By, Yash Raj

 

The Hon’ble Delhi High Court recently through a Single Judge Bench of Hon’ble Mr. Justice J.R. Midha in the case of Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks[1] arising out of W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019 held that the Registrar of Trade Marks is duty-bound to send to an applicant the copy of an order passed under Section 18(5) of the Trade Marks Act, 1999 containing the ground for refusal or conditional acceptance along with the materials used by him to arrive at the decision. While doing so, the Court has held that Rule 36 of the Trade Marks Rules, 2017 is arbitrary, unreasonable and inconsistent with the Act insofar as it empowers the Registry to communicate the decision without the grounds for refusal or conditional acceptance.[2]

Background

The petition was filed before the court as the petitioner was aggrieved by the non-speaking orders passed by the Registrar of Trade Marks while refusing applications for registration of Trade Marks in violation of Section 18(5) of the Trade Marks Act. Section 18(5) of the Trade Marks Act bounds the Registrar to register the grounds for refusal or conditional acceptance of the application for registration of Trade Marks. The provisions of Trade Marks Act, 1999 under Section 18(5) provides that:

Section 18—Application for registration

(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.”[3]

Contentions of the Petitioner

The petitioner contended that as per the provisions of Section 18(5) of the Trade Marks Act, 1999, the Registrar is duty-bound to record in writing the grounds for rejection or conditional approval and the material used by him/her in arriving at his/her decision and it has to be appropriately communicated to the applicant straightaway. It was contended that Rule 36 of the Trade Marks Rules, 2017 violates the provisions of Section 18(5) as it allows for forwarding the copy of the order to the trademark applicant without mentioning the grounds for rejection or conditional approval whatever the case maybe. Further, it was submitted that Rule 36 is inconsistent with the binding provision of Section 18(5) of the Trade Marks Act and the Registrar of Trade Marks be directed to send the copy of the order containing the grounds of refusal or conditional acceptance to the trademark applicant.

It was submitted that the Registrar of Trade Marks should mandatorily comply with the provisions of Section 18(5) of the Trade Marks Act, 1999. It has been provided under Rule 36 of Trade Marks Rules, 2017 that the Registrar of Trade Marks has to communicate in writing the decision to the trademark applicant. Further, if the trademark applicant intends to appeal from the decision of the Registrar of Trade Marks, he/she has to apply within a period of 30 days in Form TM-M to the Registrar of Trade Marks after which the grounds of rejection or provisional approval would be provided to the trademark applicant.[4]

Court’s View

The Single Judge Bench of the Delhi High Court after pondering upon the conflicting rule held that the Registrar of Trade Marks is duty-bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act, 1999 mentioning the grounds for rejection or provisional approval and material used by him/her in reaching at his/her decision to the trademark applicant. Rule 36 of the Trade Marks Rules, 2017 was held to be arbitrary, unreasonable and inconsistent with the binding provision of the Trade Marks Act, 1999 insofar as it authorizes the Registry to communicate the decision without mentioning the grounds for rejection or provisional approval.

In that view of the matter, Hon’ble Mr. Justice J.R. Midha held that Section 18(5) of the Trade Marks Act, 1999 shall prevail over Rule 36 of the Trade Marks Rules, 2017. The Registrar of Trade Marks was directed to strictly implement the provisions of Section 18(5) of the Trade Marks Act, 1999 by recording the grounds for refusal or conditional acceptance in writing and the copy of the order containing the grounds of refusal/conditional acceptance must be sent to the trademark applicant within a period of two weeks from date of passing of the order. Therefore, this judgement was a much needed relief to several applicants who receive no grounds for refusal or conditional acceptance of their trademark applications. Although, a judgement in this regard from the Supreme Court will settle the matter for once and all.

[1] 2019 SCC OnLine Del 10664.

[2] Aditi Singh, Registrar of Trade Marks duty-bound to supply grounds for refusal of application: Delhi HC, Bar and Bench (Oct. 21, 2019, 8:42 PM), https://barandbench.com/registrar-trade-marks-duty-supply-grounds-refusal-application-delhi-hc/

[3] Trade Marks Act, 1999, § 18(5), No. 47, Acts of Parliament, 1999 (India).

[4] Trade Marks | Intellectual Property India, https://www.ipindia.gov.in/TM-Rules-2017.htm#36 (last visited Mar. 22, 2020).

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