Settling the Ambiguity of Proper Service of Counter Statement: Coaster Shoes V Registrar

By Ananyaa Banerjee and Titiksha Sinha

INTRODUCTION

The Hon’ble Bombay High Court recently in its judgment dated August 16, 2024, in Coaster Shoes Company Pvt Ltd vs Registrar Of Trade Marks[1], held that “there is a duty cast upon the Registrar of Trade Marks to serve the Notice of Opposition on the Applicant and thereafter to serve copy of the Counter Statement on the Opponent. This duty of the Registrar of Trade Marks, in my view cannot be cast away by contending that the Notice of Opposition and the Counter Statement has been served on the Applicant and on the Opponent respectively by someone other than the Registrar of Trade Mark.”. This decision removes the scope of ambiguity with a view to ensure conformity in practice of service of Notice of Opposition/ Counter Statement by the Learned Registrar.

CASE TIMELINE

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DATE	CORRESPONDING ACTION
April 19, 2007	The Respondent No. 2 (“the Applicant”) filed Application Nos. 1551485 and 1646145 for the mark  in classes 25 and 18 respectively.
March 08, 2010	The Petitioner (“the Opponent”) filed notice of oppositions against the said applications.
April 09, 2011	Notice of oppositions served by the Registry vide letter dated April 01, 2011
May 30, 2011	Counter Statement filed by the Applicant in both matters
March 14, 2012	As per the Registry’s records, the Registry has served the counter statement on the Opponent vide Dispatch No. TOP- 4875 which was dispatched on March 30, 2012.
January 06, 2014	The Opponent received a letter from the Applicant’s counsel stating that they have filed the counter statement.
Jan 21, 2014	The Opponent wrote a letter to the Registry that the counter statement has not been served by the Registry on them. In this regard, 9 other letters were written to the Registry, however, no response was received.
November 22, 2018	Opponent filed the evidence in support of opposition under Rule 45 by way of abundant caution despite the non- service of counter statement.
January 02, 2019	Relying letter under Rule 46 was filed by the Applicant.
January 10, 2019	Relying letter under Rule 47 was filed by the Opponent.
August 08, 2022	Hearing was scheduled for arguments. However, order was passed deeming the opposition to be abandoned under Rule 45(2) stating that the counter statement was duly served.

 

The present petition has been filed challenging the said order dated October 07, 2022.

CONTENTIONS OF THE PLAINTIFF/THE OPPONENT

1. As per Section 21 of the Act, there is an express duty on the Registrar to serve a copy of the notice of opposition upon the Applicant and the counter statement on the Opponent. Nobody else can serve the counter statement upon the Opponent other than the Registrar. The Registrar has sought to expand the said scope of Section 21 by contending that the service of the counter statement can be made by the Applicant as well, which is not true.
2. Rules 50 to 52 of the Trade Marks Rules, 2002 prescribe a departure from the procedure of service of documents by the Registrar and shifts the burden of serving evidence affidavits upon the parties.
3. The Registrar permitted the completion of the pleadings and did not raise any objection on procedural grounds until the hearing.
4. The letter dated March 14, 2012, vide Dispatch No. TOP- 4875 wherein the Registrar claims to have served the counter statement on the Opponent is only for internal record and does not show actual receipt of the same. The presumption of service cannot be drawn as the Opponent has failed to prove that it has properly addresses or posted by registered post the letter dispatching the counter statement.

CONTENTIONS OF THE RESPONDENT NO.1/THE REGISTRAR

1. The applicable rules in the present matter would be Trade Marks Rules, 2002 and not the amended Trade Marks Rules, 2017 as the same do not apply retrospectively. Therefore, as per Rule 15 of Trade Marks Rules, 2002, the service of the counter statement by the Registrar to the Opponent only takes into consideration the dispatch and not the receipt.
2. As per the Registry’s records, the Registry has served the counter statement on the Opponent vide Dispatch No. TOP- 4875 dated March 14, 2012 which was dispatched on March 30, 2012 to the address of the Opponent. There is also a postal stamp dated April 07, 2012 on the same. The address of the Opponent on which the dispatch letter dated March 14, 2012 was sent is not Therefore, the service has been sufficiently made.

DECISION AND ANALYSIS

1. It is necessary for the Opponent to have received the Counter Statement from the Registrar of Trade Marks, considering the mandatory timeline for filing evidence under Rule 50 of the 2002 Rules which will commence once the Opponent has been served / received the Counter Statement.
2. The interpretation placed by Registrar on the words “ordinarily served by the Registrar of Trade Marks” in Rule 49 to mean that “ordinarily” a copy of counter statement would be served by the Registrar, whereas in other cases the copy of the counter statement may be served directly by the Applicant on the Opponent is misconceived. This interpretation overlooks the part which states “within two months from date of receipt of the same”. This can only mean that the counter statement is to be served by the Registrar of Trade Marks upon receipt the Counter Statement and that too within two months from the date of receipt.
3. The Dispatch Register of Registrar was only produced during the oral arguments does not show that the counter statement was served upon the Opponent. There is no receipt from the postal authority to show that there has been a dispatch and / or receipt of the counter statement by the Opponent. It was the duty of Registrar to show that the Opponent had received the counter statement. Whereas, the Opponent has filed several letters to the Registry stating that the counter statement has not been served, however, did not receive any response.
4. This is in view of my finding that the Opponent had not received the counter statement from Registrar and as a result of which Section 21(3) read with Rule 49 of the 2002 Rules have not been complied with by the Registrar of Trade Marks. The orders were set aside.

CONCLUSION

The judgement sets an important precedent regarding the mandatory authority of the Registrar to serve the notice of opposition and the counter statement on the parties, and the receipt of the same for the deadline to commence.

The rationale behind the decision can be considered a positive approach, however, there is still room for subjective discretion. The ratio behind the present judgement took into consideration the endeavor of multiple follow-ups by the Opponent and the fact that Trade Mark Rules, 2002 were applicable. However, whether in the absence of such vigilance by the parties, will the Hon’ble Court have a similar point of view, which can only be learnt with time.

Shraay Bhushan, Junior Associate at S.S. Rana & Co. has assisted in the research of this article.

[1] IA (L) NO.7301 OF 2023