Notice of Trademark Opposition by Email: Service When Complete?

The Indian legal landscape is replete with cases that hinge upon principles of natural justice, fair play, and procedural propriety. One such case is Ramya S Moorthy v. Registrar of Trade Marks & Anr.[1], a recent Madras High Court decision that addressed the issue of deemed receipt of notice when sent via email and upheld an applicant’s substantive right to be heard.

It is pertinent to note that before the introduction of the new Trade Marks Rules of 2017, the Trade Marks Registry used postal mail to serve notice of opposition to the applicants. Through the rules, e-mail was introduced to serve the opposition notice under Section 21(2) of the Trade Marks Act, 1999. While the new service delivery system was a breath of fresh air, it was not devoid of problems.

Service of Notice Via E-mail: TM Registry’s Stand

Since the implementation of the rules in 2017, the Trademark Registry has established a standard practice that if the sent notice reached their e-mail inbox as an internal copy, they deemed the notice as successfully delivered to the Applicant. However, the same posed a problem when there were technical glitches, and e-mails remained undelivered, adversely impacting the Applicant’s rights.

Facts of the Case

The Ld. Registrar, via orders dated April 28, 2023, deemed the applications for registration of two of the Petitioner’s marks as abandoned. The timeline for the early stages of the application filing was as follows:

  • Filing of trademark applications: February 4, 2022.
  • Receipt of examination report: March 8, 2022.
  • Publication of marks in the journal: September 12, 2022.
  • Opposition filed by the opposite party (Respondent no. 2 herein): January 12, 2023.

The problem began when the Trade Marks Registry deemed the delivery of service to be done on January 19, 2023, while the Petitioner kept denying the receipt of the service of notice. Section 21(2) of the Act requires that a counter statement be filed within two months of receiving a copy of the notice of opposition. As one may expect, the Petitioner, without being served with the notice, failed to file the counter statement. The Registry issued abandonment orders on April 28, 2023, on the expiration of the period prescribed under the said Section.

Aggrieved, the Petitioner approached the Madras High Court, challenging the abandonment orders passed by the Trade Marks Registry.

Transmission of Opposition Notice

While sending opposition notices, the Registry marked one of their internal e-mail addresses in carbon copy (CC), and if the internal servers received the e-mail without any glitches, they considered the e-mail to be successfully delivered to the Applicant. Now, this is a relevant issue because often times, the external servers of the Applicant’s e-mail ID either do not receive the e-mail or the e-mail gets marked as spam due to the huge number of e-mails sent by the Registrar’s handles on a daily basis.

Legal Fiction under the 2017 Rules

It was observed that Rule 18(2) of the 2017 Rules presented a clear conflict with Section 21(2) of the Act because the said Rule states that “Any communication or document so sent shall be deemed to have been served at the time when the letter containing the same would be delivered in the ordinary course of post or at the time of sending the e-mail.”

The Court opined that Rule 18(2) created a conundrum by providing that the notice would be deemed to be served ‘at the time of sending the e-mail.’ The literal interpretation of the said Rule would entail that mere proof of transmission of the e-mail would suffice. If such an interpretation were to be adopted, it would have resulted in an inherent contradiction between the rules and the statute, potentially causing injustice to Applicants who are unable to file timely counter statements due to the non-receipt of the opposition notice.

Absence of Provision regarding Deemed Receipt of Notice

Since there was no provision in the statute regarding deemed receipt of notice, the Court noted that Rule 18(2) would not be in consonance with Section 21(2) of the Act. This is because the said Section contemplates that the time limit of two months for filing the counter statement would activate from the date of receipt of the notice of opposition by the Applicant.

It was acknowledged that the stakes were high since an Applicant’s substantive right to trademark registration was on the line. With this, the Court concluded by holding that the time limit under Section 21(2) would apply from the date of the e-mail’s receipt by the Applicant, and the document that the Registrar relied on was insufficient and could not qualify as valid evidence of receipt.

Thus, the Court harmonised the provisions by asserting that the prescribed time limit would run from the date of receipt of the e-mail containing the notice of opposition. This interpretation aligns with procedural fairness and natural justice principles, ensuring that an Applicant has a reasonable opportunity to respond to a trademark opposition notice before being deemed to have abandoned the trademark application.

Implications of the Court’s Order

The Madras High Court’s decision effectively addresses the concerns of trademark applicants when it comes to technological glitches and other issues involved in the electronic service of opposition notices, such as e-mails not reaching the Applicants, ending up in spam folders, not being delivered, etc.

The Registrar’s office needs to proactively monitor the impact of the judgment and develop potential solutions to track service delivery. One such method could be adding a verification link in the e-mail that redirects the Applicant to the Registry’s website, and without this, no counter statement should be allowed to be filed. Further, the judgement will certainly bring about a positive change in the opposition process and ultimately serve the parties on both sides of the table, whether it be the opposition party or the Applicant whose rights might otherwise be threatened by the flawed delivery system.

References:

[1] [WP(IPD) Nos.3 & 4 of 2023], https://www.foxmandal.in/wp-content/uploads/2023/09/ramya-s-moorthy-v-registrar-of-trademarks-1533986.pdf

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Photo by GettyImages: https://www.canva.com/photos/MADerI61I68/

The Court opined that Rule 18(2) created a conundrum by providing that the notice would be deemed to be served ‘at the time of sending the e-mail.’ The literal interpretation of the said rule would entail that mere proof of transmission of the email would suffice. If such an interpretation were to be adopted, it would have resulted in an inherent contradiction between the rules and the statute, potentially causing injustice to Applicants who are unable to file timely counter statements due to the non-receipt of the opposition notice.

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Can Environment Protection and Economic Development Go Hand-In-Hand?

Sustainable development is an organising principle for meeting human development goals while also sustaining the ability of natural systems to provide natural resources and preserve the ecosystem services on which the economy and society depend. It is the duty of the State to implement a coherent and coordinated program in which economic development should not be allowed to take place at the expense of our natural resources.

With the principle of sustainable development in mind, the Hon’ble Supreme Court (“Hon’ble SC”) issued a decision on 03.06.2022 in the case In Re: T.N. Godavaraman Thirumulpad vs. UOI & Others[1] to categorically lay down the extent of Eco-Sensitive Zones (“ESZ”) that surround protected forest lands. Strict rules have been laid down with the intention of ensuring that development and preservation of the environment go hand in hand.

What is Eco-Sensitive Zone (ESZ)?

Fragile areas surrounding protected forest lands are known as eco-sensitive-zones (“ESZ”), otherwise known as “shock-absorber” or “transition zones,” and the extent of the ESZ for each protected forest land is declared by the Ministry of Environment, Forestry and Climate Change (“MoEF&CC”). The ESZ for each protected forest is a vital element for preserving and protecting the environment from hazardous activities.

In the year 2002, a ‘Wildlife Conservation Strategy-2002’ was adopted in the meeting of the National Board for Wildlife, wherein lands falling within 10 kms of the boundary of each protected forest land were to be declared ESZ and the Chief Wildlife Wardens of every State were requested to list out areas that fall within 10 kms of the boundaries of the protected forest lands. However, in response, several State Governments raised issues over the applicability of the 10 km rule as certain protected forest lands were located in urban areas, which had an uninterrupted flow of development.

Guidelines For Eco-Sensitive Zone (ESZ)

 

Taking into account the concerns raised by the state governments, the MoEF and CC issued a guideline on February 9, 2011 to ensure that development does not come at the expense of the environment and vice versa.

 

In a nutshell, the rules laid down in the Guidelines specifying the extent of each ESZ are as follows:

  • As provided in the Wildlife Conservation Strategy, 2002, the extent of an ESZ can go up to 10 kms.
  • In areas with delicate ecosystems and connecting habitats that suit the needs of a full suite of native animals and plants and are beyond 10 km in width, these shall be included in the ESZ.
  • In the context of a particular Protected Area that is specifically designated by the State Government, the area of the ESZ could be of variable width and extent.

Irrespective of the above guidelines, issues were still being raised before the Hon’ble Supreme Court, seeking modification of the restrictions pertinent to ESZ.  

Observations of Hon’ble Supreme Court

To put the question of ESZ to rest once and for all, the Hon’ble SC in the case In Re: T. N. Godavaraman Thirumulpad vs. UOI & Other, passed an order (“June Order”) that extensively dealt with ESZ and the activities permitted therein. The relevant directions that were laid down in the June Order are as follows:

  1. Each protected forest land must have an ESZ of at least 1 km measured from the protected forest land’s demarcated boundary.
  2. When the ESZ that is already prescribed by law goes beyond 1 km, the wider margin of the ESZ shall prevail.
  3. The minimum width of the ESZ may be diluted with the approval of the Central Empowered Committee, MoEFF & CC, and the Hon’ble SC.
  4. A 10 km buffer zone (ESZ) is to be implemented for any sanctuary or national park for which no proposal has been submitted.

It is noteworthy to mention that the Hon’ble Supreme Court had also observed that the above-mentioned directions may not be feasible for all sites, such as Sanjay Gandhi National Park in Mumbai (“SGNP”), Gandhi National Park in Mumbai (“GNP Mumbai”), and Gandhi National Park in Chennai (“GNP Chennai”), as these sites have gone through tremendous development in close vicinity and are located in urban areas.

However, because the Hon’ble Supreme Court’s observations on special cases were left vague, causing uncertainty, the aforementioned order had a disastrous effect on the Mumbai real estate industry, halting construction in areas surrounding the SGNP and directing local authorities to cancel Commencement Certificates issued to builders.

Subsequently, the CREDAI-Maharashtra of the Housing Industry had filed an Interim Application[1] before the Hon’ble SC, seeking clarification on the applicability of the 1 km rule in special cases such as SGNP. The Hon’ble SC had clearly set forth in the Interim Order that the directions laid down in the June Order are not applicable to special cases as a 1 km wide “no development zone” may not be feasible in all cases. Further, the Hon’ble SC mentioned that specific exceptions with regard to SGNP and GNP Mumbai had already been made in the June Order.

 

Present Situation of Guindy National Park, Chennai

GNP, Chennai, is a habitat for faunal species and the city’s vital lung, with a land area of 270.57 hectares (ha) and was designated as a Forest Reserve land in 1978, when it was known as the “Guindy Deer Park.” Right from the begining, GNP has been a tourism attraction point surrounded by numerous buildings such as the Gandhi Mandapam, IIT, Cancer Institute, Rajaji Memorial Historical Monument, etc. All of this being a source of pride, GNP has recently become a source of contention in discussions about sustainable development.

On application of the aforementioned Interim Order of the Hon’ble SC, it can be presumed that the ‘1km rule’ laid down in the June Order is inapplicable to GNP Chennai as it has been carved out as a “Special Case”. The relevant portion of the June Order is extracted hereinbelow, for ease of reference.

“We have considered CEC’s recommendation that the ESZ should be relatable to the area covered by a protected forest but the Standing Committee’s view that the area of a protected forest may not always be a reasonable criterion also merits consideration. It was argued before us that the 1 km wide “no development zone” may not be feasible in all cases and specific instances were given for Sanjay Gandhi National Park and Guindy National Park in Mumbai and Chennai metropolis respectively which have urban activities in very close proximity. These sanctuaries shall form special cases.”

However, in pursuance of the June Order, a PIL[2] has been filed by a Social Activist before the Hon’ble High Court, Madras seeking to demolish the headquarters of the Tamil Nadu Forest Department that has been constructed close to GNP Chennai with the alleged intention to protect and preserve the habitat.

An affirmation of the June Order by the Hon’ble High Court, Madras, would therefore dispel all ambiguity with regards to the rules applicable to GNP Chennai and provide the necessary clarification on what path the real estate industry in Chennai could embark on.

References: 

[1] W.P. (Civil) No. 202 of 1995 dated 03.06.2022

[1] I.A. No. 110348 of 2022 dated 23.09.2022.

[2] W. P. No. 27372 of 2022

Image Credits: Photo by Amit Jain on Unsplash

The Hon’ble Supreme Court’s observations on special cases were left vague, causing uncertainty and it had a disastrous effect on the Mumbai real estate industry, halting construction in areas surrounding the Sanjay Gandhi National Park in Mumbai (“SGNP”) and directing local authorities to cancel Commencement Certificates issued to builders.

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