The deadline for filing a counter statement in trademark opposition cases starts upon actual receipt of the notice, as per statutory provisions.

ORDER

By this writ petition, an order dated 16.12.2024 concluding that Application No.5309591 in class 5 is deemed as 'abandoned' is impugned.

2. Learned counsel for the petitioner submits that the above mentioned application was filed on 01.02.2022 for the word mark PIRALEX. In response, he states that the examination report dated 10.03.2022 was received by the petitioner. Such report was responded to on 24.03.2022. Thereafter, he submits that the application was accepted for advertisement and such advertisement was published in the trade mark journal on 01.04.2024. Learned counsel further states that the petitioner was unaware that a notice of opposition had been lodged until receipt of the impugned order.

3. In these circumstances, he contends that the petitioner has been deprived of the valuable right of obtaining registration merely on account of inability to respond to the notice of opposition due to non receipt thereof.

4. Learned counsel for the Registrar of Trademarks has placed on record a document pertaining to the despatch of e-mails in respect of opposition No.1338315. The said document indicates that notice of opposition was despatched to the e-mail address of counsel for the petitioner on 29.07.2024. However, learned counsel admits that there is no proof of receipt of such e-mail by the petitioner.

5. Learned counsel for the opponent/2^nd respondent submitted that the opposition was treated as abated and that the same be restored, if the Court is inclined to set aside the impugned order.

6. In Ramya S. Moorthy v. Registrar of Trademarks and another, order dated 10.08.2023, W.P.(IPD)Nos.3 & 4 of 2023, I dealt with a case wherein the facts and circumstances were substantially similar. After noticing that sub-section (2) of Section 21 of the Trade Marks Act, 1999 stipulates that the time limit of two months for the trade mark applicant to file a counter statement runs from the date of receipt of the notice of opposition, I concluded that Rule 18(2) of the Trade Marks Rules, 2017 is not in consonance with the statutory prescription, inasmuch as it provides for deemed service upon despatch of e-mail to the trade mark applicant. After further recording that the substantive right of the trade mark applicant is at stake, I allowed the writ petition. The petitioner herein, who is similarly situated, is also entitled to similar relief.

7. By the impugned order, it was also recorded that the opposition abates. On account of restoring the trade mark application, it is just and necessary that the opposition be restored.

8. For reasons aforesaid, W.P.(IPD)No.9 of 2025 is allowed by quashing the order impugned herein. As a corollary, Application No.5309591 and Opposition No.1338315 are restored to the file of the Registrar of Trademarks for reconsideration. The petitioner is permitted to file the counter statement in response to the notice of the opposition within a maximum period of one month from the date of receipt of a copy of this order. The Registrar of Trademarks is directed to reconsider the matter on merits after providing a reasonable opportunity to the petitioner and the 2^nd respondent herein.

9. In order to avert a repetition of the present scenario, it would be appropriate for the Controller General of Patents, Designs & Trademarks to adopt a technical solution whereby proof of receipt of the e-mail by the recipient is available to the Registrar of Trademarks. There will be no order as to costs. Consequently, connected miscellaneous petition is closed.

03.04.2025 Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No kj SENTHILKUMAR RAMAMOORTHY,J kj To The Assistant Registrar of Trademarks, Trade Marks Registry, Intellectual Property Office Building, G.S.T.Guindy, Chennai 600032.

W.P.(IPD)No.9 of 2025 and W.M.P.(IPD)No.7 of 2025

03.04.2025