The Delhi High Court
(HC) recently has held that the trademark registrar is duty-bound to provide
the applicant with the replica of an order passed under Section 18(5) of the
Trademarks Act, 1999 comprising the ground for refusal/conditional acceptance
in addition to the materials he used to reach the decision.
The Court has stated
that Rule 36 of the Trademarks Rules, 2017 is unreasonable, arbitrary, and
inconsistent with the Act insofar because it empowers the Registry to express
the decision without including the grounds for refusal/conditional acceptance.
The ruling was passed
by a Single-judge Bench of Justice JR Midha following a petition favored by
the Intellectual Property Attorneys Association. The association had moved to the Court after
being wronged by non-speaking orders passed by the registrar of trademarks
while refusing applications for Trademark
Registration.
It was asserted that
such refusals were violating Section 18(5) of the Trademarks Act. Besides, it
was argued that the terms mandated the registrar to maintain written records of
the grounds for refusal or conditional acceptance along with the materials he
used to arrive at his decision.
On the other side,
Rule 36 of Trademarks Rules, 2017, states that the registrar shall provide the
decision in writing to the applicant. Moreover, if the applicant wants to file
an appeal for getting the grounds behind the decision, he might do so within 30
days in Form TM-M.
Hence, the association
concluded and argued that as far as the supply of reasons behind the refusal
was concerned, Rule 36 was in contravention of Section 18(5).
To finish after
hearing the parties, the Court approved the petition made by the Intellectual
Property Attorneys Association. It held that the trademarks
registrar/administrator was duty-bound to provide the applicants (who
file Trademark
Applications) with the copy of the order passed under Section
18(5) to make them familiar with the reasons for refusal or conditional
acceptance and the materials he deployed to come up with that decision.
The Court further
clearly held that Rule 36 was arbitrary, unreasonable, and inconsistent with
the Act. It agreed with the association and ordered that the petition is
approved. It added that the registrar of the trademarks is directed to
stringently implement Section 18(5) of the Trademarks Act by maintaining
written records of grounds for refusal/conditional acceptance and also sending
the same to the applicant within fourteen days of the passing of the
order. ✅ For view-source: https://bit.ly/2ClGvLV
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