A single justice bench of Delhi High Court constituting Justice J R Midha, on a petition by the Intellectual Property Attorney’s Association, passed a landmark judgment on October 16, 2019, wherein he held that it is the duty of the Trademarks Registrar to send a copy of an order passed under Sec 18(5) of the Trademarks Act, 1999 to the Applicant.
Sec 18(5) of the Trademarks Act, 1999 reads as:
In the case of a refusal or conditional acceptance of an application, the Trademarks Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.
The honorable Justice Midha opined that Rule 36 of the Trademarks Rules 2017 is inconsistent with the provisions mentioned in the Trademarks Act, 1999, for the Trademark registration. Rule 36 of the Trademarks Rules 2017 reads as:
Decision of Registrar- (1) The decision of the Registrar under rules 33, 34, or 41 shall be communicated to the applicant in writing at his address of service. If the applicant intends to appeal from such a decision, he may, within thirty days from the date of such communication, apply in Form TM-M to the Registrar, requiring him to state in writing the grounds of and the materials used by him in arriving at, his decision.
As it can be deduced from above that Rul,e 36, which applies to the Registrar’s decisions concerning examination or objection to acceptance or abandoning or hearing or expedited processing of the Trademarks applications, is completely irrational and inconsistent with what is mentioned in Sec 18(5) of the Trademarks Act, 1999.
The association was aggrieved by non-speaking orders passed by the Trademarks Registrar and hence approached the court contending that Rule 36 was in violation was a violation of Sec 18(5).
Justice Midha agreed and ordered:
“The writ petition is allowed, and the Registrar of the Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.”
The court agreed that Rule 36 of the Trademark Rules 2017 is arbitrary, unreasonable, and inconsistent with the mandatory provisions of the statute.
