ORDER

% 22.01.2024

1. The present appeal, under Sections 91 r/w 143 of the Trade Marks Act, 1999 [hereinafter ‘the Act’] impugns order dated 12th October, 2023, passed by the Registrar of Trademarks/Respondent No. 2. The impugned order has accepted the explanation provided by Opponent/Respondent No. 1 for the delay in filing evidence supporting their application, thereby refusing to treat the opposition as abandoned.

2. The impugned order was passed pursuant to a hearing notice issued under Section 45(2) of the Trademarks Rules, 2017 giving an opportunity to the opponent, to explain as to why the opposition should not be deemed abandoned in view of the fact that the opponent had failed to file the evidence in support of opposition, within two months from receipt of counter statement. In response, the opponent submitted that they had not received the counter statement from the Trademarks Registry. To support C.A.(COMM.IPD-TM) 6/2024 Page 2 of 5 this contention, an affidavit along with screenshots of emails received and the Dak register maintained by the office of the opponent’s agent, were also filed.

3. After affording an opportunity of hearing to the parties, Respondent No. 2 concluded that the service effected through email was not sufficiently proved, as the email had not been received by the opponent, and accordingly, the timeline to file evidence did not commence.

4. Mr. N. Mahabir, counsel for the Appellant, strenuously argues that Respondent No. 2 has erred in holding that the service through email was not sufficient. He emphasises that the email sent by the Registrar of Trademarks had been duly received by the Appellant. It was dispatched to the correct email ID of the opponent, and therefore the same should be deemed to be a proper service. The opponent failed to file evidence in support of opposition within time, and thus the deeming provision of Section 45(2) of the Trademarks Rules, 2017 should have been applied to reject the opposition. He submits that as per the Trademarks Rules, service can be effected through email and this Court has in various decisions,1 held the service of both pleadings and documents through email, is a proper and recognized mode of service, as long as the service was effected on the correct email address. He also impugns the order on the ground that the Registrar of Trademark erred in holding that the sending of the email to effect service was not enough and that it had to be separately shown that the opponent received the email. Mr. Mahabir thus argues that the impugned order should be set aside and consequently, the opposition should be 1 Mex Switchgears Pvt. Ltd. v. Vikrm Suri Trading as Mis Armex Auto Industries, 2023 SCC OnLine Del 6504 and Raison India Limited v. Sham Lal & Another, 2023 SCC Online Del 7993 C.A.(COMM.IPD-TM) 6/2024 Page 3 of 5 rejected.

5. The Court has considered the aforenoted contentions. Mr. Mahabir’s proposition that the email is a valid mode of service cannot be disputed.

However, each case would turn on its own facts. The important aspect of service is to afford an opportunity to a party to put forth their stand. In the instant case, the Registrar of Trademarks has concluded that the service through email was not received by the opponent. This finding of fact is rendered, as follows:

“Rule 45 also uses similar language like used in S.21. Rule 45 lays down that 'Within two months from service of a copy of the counterstatement'.

Therefore I am of the opinion that unless service is actually effected on the Opponent, the time to file evidence shall not start to run. Mere sending of email of the email ID of the Opponent will not suffice. Even the e-filing correspondence, can best be relied to prove the sending of email, but not the actual receipt of the said email by the Opp