Delhi High Court makes it mandatory for the Trademark Registrar to record the grants of refusal in writing

Intellectual Property Attorney Association v. The Controller General of Patents, Designs, Trademarks and Anr

The present case was filed by Intellectual Property Attorneys Association being aggrieved by the order of the defendant refusing registration of trademark application in violation of Section 18(5) of the Trademarks Act, 1999 which talks about Application for Registration. Section 18(5) makes it mandatory to write and record the grounds for refusal or conditional acceptance along with the material used by them to arrive at the decision, and the same needs to be communicated to the applicant. It was submitted by the petitioner that Rule 36 of Trademarks Rules, 2017 runs contrary to Section 18(5) of the Act. The rule postulates that, the copy of the order should be sent to the applicant without the mention of grounds of refusal or acceptance and there lies the inconsistency. It was also submitted that, Rule 36 of Trade Marks Rules provides that the Registrar shall communicate the decision in writing to the applicant and if the applicant intends to appeal from such decision, he may apply within 30 days in Form TM-M to the Registrar whereupon the grounds of refusal/conditional acceptance shall be furnished.

The Court concluded that Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the provisions of the statute, as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. Section 18(5) of the Act would always prevail over the Rules. The defendant was directed to implement Section 18(5) strictly and the copy of the order be sent to applicant within two weeks with strict compliance as per the Act.

WRITTEN BY

Nischay Nirmal