NIF PRIVATE LIMITED vs REGISTRAR OF TRADE MARKS
$~11
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 29/2021
NIF PRIVATE LIMITED ….. Appellant
Through: Mr. Sanjeev Singh and Ms. Anupriya Alok, Advs.
versus
REGISTRAR OF TRADE MARKS ….. Respondent
Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr.Alexander Mathai Paikaday and Mr. Krishnan V., Advs.
CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
J U D G M E N T (O R A L)
% 05.12.2023
1. This appeal is directed against orders dated 18 September 2018 and 8 January 2019 passed by the Senior Examiner in the office of the Registrar of Trade Marks. These two orders pertain to a time in which orders of rejection of applications seeking registration of trade marks used to be passed in an unreasoned fashion, with a note that the applicant could, if he so desired, apply separately for obtaining the reasons for rejection. It was only where such an application was filed that the reason was provided by a separate order. It is thus the two orders are under challenge, 18 September 2018 and 8 January 2019 have come to be passed.
2. The order dated 18 September 2018 merely informs the appellant that Application no. 2665269, seeking registration of a device mark in class 29 stands rejected under Sections 9/11 of the Act. The order contains a note, permitting the appellant to apply under Rule 36(1)1 of the Trade Mark Rules for obtaining the reasons for rejection along with a prescribed fee.
3. On the appellants so applying, the second order dated 8 January 2019 has come to be passed, purportedly containing the grounds of rejection.
4. I am informed that this unhappy practice of first communicating an unreasoned rejection order and, thereafter, providing the grounds of rejection on the applicants specifically applying for the said purpose under Rule 36(1) of the Trade Mark Rules, is no longer being followed.
5. This is truly a welcome development. In fact, the very legality of Rule 36(1) of the Trade Mark Rules may be a matter which is seriously open to challenge.
6. An unreasoned order is an affront to due and fair procedure. There is no justification whatsoever for having a scheme in place in which, in the first instance, an unreasoned order is passed and communicated and, thereafter, on the applicant applying for the reasons and paying fees from his pocket for the said purpose, obtaining the reasons for the said order.
7. In the present case, the purported grounds for refusal, as contained in the communication dated 8 January 2019, are as non-speaking as the order dated 18 September 2018 itself. The order dated 18 September 2018 and the subsequent statement of grounds of refusal dated 8 January 2019 read thus:
Order dated 18 September 2018
ORDER
A Hearing in respect of the above matter came up before me on 20/08/2018 and the following is to be communicated to the applicant/agent:
Ms. Priya applicant/Advocate/Agent appeared before me and made his submissions. I have heard arguments, gone through the records and passed the following Order.
The trade mark applied for is objectionable under Section 9/11 of the Act. The application is accordingly refused.
Attention is invited under Rule 36(1) of the Trade Marks Rules, 2017 where the application is refused a request may be made in form no TM-M along with the prescribed fee to communicate in writing the grounds of decision and materials used by the Registrar in arriving at his decision to refuse the said application. The said request on form TM-M should be tendered within 30 days of receipt of the order of refusal.
Dated: 18 September 2018.
(BIRENDRA JAISWAL)
SENIOR EXAMINER OF TRADE MARKS
(Authorized under 3(2) of the Act)
Order dated 8 January 2019
From: The Registrar of Trade Marks, Delhi Dated: 08/01/2019
To,
S. SINGH & ASSOCIATES
213, 3RD FLOOR PARMANAND COLONY,
DR. MUKHERJEE NAGAR DELHI-9
Subject: Application No. 2665269 in Class 29.
In the name of M/S NIF PRIVATE LIMITED
Statement of Grounds of decision under Rule 36(1) of the Trade Marks Rules, 2017
Gentleman/Madam
With reference to the above and request on Form TM-M dated 10/10/2018. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 20/08/2018 and the said application is refused on the following grounds:
The applicant advocate Ms. Priya appeared. I have heard the argument and also perused the documents available on record. Objection under Section 9 is sustained, application is refused for registration.
S.9. Absolute grounds for refusal of registration.
9(1)(a)- The trade mark is devoid of any distinctive character, that is to say not capable of distinguishing the goods or services of one person from those of another person:
9(1)(b)- The Trade Mark consist exclusively of marks or indications which serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services.
Since the objection raised in the Examination Report under Section 9 of the Trade Marks Act, 1999 as mentioned above cannot be waived and no supporting document filed for claiming of user and Ld. Counsel failed to convince at the time of hearing in proving his/her case, the abovementioned application is refused.
Yours faithfully,
Birendra Jaiswal
(Senior Examiner)
8. The order dated 18 September 2018 merely cited Sections 9 and 11 as grounds for rejecting the appellants application. Subsequently, by the communication dated 8 January 2019, Section 11 has apparently been given up as a ground for rejecting appellants application and the rejection is sought to be based on Section 9(1)(a) and 9(1)(b). However, apart from merely reproducing the two provisions, the order does not elucidate how the said provisions are applicable or why the appellants application was liable to be rejected on the basis of the said provisions.
9. As such, both orders are unreasoned. They cannot, therefore, sustain.
10. The order dated 18 September 2018 and communication dated 8 January 2019 are, accordingly, quashed and set aside. Application No. 2665269 of the appellant is remanded for de novo consideration by the office of the Trade Marks Registry, to be assigned to a competent officer to take a decision on the application afresh.
11. The appellant shall be entitled to an opportunity of hearing before a decision is taken. The trade mark Registry would communicate the date of hearing to the appellant/applicant within one week from today and take a decision on the application positively within three weeks thereof.
12. The appeal stands allowed to the aforesaid extent.
C. HARI SHANKAR, J.
DECEMBER 5, 2023/dsn
Click here to check corrigendum, if any
1 36. Decision of Registrar.
(1) The decision of the Registrar under Rules 33, 34 or 41 shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.
—————
————————————————————
—————
————————————————————
C.A.(COMM.IPD-TM) 29/2021 Page 1 of 5