petitioner an opportunity to file a counter statement to Notice of Opposition bearing Nos. 1202542.

In WP(ID)No.3 of 2023: Writ Petitions (IPD) has been filed under Article 226 of the Constitution of India to grant a writ of certiorarified mandamus calling for the records contained in order dated 28.04.2023 passed by the 1st respondent in respect of Application No. 5314494 filed by the petitioner under the Trade Marks Act, 1999 and to quash the same as illegal, unjust , arbitrary and contrary to principles of natural justice and to consequently direct the 1st respondent to grant the petitioner an opportunity to file a counter statement to Notice of Opposition bearing Nos. 1202543.)

Common Order

1. In both writ petitions, the petitioner assails two orders, both dated 28.04.2023, by which the application for registration of the relevant marks was deemed to be abandoned. The petitioner filed the two trade mark applications on 04.02.2022 under different classes. On 08.03.2022, the petitioner was notified of the examination report in respect of the respective application. The applications were accepted for advertisement and such advertisement was published on 12.09.2022. Thereafter, it appears that an opposition was filed by the second respondent herein on 12.01.2023. While the Trade Marks Registry asserts that the notice of opposition was electronically transmitted to the petitioner on 19.01.2023, the petitioner denies receipt thereof. On account of non-receipt of the notice of opposition, the petitioner asserts that the counter statement to the notices of opposition could not be filed within the two month period specified in Section 21(2) of the Trade Marks Act, 1999 (The Trade Marks Act). In these circumstances, the Trade Mark Registry issued the impugned orders dated 28.04.2023 holding that the petitioner is deemed to have abandoned the two applications. Hence, these writ petitions.

2. Learned counsel for the petitioner places reliance on the text of Section 21(2) and contends that the clock starts ticking only upon receipt by the applicant of a copy of the notice of opposition. Since the notice of opposition was not received by the applicant/petitioner, it is further contended that the conclusion that the applicant abandoned the applications is untenable. Although the Trade Mark Registry relies upon a document indicating transmission of the opposition notice on 19.01.2023 to the agent of the applicant, learned counsel contends that this document does not evidence receipt of the notice of opposition by the applicant.

3. Mr.S.Janarthanam, learned Special Panel Counsel, relies on Rules 17 and 18 of the Trade Marks Rules, 2017, and contends that notice may be served through e-mail to the address provided by the applicant, and that service of notice by e-mail is deemed to be proper service upon dispatching the e-mail. By drawing reference to the document evidencing dispatch of the opposition notice to the applicant / petitioner on 19.01.2023, he points out that the status specified therein is “success”.

4. The case turns on Section 21 (2), which is set out below:

“(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 deem