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., 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.
 [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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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.