Trade Marks Act | Time Limit For Counter Statement To Notice Of Opposition Would Run From The Date Of Receipt Of E-Mail: Madras High Court
The Madras High Court recently observed that the time limit of two months prescribed under Section 21(2) of the Trade Marks Act 1999 for filing a counter-statement to a notice of opposition would run from the date of receipt of the E-mail and not from the date of sending the E-mail. While Section 21(2) of the Trade Marks Act says that the applicant should send the...
The Madras High Court recently observed that the time limit of two months prescribed under Section 21(2) of the Trade Marks Act 1999 for filing a counter-statement to a notice of opposition would run from the date of receipt of the E-mail and not from the date of sending the E-mail.
While Section 21(2) of the Trade Marks Act says that the applicant should send the counter-statement of the grounds for application within two months of “receipt of notice”, Rule 18(2) of the Trade Mark Rules 2017 says that the document would be deemed to be served at the time of sending the e-mail.
Justice Senthil Kumar Ramamoorthy said Rule 18 created a legal fiction with regard to service of notice and was not in consonance with Section 21(2) of the Act. Considering that the substantive right of an applicant was at stake, the court concluded that the time limit would run from the date of receipt of the email.
“Rule 18(2) incorporates a legal fiction with regard to service of notice by post and e-mail. As regards service of notice by e-mail, it provides that notice would be deemed to be served “at the time of sending the e-mail”. If construed literally, this would mean no more than proof of transmission of the e-mail. Especially in the context of the non-incorporation of the provision for deemed receipt in the statute, if so construed, Rule 18(2) would not be in consonance with Section 21(2) which provides that the time limit for filing the counter statement would run from the date of receipt by the applicant of the notice of opposition,” the court observed.
The court was hearing pleas by Ramya S Moorthy, against an order of the Registrar of Trade Marks by which her application for registration of relevant marks was deemed to be abandoned. Ramya informed the court that she filed the applications on February 2, 2022 and on March 8, 2022, she was notified of the examination report with respect to the applications and subsequently advertised on September 12, 2022.
Ramya informed the court that while so, on January 12, 2023, an opposition was filed and though the Trade Mark registry asserted that the notice of opposition was electronically transmitted to her on January 19, 2023 she did not receive the same and since no counter statement was filed within the prescribed time limit, the application was deemed to have been abandoned.
Ramya contended that as per Section 21 of the Act, the clock started ticking only upon receipt of copy of notice, and since the same had not been received, the conclusion that the application was abandoned was untenable. It was also submitted that the document relied upon by the registry indicating transmission of notice did not evidence the receipt of the notice.
On the other hand, the Special Panel Counsel, relying upon Rule 17 and 18 of the Trade Mark Rules contented that the notice was deemed to be served on the email address provided by the applicant upon dispatching the e-mail.
The court however agreed with the applicant and concluded that the document relied upon by the Registry would not qualify as evidence of receipt of notice. Thus, the court quashed the impugned orders and remanded the matter for reconsideration by the Registrar. The court also directed the applicant to file counter statement to the notice within one month.
Counsel for Petitioner: Mr.Arun Karthik Mohan & Mr.Suhrith Parthasarathy
Counsel for Respondent: Mr.S.Janarthanam, Special Panel Ccounsel
Citation: 2023 LiveLaw (Mad) 276
Case Title: Ramya S Moorthy v Registrar of Trade Marks
Case No: W.P.(IPD).No.3 of 2023