Proper notice of opposition is essential for the commencement of the counter-statement period in trademark applications, and abandonment orders can be quashed if notice is not received.

JUDGMENT

The question that arises for consideration in this appeal is whether it would suffice for the purpose of complying with the requirements of Rule 18(2) of the Trade Marks Rules, 2017 (in short “TM Rules”), if the first respondent (Trade Mark Registry) had despatched the email notice to the e-mail address given by the appellant in his trademark application seeking for registration of a trademark.

2. Under the impugned order, the application for registration of a trademark submitted by the appellant has been ordered to be abandoned on the ground that the appellant failed to file a counter-statement to the opposition petition filed by the second respondent within the statutory period, despite the fact that the appellant is alleged to have received the notice through email as per Rule 18(2) of the TM Rules.

3. However, the appellant in this appeal contends that the appellant never received the notice from the first respondent (Trade Mark Registry) in accordance with Rule 18(2) of the TM Rules, as the email said to have been sent by the first respondent was never received by him. The appellant also contends that in respect of three other trademark applications seeking for registration under different classes, the appellant had received notice from the first respondent and had also filed a counter- statement to the opposition petition within the statutory period. Therefore, according to the appellant, arbitrarily, by total non-application of mind, the impugned order has been passed by the first respondent ordering abandonment under Section 21(2) of the Trade Marks Act, 1999 (in short "TM Act") of the application submitted by the appellant seeking for trademark registration.

4. The learned counsel for the appellant drew the attention of this Court to Section 21(2) of the “TM Act” and would submit that two months' time shall commence for the appellant to file counter-statement only from the date of receipt of notice of opposition. Therefore, according to him, since the appellant did not receive notice of opposition, the question of ordering abandonment of the appellant's application seeking for registration of trademark is unjustified.

5. The learned counsel for the appellant also drew the attention of this Court to Rules 18 and 42 of the TM Rules, and would submit that as per Rule 42(5), the first respondent will have to serve notice of opposition on the appellant within three months of the receipt of the same by the appropriate office, the first respondent herein. According to him, unless and until the appellant receives notice of opposition from the first respondent, the time limit prescribed for filing counter-statement will not commence.

6. The learned counsel for the appellant also drew the attention of this Court to the decision of a learned Single Judge of this Court in Ramya S.Moorthy Vs. Registrar of Trade Marks and others [ MANU/TN/5971/2023 ] and would submit that in similar circumstances, the writ petition filed by a similarly placed person was allowed.

7. On the other hand, learned Special Panel Counsel for the first respondent would submit that since the notice of opposition has been duly sent and received by the appellant as seen from the despatch details maintained by the first respondent, this appeal is not maintainable, as the impugned order has been passed only in accordance with Section 21(2) of the TM Act by following the service of notice procedure prescribed under Rule 18(2) of the TM Rules.

8. He would also submit that the decision of the learned Single Judge relied upon by the learned counsel for the appellant referred to supra was taken up on appeal before the Division Bench of this Court and in the said appeal, even though the Division Bench had confirmed the order passed by the learned Single Judge, the Division Bench had made it clear that the order passed by the learned Single Judge cannot be treated as a precedent in other matters.

9. The learned counsel for the second respondent would reiterat