OBLIGATION OF REGISTRAR OF TRADE MARKS TO SEND COMMUNICATION OF OBJECTIONS TO THE APPLICANT FOR REGISTRATION OF A TRADE MARK

[Mr. M. GOVINDARAJAN]

In writ petition No. 2088/2012 – The Institute of Cost Accountants of India V. Registrar of trade marks and another 2013 (7) TMI 326 - BOMBAY HIGH COURT, decided by the Bombay High Court on 01.03.2013, the petitioner is the statutory body created under the Institute of Cost and Works Accountants Act, 1959.   The petitioner applied for registration on 01.10.2010 with the Registrar of Trade marks for registration of trade mark CMA.   Since no communication has been received from the Registrar, the petitioner wrote a letter dated 30.03.2011 intimating that it had not received any response from the respondents in respect of its application for registration despite several enquiries having been made from time to time that as a result thereof, it was unable to provide training and award degrees/certificates on the newest branches of management and accountancy.

On 13.03.2012, the petitioner noticed on the respondents’ web site a letter/examination report dated 19.10.2011 from respondent No.1 to its Advocate in Kolkata stating that its application had been examined under the Trade Marks Act, 1999 and Trade Mark Rules, 2002 and that the mark was open to objection for the reasons mentioned therein. The petitioner was requested to submit its response within one month from the date of receipt of the said letter/examination report or to apply for a hearing. It was further stated in that letter that if no reply was received or a request for a hearing was not applied for, the application would be treated as having been abandoned for lack of prosecution under Section 132 of the Act.

Section 132 of the Trade Marks Act, 1999 provides that where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within a time specified and after giving him, if so, desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice.

The said letter was not forwarded to the petitioner but it was placed on the web site of the respondent.   The petitioner requested the respondents to treat the date of downloading from the website as the date of petitioner’s knowledge of the order contained in the said letter/examination report dated 19.09.2011 and exercised the option for furnishing the objects and applied for a hearing. But the Registrar refused to grant a hearing.   Therefore the petitioner filed this writ petition before the High Court.

The High Court perused the provisions of Rule 38 of Trade Mark Rules, 2002. Rule 38 deals with expedited examination, objection to acceptance, hearing.

Rule 38(1) provides that after the receipt of the official number of an application under sub-rule (1) of rule 37, an applicant may request for expedited examination of an application for registration of a trade mark in Form TM-63 together with a declaration stating the reason for the request, on payment of five times the application fee.

Rule 38 (2) provides that if the Registrar is satisfied on the basis of declaration filed under sub-rule (1) that an expedited examination of the application is warranted, he shall cause the expedited examination of such application in the order in which the requests are filed and may ordinarily issue the examination report within three months of the date of such request.

Rule 38 (3) provides that where the Registrar declines the request under sub-rule (1), the applicant shall be entitled to have the fee refunded:

Provided that before declining any such request, the Registrar shall provide the applicant an opportunity of being heard.

Rule 38 (4) provides that if on consideration of an application for registration of a trade mark or on an application for an expedited examination of an application referred to in sub-rule (1) and any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, amendments, modifications or limitations as he may think right to impose under sub-section (4) of section 18, the Registrar shall communicate such objection or proposal in writing to the applicant.

Rule 38 (5) provides that if within one month from the date of communication mentioned in sub-rule (4), the applicant fails to amend his application according to the proposal or fails to submit his observations to the Registrar or apply for a hearing or fails to attend the hearing, the application shall be deemed to have been abandoned.

As such, the High Court observed that the respondent was bound to communicate any objection or proposal in writing to the applicant.   The Registrar of Trade marks admittedly did not do so. Placing the notice in the website does not constitute compliance with that Rule 38(4) of the Trade Mark Rules, 2002.   Further the Registrar of Trade marks have not indicated anything that obliged the petitioner to inspect the website on a daily basis.   Nor did they indicate any rule or practice by which the petitioner was bound legally to take notice of anything that is posed on the respondent’s website.

Rule 38(4) by itself does not require an applicant for registration to inspect the respondents’ website.   The petitioner therefore cannot be imputed with the knowledge of the letter of the respondent dated 19.09.2011.   The High Court held that the mere posting of the letter on the web site does not constitute communication of the objection or proposal in writing as required by Rule 38(4). The letter dated 19.09.2011, at the highest, can be said to have been communicated to the petitioner only on the date on which the petitioner noticed it on the website that is on 13.03.2012. Within one month from the date of knowledge the petitioner applied for a hearing on 30.03.2012 which he has been denied. The High Court held that the petitioner’s application for registration cannot therefore deem to have been abandoned.