Rule 8 Of TM Rules 2017: Notices & Documents Should Be Delivered To Appropriate Office Only: Clarifies Madras HC
While hearing an appeal pertaining to validity of opposition to grant of trademark, the Madras High Court clarified that Rule 45(1) of the Trade Marks Rules, 2017 clearly indicated that the opponent had the option to adduce evidence, or communicate in writing to the Registrar and to the Applicant that the opponent did not seek to adduce evidence to support the opposition, but instead sought to rely on the facts stated in the notice to opposition.
A Single Judge Bench of Justice Senthilkumar Ramamoorthy observed that while Rule 8 specifies that notices and documents should be delivered or sent to the appropriate office, which was the Chennai office, the Appellant had made substantial compliance with Rule 45(1), although by transmitting the communication, addressed to the Chennai office, but transmitted to the email ID of the Mumbai office.
The Appellant was represented by Advocate Somnath De, whereas the Respondent was represented by Advocate N Ramesh.
Briefly, the Respondent-company had filed an application for registration of the trade mark Gold Medal Pipe in respect of of non-metallic building materials, non-metallic rigid pipes for buildings. Against such application, the Appellant had filed a notice of opposition. Subsequently an order came to be passed, abandoning the opposition of the Appellant to grant of trademark to the Respondent. On appeal, the Intellectual Property Appellate Board granted stay on the order. Meanwhile, a certificate of registration was issued to the Appellant.
The order abandoning the opposition to grant was because the Appellant submitted a communication to the Mumbai office, rather than to the Chennai Office of the Trade Marks Registry. In such communication, the Appellate stated that it did not wish to rely upon evidence in support of the notice of opposition, but intended to rely upon submissions made in the notice of opposition. As per Rule 8 of the Trade Marks Rules, 2017 (the Trade Marks Rules) and Rule 45(2) thereof, the opposition was treated as abandoned.
On considering the submission, the Bench observed that the mandate of Rules 8 and 45(1) had been complied with, in the sense that the Appellant had addressed the notice of opposition to the Chennai office of the Trade Marks Registry, but had inadvertently mailed it to the Mumbai office, through which, the notice reached the correct recipient.
Accordingly, the Bench quashed the order treating the opposition to grant of trademark as having been abandoned.
Cause Title: M/s. Goldmedal Electricals Pvt Ltd. v. Registrar of Trade Marks and Anr.
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