Trade Marks Registrar Must Pass Speaking Order With Reasons While Adjudicating On Application For Registration Of Trade Mark Assignment: Bombay High Court

The Bombay High Court recently held that the Trade Marks Registrar cannot record the name of an assignee in the Register without passing a speaking order on the application for registration of assignment of trademark after considering objections and recording reasons.

Justice RI Chagla ruled in favour of Electronica India Ltd., setting aside the decision of the Trade Marks Registry to allow the registration of assignment of “Electronica” trademarks in favour of Electronica Hitech Machines Pvt. Ltd. without any speaking order.

The court found that there was no formal order passed by the Trade Marks Registry on the Electronica Hitech's application for trademark registration.

“The impugned orders/communications of the Respondent No. 2-Registrar of the Trade Marks, Mumbai allowing the requests of Respondent No. 1 in Form TM-24 are set aside. The Respondent No. 2 (Registry) shall consider the applications in Form TM-24 de novo after granting the Petitioner an opportunity of being heard and thereafter, passing a speaking order on the requests of the 1st Respondent in Form TM-24 which shall be in conformity with Section 45 of the Trade Marks Act, 1999”, the court directed.

The petitioner Electronica India Ltd. (Electronica India) filed two petitions challenging the decisions of the Trade Marks Registry to allow Form TM-24 applications submitted by the respondent Electronica Hitech Machines Pvt. Ltd. (Electronica Hitech). These applications, filed in 2015, sought to record Electronica Hitech as the proprietor of the trademarks in question.

In 2018, petitioner Electronica India had filed an objection to respondent Electronica Hitech's applications before the Trademark Registrar. The petitioner came to learn from the status page in respect of the Trade Marks that vide orders dated January 25, 2018, the applications on Form TM-24 filed by the respondent were allowed. However, the copy of the said orders was not uploaded on the status page.

Advocate Hiren Kamod for the petitioner argued that the lack of a formal order raised several questions. The online status for the concerned trademarks indicated approval of the TM-24 applications as of January 25, 2018, yet no corresponding order was available, he said. Further, a communication dated May 18, 2018, was issued in response to an RTI request, but no order dated January 25, 2018, was made available, he said. He added that there were two different versions of this communication, bearing different signatures, and there is no explanation as to how multiple orders could have been passed by allowing the same request.

Advocate Yashodeep Deshmukh for the Trade Marks Registry confirmed that no formal order had been passed, and only a communication indicating the acceptance of the TM-24 applications existed.

Upon review, the court held that the Registry abdicated its duty under Section 45 of the Trade Marks Act, 1999.

The Registrar of Trade Marks is required to follow due process upon receiving an application for trademark assignment or transmission. This includes potentially requesting the applicant to provide proof of title if there is any doubt about the validity of the statements or documents submitted. The Registrar can only register the applicant as the proprietor of the trademark after being satisfied with the provided evidence and must record the details of the assignment or transmission in the register.

The court found that the Registrar's handling of the case did not meet the requirements of Section 45 and Rule 77 of the Trade Marks Rules, which mandate a thorough verification process and proper documentation. The Registrar had previously asked Electronica Hitch to file an affidavit regarding pending proceedings related to the trademark, which it complied with on July 10, 2017, stating no such proceedings existed. However, this was not adequately scrutinized, the court said.

Further, ongoing litigation in the Pune District Court involves the trademark "Electronica." An interim relief granted to Electronica Hitech was later overturned, and the case is pending trial to determine its title to the trademark. The petitioner argued that the respondent should have disclosed these proceedings to the Registrar, allowing for a more informed decision.

The court emphasized that the decision to allow the TM-24 applications required a formal, reasoned order. It highlighted the necessity for the Trade Marks Registry to adhere to principles of natural justice by providing a proper hearing and issuing a speaking order.

The court decided to set aside the Registrar's previous communications and remand the case for fresh consideration, ensuring the petitioner Electronica India could be heard and a proper order issued. The court rejected Electronica Hitech's argument that merely administrative changes were required following the transmission of the trademark from a partnership to a company.

Case no. – Commercial Miscellaneous Petition Nos. 47 & 51 of 2022

Case title – Electronica India Ltd. v. Electronica Hitech Machines Pvt. Ltd. & Anr.