The clock on a counter-statement starts when you receive the opposition notice — not the moment the Trademark Office presses send. The Madras High Court read Section 21(2) of the Act to trump the “deemed served on sending” language of Rule 18.
The context
When an application is accepted and published, third parties may oppose it. If opposed, the Office must communicate the notice to the applicant, who then files a counter-statement. Since the 2017 Rules, email is an accepted service method (with internal copies for tracking). But email is imperfect: Office emails are often flagged as spam, and whitelisting is under-used — so the Office previously treated successful internal delivery as proof of service, which does not guarantee the applicant actually received it.
The clash of provisions
- Section 21(2) of the Trade Marks Act, 1999 gives the applicant two months “from the receipt by the applicant” of the notice to file a counter-statement, failing which the application is deemed abandoned.
- Rule 18 of the 2017 Rules says communication “shall be deemed to have been served… at the time of sending the email.”
One keys off receipt; the other off sending.
What the court held — Ramya S. Moorthy
In Ramya S. Moorthy v. Registrar of Trade Marks, the applicant said her application was wrongly abandoned because she never received the opposition notice. The Office relied on Rules 17 and 18 and its tracking showing “success.”
The Madras High Court held that Rule 18’s literal “on sending” reading conflicts with Section 21(2), which expressly requires actual receipt to start the deadline. A rule cannot override the parent Act. Proof of transmission is not proof of receipt, and the Registry’s evidence did not show Ms. Moorthy received the email.
The Court set aside the abandonment, reinstated the application, gave her one month to file the counter-statement, and directed the opposition to proceed on merits — stressing that substantive rights should not be lost to “mere logistical oversights in email delivery.”
Why it matters
- Deadlines run from receipt. A “sent” email does not start the counter-statement clock if it never reached you.
- The Act beats the rule. Section 21(2) prevails over Rule 18’s deeming language.
- Systems need fixing. The judgment nudges the Office toward verifiable service — e.g. emails that route to the portal where acknowledgement can be tracked.
This complements our insight on email service as a loophole. See also the trademark opposition guide.
Frequently asked questions
When does the counter-statement deadline start in India? On the applicant’s actual receipt of the opposition notice, under Section 21(2) — not when the Registry sends it.
Does a sent email count as service? Rule 18 deems it served on sending, but the Madras High Court held Section 21(2)‘s receipt requirement prevails; dispatch alone is not enough.
What happened in Ramya S. Moorthy’s case? Her abandoned application was reinstated, and she was given a month to file the counter-statement, because the Registry could not prove she received the notice.
How do I protect myself? Whitelist Registry emails, check spam, monitor status on the IP India portal, and keep verifiable records of non-receipt if it happens.
Useful official resources
- The Trade Marks Act, 1999
- IP India trademark e-filing portal