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India: Trademark Office to give Grounds when Refusing Trademark Application

November 11, 2019

By Divyansh Trivedi and Shilpi Sharan

Recently, the Hon’ble Delhi High Court, has held in the case of Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr.[1], that the Registrar of Trademark is bound by duty to send the copy of the order passed under Section 18(5) of the Trade Marks Act, 1999, containing the grounds of refusal or conditional acceptance and material used by the Registrar to arrive at his decision should be furnished.

In this case, the single judge bench of the Delhi High Court was adjudicating upon a writ petition filed by the Petitioner who was aggrieved by the orders passed by the Registrar to refuse applications for registration of trademarks in violation of Section 18(5) of the Trade Marks Act, 1999.

Section 18(5) of the Trade Marks Act, 1999, provides that it is mandatory for the Registrar to record the grounds for refusal or conditional acceptance of the application in writing for registration of Trade Marks. The Petitioners contended that Rule 36 of the Trade Marks Rules, 2017 is in violation of Section 18(5) as it provides for sending copy of the order without the grounds for refusal/conditional acceptance to the applicant.

The Petitioner submitted that Rule 36 of the Trade Marks rules states that the Registrar shall convey his decision on the trademark application to the applicant in writing and the applicant may appeal against the decision to the Registrar within 30 days from such decision. The Registrar shall provide the grounds of refusal/conditional acceptance after such an appeal is filed. Therefore, the Petitioner contended that Rule 36 is violative of the compulsory requirements of Section 18(5) of the Trade Marks Act, 1999.

The Court accepted the writ petition and thereupon directed the Registrar to record the grounds for refusal/conditional acceptance in writing in order to properly implement Section 18(5) of the Trade Marks Act, 1999. The Court further directed the Registrar to send the order containing grounds of refusal/conditional acceptance to the applicant within two weeks of passing the order. The Court said, “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.”

 

[1] W.P.(C) 3851/2019

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