Registrar of Trade Marks is duty bound to furnish grounds for refusal under Section 18(5) of the Trade Marks Act: Delhi HC
The Delhi High Court ruled that the Registrar of Trade Marks is duty bound to furnish grounds for refusal under Section 18(5) of the Trade Marks Act, 1999 (Trade Marks Act) containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. It further held that the Rule 36 of the Trade Marks Rules is arbitrary, unreasonable...
The Delhi High Court ruled that the Registrar of Trade Marks is duty bound to furnish grounds for refusal under Section 18(5) of the Trade Marks Act, 1999 (Trade Marks Act) containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. It further held that the 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.
The Petitioners – Intellectual Property Attorneys Association was aggrieved by the non-speaking orders passed by the Registrar of Trade Marks while refusing applications for registration of Trade Marks in violation of Section 18(5) of the Trade Marks Act.
The Petitioners contended that the Registrar of Trade Marks has to comply with Section 18(5) of the Trade Marks Act. The Petitioners had urged at the time of the hearing that Section 18(5) of the Trade Marks Act mandates the Registrar to record in writing the ground for refusal/conditional acceptance and the material used by him in arriving at his decision and the same has to be communicated to the applicant forthwith. Moreover, Rule 36 of Trade Marks Rules provides that the Registrar shall communicate the decision in writing to the applicant and if the applicant intends to appeal from such decision, he may apply within 30 days in Form TM-M to the Registrar whereupon the grounds of refusal/conditional acceptance shall be furnished.
The writ petition was allowed and the Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.
Justice J.R. Midha presided over the case.