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Judgment
V. Ravi, Technical Member
In these proceedings the appellant seeks to quash and to set aside the order of the then Assistant Registrar of Trade Marks refusing Application
No. 1414802 in class 42 for registration in respect of a trade mark REAL PERSON CUSTOMER SERVICE filed b M/s. Network Solutions LLC,
USA. The back ground of the case is mentioned below:
2 . The appellant filed an application for the above said trade mark REAL PERSON CUSTOMER SERVICE claiming priority from US application
dated 9th August 2005 The application was taken on record and duly numbered and dated as of 18th January 2006. The Examination Report was
issued by the Registry on 5th April 2006 wherein objections were raised only under section 11 of the Trade Marks Act, 1999 and in particular no
objection was raised under section 9 of the Act on absolute ground. The appellant had responded to the objections raised in the Examination Report.
Thereafter, the appellant received notice dated 22nd November 2007 fixing a hearing on the matter on 26th December 2007 in Trade Marks Registry,
New Delhi.
3 . At the hearing, the Learned Counsel for the appellant argued the case of the appellant and the Learned Deputy Registrar after hearing the
submission reserved his order. The appellant, on 5th February 2008, received the impugned order dated 17th January 2008 informing that the
application No. 1414802 in class 42 had been refused as ""the said application is open to objection under section 9(1)(b) of the Trade Marks Act, 1999
as it is not capable of distinguishing the goods or services of one person from those of another person"". In response thereto, the appellant filed a
request in TM15 seeking the grounds of the decisions refusing the said application. By his order dated 9th July 2009, the Deputy Registrar gave a
ruling that the impugned trade mark is not capable to distinguish its services from others during the course of trade as it is only proposed to be used on
the date of application and hence the application is refused registration.
We have heard the arguments of the Learned Counsel for appellant in the matter. In our judgment, raising of new objections which was not raised
in the original Examination Report deprives the appellant the opportunity to rebut the objections so raised. The Learned Deputy Registrar has refused
the subject of the impugned application on the ground that the mark is only proposed to be used on the date of filing and section 9 is a bar to this
registration. No opportunity has been given to the appellant to lead the requisite evidence to the effect that the mark is capable of distinguishing the
services in respect of which applicants are trading.
The main grievance of the appellant is that he has never been given an opportunity to rebut objections raised under section 9 of the Act - conveyed
only in grounds for refusal. The Deputy Registrar has summarily disposed of the matter after hearing merely stating that there is no case for the
appellant under section 9 as the mark is merely ""proposed to be used"". Even so, there is nothing on record to indicate whether any submissions were
advanced by the appellant with respect to an objection under section 9 and it was duly considered or whether in fact such an objection was raised at
all at the hearing and what was the response of the appellant. The appellant has petitioned that the impugned mark has already been registered in
several countries. There is no observation in the speaking order whether the provision of section 12 dealing with ""other special circumstances"" have
been duly considered before refusal of the impugned application.
6 . This action is not in conformity with the provisions of law and accordingly we remand the matter back to the Registry to provide an opportunity to
the appellant to be heard on the objections raised under section 9 of the Trade Marks Act, 1999 afresh and dispose of the same in accordance with
the law.