The court emphasized that the legal fiction in Section 21(2) of the Trade Marks Act should not defeat a substantive right of the petitioner.

JUDGMENT

(Prayer : Writ Petition has been filed under Article 226 of the Constitution of India to grant a writ of certiorarified mandamus calling for the records in Order bearing No.TOP/2723, 2724/16/07/2018 dated 11.07.2018 on the file of the second respondent herein and quash the same and consequently direct the first respondent herein to receive the petitioner''s counter statement and restore the petitioner''s trade mark Application No.3053314 on his file and consider the same in accordance with the Trade Marks Act, 1999.)

1. The petitioner is engaged in the business of manufacturing and selling a bakery product under the mark “PAYYOLI MIXTURE”. The petitioner applied for registration of the aforesaid mark in Class 30 under Application No.3053314 on 11.09.2015. The application was accepted and directed to be advertised on 20.06.2016. The third respondent filed Opposition No.859085 on 28.07.2016. Upon receipt of such notice of opposition, by communication dated 12.04.2017, the Registrar of Trade Marks issued a notice to the agent of the petitioner calling upon the petitioner to file its counter statement in Form TM-6, which was the prescribed form under the Trade Marks Rules, 2002 (the 2002 Rules). In compliance with such direction, the petitioner filed the counter statement, in Form TM-6, on 02.09.2017. On receipt thereof, by communication dated 03.10.2017, the Registrar of Trade Marks returned the counter statement both on the ground that a cheque would not be accepted and on the ground that the format had changed in view of the entry into force of the Trade Marks Rules, 2017. In those circumstances, the petitioner filed the counter statement in Form TM-O, which is the prescribed form under the Trade Marks Rules, 2017 (the 2017 Rules), on 22.07.2017. By impugned order dated 11.07.2018, the application of the petitioner for registration of its trademark was deemed to be abandoned. Hence, this writ petition.

2. In spite of service of notice on 27.10.2018, the third respondent failed to enter appearance. Therefore, the matter is proceeded with in their absence.

3. Learned counsel for the petitioner invited my attention to the application for registration of the trademark, opposition No.859085 and the notice dated 12.04.2017. By focusing on the notice dated 12.04.2017, learned counsel pointed out that the Registrar of Trade Marks called upon the petitioner to file its counter statement in Form TM-6 and that such counter statement was required to be filed within two months from the date of receipt of the notice. Learned counsel contended that the notice dated 12.04.2017 was dispatched on 14.07.2017, and that this is evident from the impugned order. By adverting to the counter statement, which was forwarded by the agent of the petitioner on 02.09.2017, learned counsel pointed out that such counter statement was filed within two months from 14.07.2017. Consequently, learned counsel contended that the petitioner had duly complied with Section 21(2) of the Trademarks Act 1999 (the Trademarks Act).

4. Learned counsel further submitted that the counter statement was returned on 03.10.2017 both on the ground that a cheque would not be accepted and on the ground that the format had changed under the 2017 Rules. Within two months from the date of receipt of such communication, on 22.10.2017, the petitioner filed the counter statement in the prescribed format under the 2017 Rules. Hence, learned counsel submitted that the impugned order, which is unreasoned, is liable to be quashed.

5. In response, learned counsel for the respondents submitted that Section 21(2) of the Trade Marks Act incorporates a legal fiction by which the application shall be deemed to be abandoned if the counter statement is not filed within two months from the receipt of the notice of opposition. Therefore, he submits that the impugned order does not contain any infirmity.

6. Section 21(2) of the Trade Marks Act provides as under:

“(2) The Registrar shall