2013 (7) TMI 326 - HC - Indian Laws

Court Rules in Favor of Petitioner Seeking Trademark Registration

The court ruled in favor of the petitioner, a body corporate seeking registration of a trade mark 'CMA' in class 41. The court held that the respondents' ... Communication in writing - abandonment for lack of prosecution - Rule 38(4) and (5) of the Trade Marks Rules, 2002 - applicant's knowledge of office communicationCommunication in writing - Rule 38(4) and (5) of the Trade Marks Rules, 2002 - applicant's knowledge of office communication - Whether posting an examination report/letter on the Registrar's website constitutes communication 'in writing' to the applicant under Rule 38(4), thereby triggering abandonment under Rule 38(5). - HELD THAT: - The Court held that Rule 38(4) obliges the Registrar to communicate any objection or proposal in writing to the applicant. Mere placement of the examination report on the Registrar's website does not satisfy that obligation. There was no evidence that Rule 38(4) or any practice or rule required the applicant to inspect the website regularly or that the applicant was bound to take notice of material posted there. Consequently the petitioner could not be imputed with knowledge of the letter dated 19.09.2011 until it actually became aware of the posting on 13.03.2012. Since the petitioner, within one month of noticing the posting, applied for a hearing, the conditions for deeming the application abandoned under Rule 38(5) were not met. [Paras 9, 10]Posting the examination report on the website did not amount to communication in writing under Rule 38(4); the application for registration was not deemed abandoned under Rule 38(5).Abandonment for lack of prosecution - applicant's remedy of hearing - Whether the petitioner's application for registration had been abandoned for lack of prosecution and whether a hearing ought to be fixed upon the petitioner's request. - HELD THAT: - Given the Court's finding that the petitioner only became aware of the examination report when it accessed the Registrar's website on 13.03.2012, and that the petitioner sought a hearing within one month thereafter, the statutory precondition for deeming the application abandoned was not satisfied. The petitioner's exercise of the option to furnish objections and to apply for a hearing was timely, and the Registrar's denial to fix a hearing was inconsistent with that position. [Paras 10, 11]The petitioner's application for registration in Class 41 has not been abandoned and a hearing ought to be afforded in accordance with the request made within one month of actual notice.Final Conclusion: The writ petition is allowed: it is declared that the petitioner's trade mark application in Class 41 has not been abandoned; the Registrar must proceed to fix a hearing pursuant to the petitioner's timely request; no order as to costs. Issues:1. Failure to fix a date of hearing for registration of a trade mark 'CMA' in class 41.2. Communication of objections or proposals in writing to the applicant under Rule 38 of the Trade Marks Rules, 2002.Issue 1: The petitioner, a body corporate under The Institute of Cost and Works Accountants Act, 1959, sought a writ of mandamus directing the Registrar of Trade Marks to fix a date of hearing for its application for registration of the trade mark 'CMA' in class 41. Despite several enquiries, the petitioner did not receive any response from the respondents regarding its application for registration, hindering its ability to provide training and award degrees. The petitioner discovered an examination report on the respondents' website, dated 19.09.2011, raising objections to the application and requiring a response within one month to avoid abandonment under section 132 of the Trade Marks Act, 1999. However, this report was not directly communicated to the petitioner or its advocates but was only posted on the website.Issue 2: Rule 38 of the Trade Marks Rules, 2002 mandates that any objection or proposal be communicated in writing to the applicant. The court held that the mere posting of the objection on the website did not fulfill the requirement of written communication under Rule 38(4). The respondents failed to communicate the objections in writing to the petitioner, and there was no legal obligation for the petitioner to inspect the website regularly. The court emphasized that Rule 38(4) does not impose a duty on the applicant to monitor the respondents' website. As the petitioner only became aware of the objection on 13.03.2012 when it was noticed on the website, within one month, the petitioner's advocate applied for a hearing, which was denied. Consequently, the court declared that the petitioner's application for registration had not been abandoned and disposed of the writ petition in favor of the petitioner.In conclusion, the judgment highlighted the importance of proper communication of objections or proposals in writing to applicants under Rule 38 of the Trade Marks Rules, 2002, emphasizing that posting on a website does not suffice as written communication. The court's decision protected the petitioner's rights by ensuring that the application for registration was not deemed abandoned due to the lack of proper communication by the respondents.