Registrar Of Trade Marks Is Duty Bound To Communicate Grounds For Refusal Of Application: Delhi HC [Read Judgment]

The Delhi High Court on October 16, 2019, in the case of Intellectual Property Attorneys Associationv.The Controller General of Patents, Designs & Trade Marks & Anr., has 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.

A single judge bench of Justice J.R. Midha passed the ruling on a writ petition filed by the petitioner being aggrieved by the non-speaking orders passed by the Registrar of Trade Marks while refusing applications for registration of Trade Marks in violation of Section 18(5) of the Trade Marks Act, 1999.

Section 18(5) of the Trade Marks Act, 1999, mandates the Registrar to record in writing the grounds for refusal or conditional acceptance of the application for registration of Trade Marks.

Learned senior counsel, appearing for the petitioner, submitted before the court that Rule 36 of the Trade Marks Rules, 2017, is violative of Section 18(5) insofar as it provides for sending the copy of the order to the applicant without the grounds for refusal/conditional acceptance. 

It was submitted that Rule 36 of Trade Marks Rules provides that the 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. Therefore, Rule 36 is inconsistent with the mandatory provision of Section 18(5) of the Trade Marks Act, 1999, the counsel contended. 

Accepting the submission, the court said 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 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 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. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.”

Thus, the court allowed the writ petition and directed the Registrar of Trade Marks to strictly implement Section 18(5) of the Trade Marks Act, 1999, by recording in writing grounds for refusal/conditional acceptance. The court directed that the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.

[Read Judgment]