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Judgment
Prabha Sridevan, J
On 5th June 2013 we issued directions to the Registry to number this appeal and the order was sent to the Trade Marks Registry, Mumbai seeking
their response to several questions. The Trade Marks Registry have replied. From this reply, it is evident that in spite of filing TM-16 indicating change
of counsel, the respondent had served the notice of opposition to the erstwhile counsel on record. Therefore, the submissions made by the counsel that
the notice of opposition was not served on them is correct. The appellant has admittedly come to know about the impugned order only on 31st May
2012 and the appeal has been filed within three months thereafter. The order passed by us on 5th June 2012 is as follows:-
This is an appeal against an order passed by the Senior Examiner of Trade Marks treating the appellants mark 573199 in Class 60 as abandoned.
The narration of events in this case will bring light to the lack of transparency, the failure on the part of the Trade Mark Registry to respond to
letters from the counsel and absence of internal communication within the Registry itself regarding the developments in the registration proceedings;
all leading to miscarriage of justice. The appellant applied for the mark WATERMAN on 14th May, 1992 as a proposed to be used mark to be
associated with No. 147630. The advertisement on 08.01.2001 in the Trade Marks Journal, indicated that the registration will give no right to the
exclusive use of the letter 'W' except as substantially shown in the representation.
On 02.03.2001, the second respondent herein filed the Notice of Opposition. According to the documents in the Paper Book, on 1st June, 2004 the
counsel for the appellant addressed a letter to the Registrar of Trade Marks stating that they learnt from the Trade Mark Journal that their mark had
been opposed and that three years have elapsed, till that date, they have not received the copy of the Notice of opposition. They had already filed a
TM-16 on 15.05.2001 to bring on record their address and the copy of the TM-16 was enclosed for easy reference.
According to the documents filed in the Paper Book, on July 23rd, 2008, they again addressed the Registrar of Trade Marks stating that the recent
check up of the application on the Online status facility indicated the application is abandoned. It stated that no notice for abandonment has been
received, Notice of Opposition was never served and therefore, the abandonment was wrong. They requested immediate steps to be taken to restore
the application and the Registrar was requested to process the file and re-set the matter.
It is seen that the appellant had also filed an application under the RTI Act for information relating to Top Section with regard to the application No.
573199. Public Information Officer forwarded it to the Top Section in Trade Marks Registry. The Public Information Officer also wrote to the
Counsel for the appellant that necessary investigation is going on. This was received by the Counsel on 23.09.2009.
On January, 16th 2009, (As seen from the Paper Book), the Counsel for the appellant wrote to the Registrar of Trade Marks enclosing the
aforesaid letters in the RTI Proceedings and seeking information. It is also stated in this letter that the Counsel presumed that there is no opposition to
this mark. On 14th April, 2009, the Counsel for the appellant addressed the letter to the Controller General of Patent, Designs & Trade Mark seeking
immediate attention to the case incorrectly reflected as abandoned. They again reiterated that they had not been given a copy of the Notice of
Opposition but yet the online record indicated the mark as abandoned. On June, 7th, 2011, the appellant's counsel again addressed the letter to the
Registrar of Trade marks stating all the facts and bringing to their notice that the abandonment is causing extreme hardship to them. This was
received by the Trade Marks Registry on 16.06.2011.
On 5th July, 2011, the Counsel for the appellant again sent another letter on the same lines to the Registrar of Trade Marks which was received by
them on 07.07.2011.
On 29.06.2011, the opponent in this matter had written to the Registrar of Trade Marks that they and the applicant had arrived at a settlement and
that they wished to withdraw the opposition and that the Learned Registrar is required to treat the aforesaid opposition as withdrawn with no order as
to costs. This letter was received by the Trade Marks Registry on 08.06.2012 almost after one year.
The appellant had been also pursuing the matter online and found that an order had been passed by the Senior Examiner of Trade Marks on 3rd
December, 2009, treating the application as abandoned, which the appellant had found from the Online status as on 31.05.2012 which showed that this
mark had been abandoned. The appeal was filed within three months thereafter on 17.08.2012.
The Learned counsel for the appellant submitted that there is no delay in filing this appeal since the three months period for filing under Section 92
of the Trade Marks Act, 1999 would commence only from the date on which the order is communicated to the person preferring the appeal. Till date,
in spite of the repeated requests, no order had been communicated.
This is a classic case of official indifference. It pains us. We are unable to understand why the Trade Marks Registry had not cared to respond to
any of the letters. At least after December, 2009, when ostensibly, the order had been passed treating the mark as abandoned, they should have
replied. June 7th 2011 is the first letter after this alleged date of abandonment. The respondent had also written to the Trade Marks Registry to treat
the opposition as abandoned. To this too, there is no response from the Trade Marks Registry. We disapprove of this attitude of an authority vested
with quasi-judicial powers. When letters are written on behalf of a party pursuing the statutory proceedings, it is in fact the duty of the Trade Marks
Registry to give replies accurately and as early as possible. We do not understand how the web-site can show the mark as abandoned, even in July,
2008, as seen from the letter written by the Counsel for the appellant which shows that check-up of the application on the Online status facilities
indicated that the application is treated as abandoned, when the order is passed only in 2009. Are we to understand that even before an order is
passed treating the mark as abandoned, the online facility would anticipate that order? This indicates that there is some deep malaise.
The documents filed in the Paper Book indicate that the appellant has left no stone unturned to find out what happened to his application. All that
he received was a stony silence.
The leaned counsel for the appellant submitted that the payment of fees must be dispensed with since the order has not been communicated and
filing of the original Impugned Order must also be dispensed with since the appellant has not received it.
We direct the Registry to number the appeal. This order shall be sent to the Trade Mark Registry, who will reply to the following: 1) How even
before the order was passed, the Online status treated the mark as abandoned; 2) Why none of the letters written by the appellant received a reply; 3)
Why even after the opponents had indicate their opposition was withdrawn no communication was sent regarding order of abandonment; 4) Why was
the order of abandonment passed by an Examiner and not ""the Registrar"" and 5) If there is documentary proof that the Notice of Opposition was
communicated to the appellant or the counsel, the same shall be furnished.
On receipt of the reply, we will decide the issue of payment of fees. The Trade Mark Registry shall respond in this regard within two weeks from
the date of this receipt of this order. Post this appeal and all the MPs on 26.06.2013. This order shall be communicated to the Controller General of
Patents.
It is evident that in the absence of service of notice of opposition, the respondent could not have treated the opposition as abandoned. The appeal is
allowed. Consequently, the Miscellaneous Petition No. 105/2013 is closed. The notice sent to the respondent has not been acknowledged. It is obvious
that they will not have any interest in participating in these proceedings since they had indicated on 29/06/2011 itself that they wish to withdraw the
opposition. The matter will go back to the Registrar for appropriate orders within three months from the date of receipt of this order.