The Bombay High Court recently held that mere publication of examination report /letter on the website (of Registry of Trademarks) shall not constitute as communication to the applicant for trademark registration. The writ petitions were filed by the Institute of Cost Accountants of India (ICAI). The instant petition was disposed of on 1st March, 2013, while the other was disposed of in August 2012.
Quick Facts:
In this particular case, the respondent (Registrar of Trademarks) merely published a letter on the website regarding the status of trademark registration, with no physical or electronic intimation whatsoever to the petitioner. The letter came to the petitioner's knowledge much later, and immediately applied for a hearing regarding the application. The respondent rejected this request and deemed the application to have been abandoned for lack of prosecution(section 132) as no response was received by the petitioner within a month of publication on the website. The petitioner filed a writ petition in the Bombay High Court to issue a direction to the Registrar to fix a fresh date of hearing in respect of its application for registration of a trademark.
Decision:
Rule 38(4) of the Trade Mark Rules, 2002 permit an applicant for trademark registration to present comments regarding any objection or proposal regarding the examination report communicated(in writing) by the Registrar. Rule 38(5) stipulates that upon failure of the applicant to respond within a month of communication of the examination report, the application shall be deemed to have been abandoned.
The division bench noted that the respondents failed to indicate the existence of any rule or practice by which the petitioner was legally bound to take notice of anything posted on the website. It was held that placing the notice of the website does not constitute compliance with Rule 38(4). Rule 38(4) most certainly does not mandate an applicant for registration to inspect the respondent’s website. Mere posting of the letter does not constitute communication under rule 38(4). Thus, the petitioner cannot be imputed with knowledge of the said letter on the date of posting the letter on the website. The actual date of communication shall be the date on which the petitioner noticed the letter.
The Court ordered that since the petitioner had applied for the hearing within a month of taking actual cognizance of the letter on the website, the petitioner’s application for registration of the mark cannot be considered abandoned, irrespective of the date of publication on the website.
The judgment may be accessed here.
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