In an earlier blog, we discussed the significance of the Madras High Court’s decision in the case of Ramya S. Moorthy vs. The Registrar of Trade Marks, wherein the Applicant failed to receive the email service of the opposition notice from the Trademark Registry and, as a result, did not file the counter-statement within the allotted timeframe. The Court observed that the document presented by the Trademark Registry proved successful dispatch of the email, but failed to prove receipt of the email by the Applicant. Since the Applicant did not receive the opposition notice from the Trademark Registry, the Court opined that their timeline to file the counter-statement had not commenced. In sum, the Court held that the Applicant’s rights were at stake and should not be prejudiced due to the unreliability of emails and, consequently, allowed the Applicant to file the counter-statement.

This ruling certainly grants relief to parties whose rights may have been adversely affected due to a missed deadline caused by technological uncertainties. However, it also brings to light the limitations of using email communication for effecting service. The Court’s view that the document submitted by the Trademark Registry is insufficient to prove actual receipt of an email, has paved the way for parties to use the argument of non-receipt as a tactic to overcome missed deadlines. To put it simply, the Court’s stance reaffirms that it is nearly impossible for the Trademark Registry to prove whether a party has received or failed to receive an email, due to the complex and intricate nature of the email communication method. As a result, parties to opposition proceedings can now claim they did not receive the email service from the Trademark Registry to avoid any consequences of a missed deadline. While the objective to include email communication as a means of service was due to its swiftness and efficiency to expedite the opposition process, this loophole is likely to cause further delays to the already long-time frame within which opposition proceedings take to conclude in India.

The facts surrounding one of our recent matters prove that despite the inclusion of electronic communications as a means of effectuating service, there continues to be significant delays during opposition proceedings. In this matter, the Opponent had failed to file the Evidence Affidavit in support of Opposition under Rule 45 (“Evidence Affidavit”) within the prescribed time, as they claimed to have not received the counter-statement or the notice thereto from the Trademark Registry. Subsequently, the Trademark Registry scheduled a delay hearing (“hearing”) to give the Opponent an opportunity to explain the cause for the delay. It is pertinent to mention that the Opponent received the email service of the hearing notice from the Trademark Registry without facing any technical issues. When the matter came up for hearing, the Opponent’s counsel submitted a screenshot image of their inbox to indicate they did not receive the email service from the Trademark Registry. Additionally, a sworn Affidavit from one of their employees who oversees the inbound and outbound emails was submitted, testifying that the email service was not received by them. The Hearing Officer accepted the sworn Affidavit and the explanation for the delay and directed the Trademark Registry to effectuate service once again. In effect, the Hearing Officer refused to treat the Opposition as abandoned. Evidently, the Hearing Officer overlooked the recent judgement passed in the case of Sun Pharma Laboratories Ltd. vs. Dabur India Ltd & Anr., (dealt with in detail in this blog), wherein the Delhi High Court held that deadlines during opposition proceedings could not be extended and that the Registrar does not have the discretionary powers to extend deadlines in such cases.

Setting aside the Hearing Officer’s oversight, the overall delay from the date of the first email service of counter-statement notice to the date of the hearing is 10 months. A reason that marked the beginning of the delay is the Opponent’s selective claim of receipt of notices from the Trademark Registry that only work to benefit their case. However, as affirmed by the Madras High Court, it is nearly impossible to ascertain if the Opponent’s claims are genuine, as email service can be unreliable. Moreover, the Opponent’s strategy of submitting a picture of their email inbox to indicate that they did not receive the email service, is not conclusive, as they simply could have deleted it from their inbox before the picture was taken. Similarly, while sworn Affidavits may be valuable in establishing facts, they are not foolproof and can still be subject to falsehoods. Moreover, in their submissions, the Opponent’s counsel had also cited several other matters wherein claiming non-receipt and filing sworn Affidavits had granted them a favorable order, thus, suggesting a concerning pattern wherein such sworn Affidavits were considered irrefutable.

A recent case filed before the Delhi High Court further proves that claiming non-receipt of email service and submitting sworn Affidavits are increasingly becoming the norm. In the case Bawa Masala Co Pvt Ltd vs. Bawa Masala Co & Anr., the Applicant filed the appeal, pursuant to the order passed by the Trademark Registry allowing the Opponent to file the Evidence Affidavit beyond the allotted time. To provide a brief background, the Opponent had failed to file the Evidence Affidavit, claiming non-receipt of the email service of the counter-statement and notice thereto from the Trademark Registry. To corroborate their claim, the Opponent submitted an Affidavit along with screenshots of their inbox to prove non-receipt of the email. The Registrar held that since it could not be adequately proved that the Opponent had received the email service from the Trademark Registry, the deadline to file the Evidence Affidavit did not commence. Accordingly, the Registrar allowed the Opponent to file the Evidence Affidavit. When the matter went up in appeal, the Court compared the presumption of service in the case of postal services to email services. The presumption of service for postal delivery is when a party submits the dispatch receipt to the correct address along with proof of delivery. However, this presumption of service is contestable, i.e., a party can counter that they did not receive the postal delivery by proving that the address was wrong. Similarly, for email delivery, the presumption of service is when the email has been dispatched to the correct address and in the absence of a bounce-back notification. Here, the presumption of service is contestable as well, owing to the fallibility of email communication. Accordingly, the Court upheld the Registrar’s decision and found that the Opponent had successfully proven through the Affidavit and screenshots of their inbox and records that they did not receive the email effecting service upon them.

The Court’s rationale may have been valid if the receipt of an email could be proven to have the same degree of reliability as postal delivery. For postal delivery, a party’s claim of delivery can be substantiated or challenged by relying on postal receipts, the tracking page, acknowledgement cards, etc. Given that they are generated / maintained by a third party such as a postal or delivery service, they cannot be tampered with or manipulated by parties to opposition proceedings. In contrast, for email delivery, the document which is relied on for determining service or lack thereof is a screenshot of the concerned party’s inbox, which can be easily manipulated, i.e., by deleting emails. Therefore, while email service may be more convenient, it is not as reliable as postal service.

Some may argue that the inclusion of email communication to effectuate service by the Trademark Registry has proven to be a valuable tool in modernizing the process. Others, however, view it as a potential loophole that could be exploited to overcome the consequences of a missed deadline caused by negligence. Nevertheless, it may be necessary for the Trademark Registry to explore more reliable methods of service that enable verification of their receipt. Until then, the issue of non-receipt remains a thorn in the side of the Trademark Registry and all parties involved in opposition proceedings.

Written By Vaniah Dominic