M/S MEX SWITCHGEARS PVT. LTD. 9TH KILOMETER, MEX ESTATE, PATHANKOT ROAD, JALANDHAR ….. Appellant
Versus
VIKRAM SURI TRADING AS M/S ARMEX AUTO INDUSTRIES ….. Respondent
Date of Order:- 13.10.2023
An appeal was filed against the order dated 24 May 2018, passed by the Deputy Registrar of Trade Marks against an Opposition No. 851850 filed by the appellant to Application no. 1985391 of Respondent 1 seeking registration of the mark “ARMEX”.
The order of Registrar read as :
“Proceedings were initiated under Section 21 of the Trade Mark Act, 1999, by the above named opponent to oppose the registration of trade mark applied for by the above named applicant and whereas the Counter Statement was filed by the applicant and the same was served to the opponent vide 2327514 dated 22/11/2017 and whereas within the time prescribed under the rules, neither any evidence in support of opposition was filed nor any statement was submitted on behalf of the opponent to the effect that the opponent does not desire to adduce evidence but wants to rely on the facts mentioned in the Notice of Opposition the abovementioned opposition is therefore deemed to have been abandoned under Rule 45(2) of the Trade Marks Rules 2017.
IT IS HEREBY FURTHER ORDERED that there shall be no order as to cost of these proceedings.”
In the Court date of the present appeal ,when the matter was listed before Ld. Joint Registrar, Delhi High Court, on 18 September 2023, the learned Joint Registrar of Delhi High Court closed the right of Respondent 1 to file reply to this petition, noting the fact that Respondent 1 had been served but had not filed any reply till then.
Court noted that since the notice was issued against Respondent no.1, He has not made any appearance and continues to remain unrepresented.
Hon’ble Court noted that the copy of the counter statement to the notice of opposition was dispatched on the opponent by the Trade Mark Registry on 22 November 2017 only by e-mail.
Submission of Counsel for the Appellant
The submission of Counsel for the Appellant was that e-mail is not one of the modes of services envisaged by Section 143 of the Trade Marks Act, 1999 and that, therefore, it cannot be said that appellant was appropriately served in the manner known to law.
Hon’ble Court rejecting the argument of Counsel for the Appellant
Court observed that if the applicant or the opponent provides an e-mail ID in the application or notice of opposition, it would not be open to the applicant/ opponent to then argue that, though the documents relating to the application or the notice of opposition were sent by e-mail to the said e-mail ID, but there was, no service within the meaning of Section 143 of the Trade Marks Act.
IN THE PRESENT CASE NO EMAIL ID WAS PROVIDED BY THE APPELLANT
The main issue was that in the present case, no e-mail ID was provided by the appellant in its notice of opposition.
So, it cannot be said that the e-mail ID at which the documents were sent by the Registry constitutes an “address for service” within the meaning of Section 143 of the Trade Marks Act.
The Registry of Trade Marks can serve the documents by e-mail only where the party being served has provided an e-mail ID in the application or notice of opposition.
If no e-mail ID is provided, sending of the documents by e-mail, even if it is in fact sent to the e-mail ID of the party concerned, would not constitute service of documents within the meaning of Section 143 of the Trade Marks Act.
WHAT TO CHOOSE EMAIL OR PROPER ADDRESS FOR SERVICE
Hon’ble Court said that It is the Choice applicant, or the opponent, to choose the address at which he desires official communications, from the Registry of Trade Marks, to be addressed to him.
No legal compulsion on applicant or opponent to provide email
There is no statutorily or legal compulsion on the applicant, or opponent, to provide an email ID for service.
In view of the express wordings of Section 143 of the Trade Marks Act, the Registry would be duty-bound to effect service only at such address, and effecting service or any other address would not be service at all.
Court observed that in the present case, the Appellant has not provided any email ID for communication in its notice of opposition, but the counter statement was dispatched to the Appellant only by email, the Appellant cannot be said to have been properly served with the counter statement, as envisaged by Section 143 of the Trade Marks Act.
The order of the office of trademark cannot sustain as no email was provided by the Appellant but service of counter statement by the trade mark office was done by email only.
The order of the office of trademark was set aside.
The appellant was directed to comply with the statutory requirements consequent on receipt of the documents, within the time stipulated in that regard, starting from today.
This appeal was allowed.
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