Providing Email ID In Notice Of Opposition Constitutes ‘Address For Service’ Under Section 143 Trade Marks Act: Delhi High Court
The Delhi High Court has held that where an applicant or opponent provides an e-mail ID, on which official communication are sent by the Registry of Trade Marks, in the application or notice of opposition constitutes an “address for service” within the meaning of Section 143 of the Trade Marks Act.Justice C Hari Shankar added that the Registry of Trade Marks is at liberty to effect service...
The Delhi High Court has held that where an applicant or opponent provides an e-mail ID, on which official communication are sent by the Registry of Trade Marks, in the application or notice of opposition constitutes an “address for service” within the meaning of Section 143 of the Trade Marks Act.
Justice C Hari Shankar added that the Registry of Trade Marks is at liberty to effect service of documents by e-mail only where the party being served has provided an e-mail ID in the application or notice of opposition.
“In the event that an e-mail ID is provided by an applicant or an opponent in the notice of opposition, I do not think that there can be any manner of doubt that service of documents relating to the application or the notice of opposition at the said e-mail ID would suffice as service within the meaning of Section 143 of the Trade Marks Act,” the court said.
It added that by providing the e-mail ID in the application or notice of opposition, the applicant or opponent clearly agrees to communications be addressed at the said e-mail address.
Section 143 of the Trade Marks Act states that “an address for service stated in an application or notice of opposition shall be deemed to be the address of the applicant or opponent, and all documents may be served by leaving them at or sending them by post to the address for service of the applicant or opponent, as the case may be.”
Justice Shankar said that the words “leaving them at” as employed in the provision have to be read expansively enough to cover service by e-mail ID provided by the applicant or the opponent in the application or notice of opposition.
“In other words, if the applicant or the opponent provides an e-mail ID in the application or notice of opposition, it would not be open to the applicant/opponent to then argue that, though the documents relating to the application or the notice of opposition were sent by e-mail to the said e-mail ID, there has, nonetheless, been no service within the meaning of Section 143 of the Trade Marks Act,” the court said.
However, Justice Shankar clarified that where no e-mail ID is provided, then sending documents by e-mail, even if it is sent to the e-mail ID of the party concerned, would not constitute service of documents.
“The reason is that it is entirely up to the applicant, or the opponent, to choose the address at which he desires official communications, from the Registry of Trade Marks, to be addressed to him. There is no statutorily or legal compulsion on the applicant, or opponent, to provide an email ID for service,” the court said.
It added that if the rules were to require any email ID to be provided by the party, then undoubtedly the party would be mandatorily required to do so. However, the court said that where the rule does not so require, the decision as to the address at which the party desires to be served vests with the party concerned.
“In view of the express wordings of Section 143 of the Trade Marks Act, the Registry would be duty-bound to effect service only at such address, and effecting service or any other address would not be service at all,” the court said.
Justice Shankar made the observations while allowing an appeal moved by an entity challenging an order passed by the Deputy Registrar of Trade Marks in its opposition application filed to another entity’s application seeking registration of the mark “ARMEX.”
The impugned order treated the opposition as abandoned as no evidence in support of the opposition was filed within the stipulated time from the date of service of the documents by e- mail.
Setting aside the impugned order, the court said that it was not in dispute that no e-mail ID was provided by the appellant entity in its notice of opposition.
“As such, it cannot be said that the e-mail ID at which the documents were sent by the Registry constitutes an “address for service” within the meaning of Section 143 of the Trade Marks Act,” the court said.
“As, in the present case, the petitioner did not provide any email ID for communication in its notice of opposition, and it is not disputed that the counter statement was dispatched to the petitioner only by email, the petitioner cannot be said to have been properly served with the counter statement, as envisaged by Section 143 of the Trade Marks Act,” the court said.
Counsel for Appellant: Ms. Zeba Tarannum Khan and Ms. Sheril Bhatia, Advs.
Counsel for Respondent: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday, Mr. M Sriram and Mr. Krishnan V, Advs.
Title: M/S MEX SWITCHGEARS PVT. LTD. 9TH KILOMETER, MEX ESTATE, PATHANKOT ROAD, JALANDHAR v. VIKRAM SURI TRADING AS M/S ARMEX AUTO INDUSTRIES
Citation: 2023 LiveLaw (Del) 1000