Intellectual Property Rights | Trade Mark | Uncategorized

Intellectual Property Attorneys Association v. The Controller Genreral of Patents, Designs & Trade Marks & Anr.

Intellectual Property Attorneys Association v. The Controller Genreral of Patents, Designs & Trade Marks & Anr.

 2019 (80) PTC 486 (Del)

Delhi High Court

Aggrieved by the practice of the Trade Marks Office of not giving speaking orders toward srefusal of trade mark registration and thereafter relying upon Rule 36 of the Trade Marks Rules, 2017 in support of such practice, the Intellectual Property Attorneys Association filed a Writ Petition before the Hon’ble High Court of Delhi and relied upon Section 18 (5) of the Trade Marks Act, 1999 which mandates  the Learned Registrar to record in writing the grounds for refusal or conditional acceptance and the materials used by him in arriving at his decision.

The Petitioner also informed the Hon’ble Court that Rule 36 of the Trade Marks Rules, 2017  states that the Learned Registrar shall communicate the decision in writing to the applicant and if the applicant intends to appeal from such decision, he may apply within 30 days in Form TM-M to the Registrar whereupon the grounds of refusal/conditional acceptance shall be furnished.

The contention of the Petitioner was that Rule 36 is inconsistent with the mandatory provision of Section 18(5) of the Trade Marks Act and the Registrar of Trade Marks should be directed to send the copy of the order containing the grounds of refusal/conditional acceptance to the application.

The Hon’ble Court allowed the writ petition and held that:

  • The Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act, 1999 containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant.
  • Rule 36 of the Trade Marks Rules, 2017 is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance.
  • Section 18(5) of the Trade Marks Act, 1999 shall prevail over Rule 36 of the Trade Marks Rules, 2017.
  • Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act, 1999 by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.

Author’s Comments: Rule 36 has no positive purpose for a Trade Mark Applicant. It only ensures increase in revenue for the Government. Trade Marks Examiners deal with multiple trade mark applications in a day. Therefore, any time lag from the date of decision to the date of providing reasons can hamper the reasoning for refusal. This is because the exact reason for refusal may not be remembered by the Examiner/Registrar at a subsequent point in time and the exercise will have a propensity to become mechanical. In light of the same, the decision is a welcome move and would end up further streamlining the practice of the Trade Marks Office.

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