Ramya S.Moorthy vs. the Registrar of Trade Marks

When a trademark application is filed and subsequently accepted by the Trademark Office, it doesn’t mean an immediate registration. Instead, the accepted application is published in the Trademarks Journal for third parties, who might have concerns or disputes about the trademark, to come forward and oppose the application.

Trademark Oppositions: If a third party files an opposition with the Trademark Office, it is a mandatory requirement of the Trademark Office to communicate the same to the applicant. This communication is important as it allows the applicant to prepare a counter-statement, essentially their defense or reply to the opposition.

Earlier, the Trademark Office used traditional means like postal mail to serve the notice of opposition to the applicant. However, with the amendment of the Trademark Rules in 2017, the communication methods were expanded. With the introduction of email as a mode of service, the Trademark Office began sending the notice of opposition via email to the legal representative/counsel/applicant. To ensure a record of this email and its delivery, the Trademark Office also sends a carbon copy (cc) to one of their own internal email addresses.

Challenges with Email Service: While email offers a rapid and efficient mode of communication, it isn’t without its challenges. Due to the sheer volume of emails dispatched by the Trademark Office, many of these emails are flagged by email servers as potential spam. Consequently, these emails are directed to the recipient’s spam folder. Although whitelisting specific email addresses can prevent this misdirection, many individuals are either unaware of this feature or don’t utilize it. In past situations, the Trademark Office’s stance has been quite firm: if the internal copy of the email (sent for tracking purposes) is received without any glitches, they consider the email as successfully delivered to the applicant. This perspective is flawed, as delivery success between internal servers doesn’t guarantee successful delivery to external servers, which are influenced by various uncontrollable factors. Faced with such rigid standpoints, many applicants find their only recourse is to seek legal intervention, often approaching the High Court.

Ramya S.Moorthy vs. the Registrar of Trade Marks: In this particular case, the petitioner, Ramya S. Moorthy, contested that her application was wrongly abandoned by the Trademark Office since she hasn’t received the notice of opposition and hence couldn’t file a counter-statement on time. In defense, the Trademark Office cited Rules 17 and 18 of the Trade Marks Rules, 2017. They argued that the NOP was duly dispatched to the provided email address. They further stressed that, according to the rules, an email is considered successfully served once it’s sent, emphasizing that their internal tracking showed the email status as “success”.

The Court looked into the following legal provisions.

Section 21 (2) of the Trademarks Act 1999: The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.”

Rule 18 of the Trademarks Rules 2017: Service of Documents by the Registrar.

(1) All communications and documents in relation to an application or opposition matter or registered trademark may be served by the Registrar by leaving them at or sending them by post to the address for service of the party concerned or by email communication.

Any communication or document so sent shall be deemed to have been served, at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the email.

To prove such service, it shall be sufficient to prove that the letter was properly addressed and put into the post, or the email communication was sent to the email id provided by the party concerned.

The High Court, in its deliberation, addressed the specifics of Rule 18. It highlighted that if Rule 18 is strictly interpreted in its literal sense, it would merely require proof that an email was transmitted, not necessarily that it was received by the intended recipient. This interpretation seems to be at odds with Section 21(2) of the statute. Section 21(2) states that the countdown for the time limit to file a counter-statement begins only from the date the applicant actually receives the notice of opposition.

Furthermore, the Court emphasized the gravity of the situation by pointing out that at the core of these technicalities lies the substantive right of an individual seeking to register a trademark. Their right could be potentially infringed upon by mere logistical oversights in email delivery.

Given these considerations, the Court arrived at the judgment that the stipulated time limit for an applicant to file their counter-statement should commence only from the actual date they receive the opposition email. The document that the Registrar of Trade Marks was relying on as proof was deemed insufficient to validate the receipt of the email by the petitioner, Ms. Ramya S. Moorthy.

In light of these findings, the Court set aside the orders of the Trademark Office abandoning the applications and ordered the reinstated the same before the Trademark office. The petitioner was granted a time frame of one month from the date of receiving the Court’s order to file her counter-statement. Following this, the Trademark Office is expected to proceed further with the opposition on its merits.

The decision handed down by the High Court is timely and significant. The reliance of the Trademark Office on emails as the primary mode of service, despite the inherent risks of such emails landing in spam folders, underscores the necessity for such a ruling. It’s evident that there’s a need for the Trademark Office to innovate their notification system. A more foolproof method could be to send email notifications that redirect users to the Trademark Office’s website (assuming its functionality is consistent and reliable), where user activities like reading and acknowledging notices can be tracked and recorded with precision. This method would offer a more transparent and verifiable mechanism, reducing disputes arising from undelivered or unnoticed emails.