Application U/s. 21(2) Trade Marks Act Cannot Be Treated As Abandoned If Format Requiring Filing Of Counter Statement Was Revised: Madras HC

Finding that the only reason for treating the trademark application as abandoned is the filing of the counter statement in the revised form TM-O on Nov 06, 2017, the Madras High Court quashed the order dated July 11, 2018 and directed the respondents to consider Application No.3053314 on merits after providing a reasonable opportunity to the petitioner and the third respondent.

A Single Judge Bench of Justice Senthilkumar Ramamoorthy observed that “the petitioner has duly complied with the obligation imposed under Section 21(2) of the Trade Marks Act. Especially in view of the incorporation of a legal fiction therein, which has the effect of defeating a substantive right of the petitioner, the petitioner's application should not have been treated as abandoned merely because the format in which the counter statement should be filed was revised under the 2017 Rules”.

Advocate A. Umapathy appeared for the Petitioner, whereas Advocate P.R Ramesh Babu appeared for the Respondent.

The brief facts of the case were that the petitioner is engaged in the business of manufacturing and selling a bakery product under the mark “PAYYOLI MIXTURE”. The petitioner applied for registration of the aforesaid mark in Class 30 under Application No.3053314 on Sep 11, 2015. Although the application was accepted, the third respondent filed Opposition, and upon receipt of same, the Registrar of Trade Marks issued a notice to the agent of the petitioner calling upon the petitioner to file its counter statement in Form TM-6, which was the prescribed form under the Trade Marks Rules, 2002. In compliance with such direction, the petitioner filed the counter statement in Form TM-6 on Sep 02, 2017. On receipt thereof, the Registrar of Trade Marks returned the counter statement on the ground that the format had changed in view of the entry into force of the Trade Marks Rules, 2017. In those circumstances, the petitioner filed the counter statement in Form TM-O. However, the application of the petitioner for registration of its trademark was deemed to be abandoned.

After considering the submission, the Bench found from the text of Section 21(2), that the time limit of two months runs from the date of receipt of the notice of opposition by the applicant.

“The documents on record indicate conclusively that the notice dated 12.04.2017 was dispatched to the petitioner by speed post on 14.07.2017. In fact, the impugned order records that the counter statement ought to have been filed on or before 21.09.2017. The petitioner has placed a copy of the counter statement on record. Such counter statement is dated 01.09.2017 and has been filed in the Trade Marks Registry on 02.09.2017”, added the Bench.

Further, the Bench noted that in compliance of the notice dated Apr 12, 2017 calling upon the petitioner to file the counter statement in Form TM-6, the petitioner filed the counter statement in Form TM-6 on Sep 02, 2017.

Accordingly, the High Court allowed the petition.

Cause Title: N.C Nanu v. Registrar of Trademarks and Ors. [Neutral Citation: 2023: MHC: 3982]

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