In a significant legal development, the Bombay High Court recently addressed crucial issues surrounding trademark opposition proceedings in Coaster Shoes Company Pvt. Ltd. v. Registrar of Trademarks & Anr vide a judgment dated August 16, 2024. The Court highlighted the importance of procedural fairness and the responsibility of the Registrar of Trade Marks (“Registrar”) to ensure completeness of service in trademark disputes.
Background
Coaster Shoes Company Pvt. Ltd. (“Petitioner”), a prominent player in manufacturing, marketing, and selling footwear, has been using the trademark “TRAVEL FOX” continuously and extensively under Class 25 since the year 2000. Originally coined and registered by its predecessor, Apex Shoes Co. Pvt. Ltd. in 1999, this trademark has been a cornerstone of the Petitioner’s branding strategy.
In 2007, the Registrar received two applications from Respondent No. 2 for the mark “TRAVEL FOX” under Classes 25 and 18 on a “proposed to be used” basis. Respondent No. 2 published the two applications in the trademark journal on November 1, 2009, prompting the Petitioner to file notices of opposition against the applications on March 8, 2010.
Thereafter, Respondent No. 2 filed a counter-statement with the Registrar, allegedly on May 30, 2011. However, as per the Petitioner, despite repeated follow-ups, the Registrar had failed to serve them the counter-statement. Nonetheless, the Petitioner filed the evidence supporting their opposition on November 22, 2018, as a due diligence measure, and served a copy to Respondent No. 2.
However, the Registrar, on the hearing of the opposition proceedings, abandoned the Petitioner’s oppositions solely on the ground that the Petitioner had not filed the evidence in support of their opposition on time, as per Rule 50(2) of the Trade Marks Rules, 2002 (“2002 Rules”). The said order dated October 7, 2022, was passed (without going into the merits of the matter) on the premise that the Registrar had allegedly served the counter-statement was to the Petitioner, which led to the present Petition before the Bombay High Court.
Arguments by the Parties
The Petitioner argued that the Registrar had failed to serve the counter-statement as required by the Trade Marks Act, 1999 (“TM Act”), and the 2002 Rules. Sections 21(2) and 21(3) of the TM Act put an obligation on the Registrar that the counter-statement is properly served. The Petitioner further contended that the two-month statutory period to file evidence in opposition could begin only after the Registrar had duly served the counter-statement. The Petitioner maintained that it is a settled principle that statutory procedures must be strictly followed. Yet, despite the procedural issue, the Petitioner submitted that they had proactively submitted their evidence in 2018 to avoid further delays. The Petitioner claimed that the dismissal of their opposition on procedural grounds was unjust and violated their rights, considering they had met substantive requirements.
In contrast, the Registrar argued that the counter-statement was dispatched to the Petitioner vide letter dated March 14, 2012, as per the internal dispatch records. The Registrar relied on Rule 15 of the 2002 Rules – which deems a service complete once a document is properly addressed and posted – and on the General Clauses Act, 1977 – which provides for a presumption of service once a document is properly addressed, prepared, and posted. The Registrar also contended that any delay in receiving the counter-statement should not affect the statutory timeline for filing the evidence in support of opposition.
Judgment
The Court found that Section 21 of the TM Act places obligation on the Registrar to ensure the counter-statement is properly served to the opponent and that merely dispatching it did not meet this requirement if the intended recipient did not actually receive the document. Since the section statutorily prescribes a specific mode of service, it prohibits other modes of service. The Court noted that there was no clear proof that the Registrar had served the counter-statement to the Petitioner, as the Registrar could not provide any acknowledgment or evidence of service. As a result, the Court determined that the timeline for submitting evidence in support of opposition could not begin without the proper service of the counter-statement. Consequently, the opposition could not be considered abandoned solely due to a delay in submission.
Accordingly, the Bombay High Court overturned the Registrar’s decision, which had dismissed the Petitioner’s opposition on a mere technicality, and ordered the Registrar to reopen the opposition proceedings and assess the Petitioner’s evidence on merits.
Conclusion
Section 21 of the TM Act outlines a clear framework for opposition proceedings and places an obligation on the Registrar to ensure serving the counter-statement. This requirement is not just a procedural formality, it is a statutory obligation critical to enabling the opponent to respond and file evidence in support of their opposition.
Further, the distinction between “dispatch” and “service” is crucial. While dispatching a document is necessary, it does not suffice if the document does not reach the intended recipient. Accordingly, the mere act of sending a document without proof of delivery cannot trigger the deadlines for the next stages of the opposition process.
The ruling also aligns with previous judicial precedents such as Court Receiver v. Registrar of Trade Marks,[1] where, in the absence of reliable evidence to show that the Registrar had sent the letter to the Petitioner and/or that the Petitioner had received it, the Court did not accept the Registrar’s contention that they had sent the letter to the Petitioner.
This case serves as a vital reminder of the responsibilities of regulatory bodies and the importance of adhering to statutory and procedural requirements to uphold justice in trademark disputes. It reaffirms that procedural technicalities should not override substantive justice and highlights that when statutory procedures are not followed, especially by administrative bodies, it can severely impact the substantive rights of the parties involved.
[1] 2016 SCC OnLine Bom 12975.
