The petitioner, Coaster Shoes Company Pvt. Ltd., filed a writ petition seeking the quashing of an order passed by the Registrar of Trade Marks in October 2022, which abandoned their trademark opposition.
The petitioner had opposed the trademark applications of Respondent No. 2 for the mark “Travel Fox,” alleging its similarity to Coaster Shoes’ own registered mark, TRAVEL FOX. Despite filing the notice of opposition and following due process, the petitioner claimed that the counter statement from the respondent was never served on them, though a copy of the same was uploaded on the website of the Registrar of Trade Marks. After a lengthy follow-up, including multiple letters and attempts to obtain the counter statement between 2015 and 2022, the petitioner, as a due diligent measure, filed the evidence in support of opposition with the Registrar of Trade Marks by way of an affidavit on November 22, 2018, and also served a copy on Respondent No. 2. Following this, a letter in lieu of evidence in support of application was filed by Respondent No. 2 on January 2, 2019, and a letter in lieu of evidence in reply was filed by the petitioner on January 10, 2019.
Thereafter, the petitioner received a notice regarding the appointment of a hearing in respect of the opposition proceedings. During the course of the hearing, detailed arguments were advanced on merits, and various case laws and authorities were cited before the Registrar of Trade Marks. Despite this, without going into the merits of the case, the Registrar of Trade Marks abandoned the oppositions filed by the petitioner solely on the ground that the petitioner did not file their evidence in support of the opposition in time.
In view thereof, the petitioner filed an RTI request raising specific questions regarding the purported service of the counter statement. Vide its letter dated December 19, 2022, the Registrar of Trade Marks responded to the question of service of the counter statement and the proof of its delivery upon the petitioner by stating that “No such information found in the available record.”
In these circumstances, the petitioner moved to court, arguing that the Registrar had wrongfully deemed their opposition abandoned due to the procedural failure of service by the Trade Marks Office.
The Registrar of Trade Marks, countered that the counter statement had been served, citing internal records from the Registrar and postal receipts showing dispatch in 2012. The court examined these arguments but noted the absence of any clear and cogent evidence proving actual delivery to the petitioner. There was no receipt from the postal authority to show that there had been a dispatch and/or receipt of the counter statement by the petitioner.
The court emphasized that statutory procedures in trademark opposition must be adhered to strictly, particularly when a party’s rights are at stake. It acknowledged the petitioner’s due diligence in filing their evidence despite not having received the counter statement. Given the lack of proof of service and procedural gaps, the court set aside the impugned order and directed the Registrar to reopen the opposition proceedings by taking the evidence in support of the opposition filed by the petitioner.
Trademark owners engaged in opposition proceedings should ensure that all procedural steps are meticulously followed, including verifying the receipt of key documents. Filing evidence promptly and maintaining clear records of correspondence can safeguard against procedural missteps by the IP office.
COMMERCIAL MISCELLANEOUS PETITION (L) NO. 4309 OF 2023; 2024: BHC-OS: 13607 Coaster Shoes Company Pvt. Ltd. vs. Registrar of Trade Marks, Bombay High Court
R.I. CHAGLA, J.
August 16, 2024
Raja Selvam
Founder & Managing Attorney, Selvam & Selvam | Practice areas include Trademarks, Patents, Domain names & Business law. Visiting faculty, Department of Journalism, Madras University where I teach copyrights & trademarks law. Passionate about entrepreneurship, start-ups, stocks, farming, technology and law.
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