In India, IP owners and practitioners have found it difficult to fathom the exact reasons for refusal of registered trade mark applications, owing to the issuance of non-speaking orders by the Registrar of Trade Marks. The Intellectual Property Attorneys Association filed a public interest petition before the Delhi High Court, challenging the non-speaking orders passed by the Registrar of Trade Marks when refusing applications for registration of trade marks.
The Court had to consider the apparent contradiction between the provisions contained in Section 18(5) of the Trade Marks Act, 1999 (as amended) (the ‘Act’) and Rule 36 of the Trade Marks Rules, 2017 (as amended) (the ‘Rules’).
Section 18(5) of the Act states:
- Application for registration
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.” (Emphasis added)
Rule 36 of the Rules states:
- Decision of Registrar
- The decision of the Registrar… shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision…” (Emphasis added)
The Court held:
- The Registrar of Trade Marks was duty bound to send a copy of the order passed under Section 18(5) of the Act containing the grounds for refusal and the material used in arriving at the said decision, to the applicant;
- Rule 36 of the Rules was arbitrary, unreasonable and inconsistent with the mandatory provisions of the Act insofar as it empowered the Registry to communicate the decision without the grounds for refusal. Accordingly, Section 18(5) of the Act shall prevail over Rule 36 of the Rules;
- The petition was allowed, and the Registrar of Trade Marks was directed to strictly implement Section 18(5) of the Act by recording in writing the grounds for refusal. Further, the order containing the grounds of refusal shall be sent to the applicant within two weeks of the passing of the order.
This decision enhances the efficiency of India’s Trade Marks Registry by providing clarity of the ground(s) of refusal, by:
- eliminating the additional step of applying for the grounds of decision; and
- allowing trade mark applicants to file an appeal to the refusal or a review petition, expeditiously.
By: Denise Mirandah and Suhaimi bin Lazim
A version of this article was first published in the membership journal of the Chartered Institute of Patent Attorneys – see more at http://www.cipa.org.uk/