RISHABH JAIN vs THE REGISTRAR OF TRADE MARKS
$~47
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision:-13th December, 2023.
+ W.P.(C)-IPD 67/2021 & CM APPL. 52733/2019
RISHABH JAIN ….. Petitioner
Through: Mr Ashish Chauhan and Ms Sonal Chauhan, Advs. (M. 9810449980)
versus
THE REGISTRAR OF TRADE MARKS ….. Respondent
Through: Mr Manish Mohan (CGSC) for R-1 (M. 8527115757)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. Respondent No.2 -R. R. Proteins & Agro Limited has not appeared despite being served.
3. In the present petition, the question that has arisen is whether or not the notice of opposition filed under Section 21 of the Trade Marks Act, 1999 read with Rule 42 of the Trade Marks Rules, 2017 was served upon the Petitioner, in order to enable the Petitioner to file a Counter-statement under Rule 44 of the Trade Marks Rules, 2017.
4. The Petitioner filed a trade mark application bearing no. 3169751 dated 28th January, 2016 for the mark RUDRA BHOLA in class 29, in respect of edible oils. Vide examination report dated 15th September, 2016, the examination of the aforesaid application was conducted by the Respondent No. 1-Registrar of Trademarks. Thereafter, the Petitioner filed its response dated 29th March, 2017, to the objections raised by the Respondent No. 1 in the examination report, and also requested for a hearing before the final order was passed.
5. Vide notice dated 12th April, 2019, the Respondent No. 1 listed the Petitioners application for hearing on 23rd May, 2019. Subsequently, after the hearing took place, vide order dated 29th May, 2019, the Petitioners application was advertised in Trade Marks Journal No. 1905, dated 10th June, 2019, and an Opposition under Section 21 of the Trade Marks Act, 1999 bearing no. 999885 dated 2nd August, 2019 was filed by Respondent No.2-M/s R. R. Proteins & Agro Limited. The relevant extract from the Trade Marks Journal is as follows:
6. The Respondent No. 1 issued communication dated 27th August, 2019, informing the Petitioner of the Opposition filed against the Petitioners application. The said communication is extracted below:
In pursuance of section 21(2) of Trade Marks Act 1999,I am directed by the Registrar of Trade Marks to enclose herewith a copy of the Notice of Opposition filed to the application noted as above.
In this connection I am to invite your attention to Section 21(2)of the Act and also to Rule 44 of the Trade Marks Rules, 2017 and to point out that a counterstatement of the grounds, on which you /their application should be filed at this office in triplicate on Form TM-O(COUNTER STATEMENT) within two months from the receipt by you of the copy of the notice of opposition. The counterstatement should also set out what facts if any, alleged in the notice of opposition are admitted by you/their applicants.
I am further directed to inform you that if such a counterstatement is not received in this Registry within the aforesaid time the applicants will be deemed to have abandoned his/their application (vide section 21(2) of the Trade Marks Act.1999)
7. However, the Petitioners case is that the notice of opposition was not served at the correct email address and, therefore, the Petitioner could not file the Counter-statement. Thus, in view of the non-filing of the Counter-statement an order was passed by the Respondent No. 1, abandoning the Petitioners application on 8th November, 2019. The said order has been challenged in the present petition.
8. Notice in the present petition was issued on 9th December, 2019 to Respondent No.2, who was impleaded on the same day. None had appeared for Respondent No.2. Ld. Counsel for Respondent No.2 has also been served. Even though the matter has been repeatedly adjourned, there has been no appearance for the Respondent No.2.
9. On 24th July, 2023, the ld. Counsel for the Registrar of Trade Marks, was requested to verify the address where the notice of opposition had been sent. The relevant extract of the said order reads as follows:
2. The Petitioner claims that Respondent No. 2 – R. R. Proteins & Agro Limited has been served in this matter vide affidavit of service dated 28th February, 2023 which has been placed on record. However, a perusal of the same would show that in terms of the affidavit of the service, the e-mail has been sent to the party at rrprotein100@gmailcom.
3. The trademark agent of the Respondent No. 2 is Hiral C. Joshi. Let an email be sent by the Petitioners counsel to the said agent and an affidavit be placed on record.
4. On behalf of the Respondent No. 1 – Registrar of Trademarks an affidavit has been filed stating that the notice of opposition was only served at manishkaushik.law@gmail.com.
5. The IP office to verify if the notice of opposition was sent at any other e-mail address including the address of Mr. Sachin Mittal whose email smittal.law@gmail.com appears in the Trade Mark Application in agent authorisation.
10. In terms of the above order, the Respondent No. 1 filed an affidavit dated 21st August, 2023, stating that the Respondent No. 1 emailed Sh. Hiral C. Joshi, at his email address.
11. Further, Respondent No. 1 has reverted, and stated that the opposition was served at manishkaushik.law@gmail.com and trademarks@csjoshi.com. The second email address is that of the Respondent No.2.
12. Insofar as the Petitioner is concerned, the address for service specified in the Petitioners application, as per the Form of Authorization of an Agent (TM-48), lists the email address smittal.law@gmail.com. However, the email address manishkaushik.law@gmail.com is associated with the name of Mr. Manish Kaushik.
13. The position of the Respondent No. 1, as per the counter-affidavit dated 20th August, 2022, is that the name of Mr. Manish Kaushik and the email address appear on the receipt bearing no. 1468495 dated 28th January, 2016. The Respondent No. 1 seems to have sent it only to Mr. Manish Kaushik, who may have been an associate of the Petitioners counsel, Mr. Sachin Mittal.
14. Considering that the Petitioner has not received the opposition at the email address specified in the Form filed with the opposition, the impugned order dated 8th November, 2019 is set aside. The Petitioner is allowed to file its Counter-statement, assuming that the notice of opposition has been served today.
15. Consequently, the timeline for filing the Counter-statement under Rule 44 of the Trade Marks Rules, 2017 shall run from today. The matter is remanded to the Respondent No. 1-Registrar of Trademarks for further proceedings.
16. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail- llc-ipo@gov.in for compliance of this order.
17. The present writ petition is allowed and disposed of in the above terms. All pending applications are disposed of.
PRATHIBA M. SINGH
JUDGE
DECEMBER 13, 2023
dj/dn
W.P.(C)-IPD 67/2021 Page 2 of 2