Family Enterprises Pvt. Limited. vs Deputy Registrar Of Trade Marks

This is the Appeal against the Order of Deputy Registrar of Trade Marks, Chennaidated 14.03.2019 refusing the device mark “CAFÉ

UDUPI RUCHI (WITH DEVICE)â€​ under Application No.3032678 in class 43.

FACTS OF THE CASE

The Appellant had filed an application for Registration of the Trademark “CAFÉ UDUPI RUCHI (WITH DEVICE)†under Application

No.3032678 in class 43 on 14th May 2015 claiming usage of the mark since 9th May 2015. The said Application was duly examined by the Examiner

of the Trademarks and sent an Examination Report dated 25th July 2016 raising objections under Section 9 and 11 of the Trademark Act, 1999. A

suitable reply was filed by the Appellant on 5th August 2016. A formal show cause notice for hearing in the said matter was fixed on 24th July 2018 to

which Appellant appeared and sought adjournment and hence again the hearing was scheduled on 9th October 2018 during which the Appellant had

filed user affidavit. Further on 11th January 2019 the Respondent had adjourned the hearing to 14th March 2019; however the Appellant claims that

the said communication was not sent to Appellant or its counsels on record.

ARGUMENTS MADE BY THE APPELLANT

The learned counsel for the Appellant Ms. Suma submitted that the Respondent erred by failing to give the Appellant due and valid notice ofhearing

as required. He further erred in conducting the hearing and order was passed against the Appellant even though Appellant had complied with all due

provisions of law and user Affidavit filed before the Respondent. Therefore the impugned Order is in violation of Section 18 of the Trade Marks Act,

1999, Rule 9, 18, 33 of Trademark Rules, 2017 as well as the principles of audialterampartem, natural justice and equity.

The learned counsel stated that the Respondent actions are violating the Principle of Natural Justice and fair play. The principles of Natural justice

signify the basic minimum fair procedure which must be followed while exercising decision making powers. The Respondent ought to have adhered to

Principles of Natural Justice which is well recognized by all civilised states of supreme importance when a quasi-judicial body embarks on determining

disputes in administrative action involving civil consequences in issue.

The learned Counsel also argued about the distinctiveness of the mark being device and composite mark and all citied marks belonging to

Appellants alone and others marks are adopted after the Appellant. The Appellant also obtained Registration of same mark in multiple jurisdictions

such Mauritius, Hong Kong, Malaysia, Singapore, Japan, U.A.E., Europe, Australia and United Kingdom. The Appellant also filed voluminous

documents to show user of the mark.

FINDINGS

We have examined the Order of Registrar of Trade Marks, Delhi dated 14.03.2019 in refusing the device mark “CAFÉ UDUPI RUCHI

(WITH DEVICE)†under Application No.3032678 in class 43and reviewed the submissions of the Appellant. The fact stands that the

impugnedOrder was erroneously passed without according a hearing to the Appellant. This was palpably wrong, beyond comprehension, not

recognized or supported by the provisions of the Act and in gross violation of the principles of natural justice. We are however not dealing with the

merits in the matter as the Appellant during the arguments requested a remand back of the matter to Registrar of grounds that Appellant needs to be

heard before any orders passed by the Respondent.

It is further pertinent to mention that there is no speaking order or reasoning provided for the refusal of the impugned mark as to why the usage

document or affidavit has not taken into consideration for passing the impugned order. It need to be noted that Trade Marks Act 1999 is a Special Act

and thus all Sections are to be applied strictly as per law stipulated in the Statue. Under no circumstances self-made procedure and guidelines can be

adopted even for the sake of earlier disposal of any matter. The interpretation of any Section should not be misinterpreted for the sake of

convenience.

The Respondent being creation of the Act and constituted under the provisions of the Act, is expected to follow the provisions of law meticulously

in passing detailed orders more specifically in consonance with Sub Section 5 of Section 18 of the Act read with Rule 36 of Trade Marks Rules, 2017.

Section 18(5) of the Act reads as under “In the case of refusal or conditional acceptance of an application, the Registrar shall record in writing the

grounds for such refusal and conditional acceptance and the material used by him in arriving at his decision.†A similar language has been used in

Rule 36. Section 18 of the Trademark Act, 1999 is an incumbency provision which cannot be disregarded by the Respondent in passing its orders.

The impugned order displays that Respondent has not considered the submission of the Appellant and seems to have been passed without any

application of mind. If the Respondent would have considered the contentions of the Appellant and discussed the documents filed by it as the

Appellant claimed that it had filed user Affidavit and made submission earlier occasions when hearing was scheduled earlier. However, without

considering all these aspects, the respondent has passed the impugned order in violation of principles of natural justice since it is an order without due

service on the Appellant, the Appellant thus being deprived of an opportunity of proper hearing and of presenting documents sought to be filed. The

Order of Deputy Registrar of Trade Marks, Chennai dated 14.03.2019 refusing the device mark “CAFÉ UDUPI RUCHI (WITH DEVICE)â€

under Application No.3032678 in class 43is therefore liable to be set aside.

Taking into consideration of the above, the Appeal is hereby allowed. Impugned order dated 14.03.2019 passed by Respondent refusing the device

mark “CAFÉ UDUPI RUCHI (WITH DEVICE)â€​ under Application No.3032678 in class 43 is set aside. The matter is thus remanded back to

Respondent which shall decide the said Applicationby giving opportunity to the Appellant in accordance with law. A copy this order is directed to be

sent to Respondent for immediate implementation of this order. There is no order regarding costs.