In the matter of:-
Intellectual Property Attorneys ……Petitioner
Versus
The Controller General of Patents, Designs, & Trade marks & Anr. ….Respondents
Date of Order:- 16.10.2019
The petitioner has filed petition being aggreived by non-speaking orders passed by the Registrar of Trade marks, refusing applications for registration of trademarks in violation of sec 18(5) of Trademarks Act.
As per petitioner, Section 18(5) mandates the registrar of trademarks to record in writing the reason for acceptance or refusal of trademark application and as to how, Ld.Registrar has reached the conclusion.
Submission of Counsel for the Petitioner
Petitioner submitted that Rule 36(Decision of Registrar) of Trade marks Rules,2017 violates Section 18(5) of Trade marks Act,1999, in so far as it provides for sending the copy of the order of the Registrar to the applicant without the grounds of refusal or conditional acceptance.
It was submitted that Rule 36 is inconsistent with the mandatory provision of sec 18(5) of Trade marks Act, 1999.
It was submitted that the registrar be directed to send the copy of the order containing the grounds of refusal or conditional acceptance to the applicant.
It was submitted that Rule 36 of Trade marks Rules,2017 provides that if the Applicant intends to file an appeal against the decision of the Registrar, he can file within 30 days in Form TM-M to the Registrar.
For an Appeal to be filed, Registrar should furnish the grounds of refusal or conditional acceptance of the application.
Hon’ble Delhi High Court Directions
After hearing the submissions of Parties, the Hon’ble Court observed that the Registrar of Trade Marks is duty bound to send the copy of the order to the applicant, passed under section 18(5) of Trade Marks Act, the order of the Registrar should contain the grounds for refusal of the application or grounds of conditional acceptance of the application and mentioning the material used by him in arriving at his decision.
Further, the Hon’ble Court observed that Rule 36 of Trade Mark Rules, 2017 is arbitrary, unreasonable and inconsistent with the mandatory provision of the Trade Marks Act insofar as it empowers the Registry to communicate the decision without the grounds for refusal or conditional acceptance of the application.
That section 18(5) of Trade Marks Act shall prevail over Rule 36 of Trade Mark Rules, 2017.
Writ Petition was allowed with the directions that registrar of Trade Marks should strictly implement sec 18(5) of the Trade Marks Act by recording in writing the grounds of refusal and acceptance of the application.
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