August 21 2023 0Comment

Madras High Court Allowed The Appellate Order Filed By Gold Medal Pipe By Sending It To Trademark Registrar For a Merit-Based Decision

Gold Medal Pipe filed an appeal before the Madras High Court against the order passed on 09th August 2019; regarding the appellate’s trademark registration in class 19 concerning the non-metallic building materials, non-metallic rigid pipes for buildings and similar products.

The appellant’s opposition was assumed to be abandoned by the impugned order, even though the appellant had first challenged the order before the Intellectual Property Appellate Board. The contested ruling was stayed by an order dated October 16, 2020, and the order of stay is still in effect as of that date. A certificate of registration has been given to the appellant in the interim.

The primary justification for the impugned order was that the appellant sent a communication dated October 5, 2017, to the Mumbai Office of the Trademarks Registry instead of the Chennai Office, stating that the appellant/opponent does not wish to rely on evidence in support of the notice of opposition but intends to rely on arguments made in the notice of opposition. In those circumstances, the opposition was deemed abandoned using Rule 8 of the Trademarks Rules, 2017 (the Trademarks Rules) and Rule 45(2).

The second respondent’s counterstatement was given to the appellant on September 27, 2017, according to learned counsel for the appellant. The Trademarks Registry sent the aforementioned rebuttal statement to the appellant, and the email containing it had the email address for the Mumbai office of the Trademarks Registry.

Therefore, as mentioned earlier, the appellant/opponent informed the email address of the Mumbai Office by email dated October 5, 2017, that it did not wish to file evidence in support of the opposition but intended to depend on arguments expressed in the notice of opposition. The learned counsel added that a similar message, with the date of October 5, 2017, was sent on behalf of the second respondent/applicant. He claimed that as a result, the notice of opposition and the counter statement were relied upon instead of the evidence by each party.

Learned counsel also noted that trademark application No. 2573910 in class 11 experienced the same situation. An order was passed recognising the opposition as abandoned when the appellant sent a similar letter declaring it did not intend to rely on evidence.

The knowledgeable attorney further emphasised that the appellant filed an infringement case against the second respondent before the Delhi District Court and that an order of interim injunction is now in effect in the said matter. The appellant’s skilled counsel argued that the impugned order is unjustifiable and that Rule 45 of the Trademarks Rules does not apply to the appellant’s opposition, which should not be treated as abandoned.

The present appeal was brought roughly six months after the second respondent was awarded a registration certificate, according to the learned counsel for the second respondent, who responded to these claims by claiming that it was tardy. The appeal is infructuous and should have only been filed as a rectification petition, according to skilled counsel, who also argued that a registration certificate had already been obtained. Expert legal counsel further argued that all notices, statements, or other documents must be delivered to the correct office of the Trademarks Registry under the Trademarks Rules.

Learned counsel argued that the relevant office in this instance is the Chennai Office of the Trademarks Registry by citing Rules 4 to 8 of the Trademarks Rules.

Since the email from October 5, 2017, was undoubtedly submitted to the Mumbai Office of the Trademarks Registry, the appellant’s resistance may have been abandoned under Rule 45(2), according to the learned counsel. The second respondent’s leaning counsel also drew my attention to Section 21(1), which specifies that the opposition must be filed in the designated way.

It is clear from the opposing arguments that Section 21 of the Trademarks Act and Rule 45 of the Trademarks Rules play a significant role in the case. While Section 21(2) specifies what happens if a counter statement is not submitted in response to an opposition notice, it does not specify what happens if evidence is not presented.

The record shows that the appellant sent correspondence on October 5, 2017, addressed to the Registrar of Trademarks in Chennai, but forwarded to, the email address of the Trademarks Registry in Mumbai. The sending of this message to the Mumbai Office is the primary justification given by the contested order for treating the opposition as abandoned.

While Rule 8 states that notices and documents must be delivered to or sent to the proper office, in this case, the Chennai Office, there has been substantial compliance with Rule 45(1), given the fact that the appellant addressed the communication to the Trademarks Office, Chennai, even though it was sent to the Mumbai Office of the Trademarks Registry’s e-mail address. Additionally, it should be noted that the Trademark A.No.2573910 appeal was likewise upheld based on very identical facts and circumstances. For the grounds outlined above, (T)CMA(TM)/103/2023 is granted, the contested order is vacated, and the case is returned to the Registrar of Trademarks for further review.

Within three months of receiving a copy of this order, the Registrar of Trademarks must give each party a fair chance to be heard and make a merits-based decision. The second respondent shall only rely on the registration of Trademark No. 2826665 once the matter is decided on the merits and shall be subject to such determination. There won’t be a cost-related order.


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