News & Updates

October 29, 2019

Grounds for refusing a TM application must be communicated with order

In the matter of Intellectual Property Attorneys Association v. The Controller General of Patents, Designs & Trade Marks & Anr.[W.P.(C) 3851/2019], the Delhi High Court, vide its judgment dated October 16, 2019, held that the Registrar of Trade Marks is obligated to record the grounds for refusal/conditional acceptance of a trademark application as well as the material used by him in arriving at his decision, and to communicate the same in writing to the Applicant, under Section 18(5) of the Trade Marks Act, 1999.

The instant Writ Petition had been filed as the Petitioner was aggrieved by the non-speaking orders passed by the Registrar of Trade Marks while refusing certain trademark applications. The Petitioner submitted that the Registrar had failed to comply with the statutory requirements of Section 18(5) by not communicating to the Applicant any grounds for refusal of the applications.

It was further submitted by the Petitioner that Rule 36 of the Trade Marks Rules, 2017, which provides that the Applicant may request the Registrar (within thirty days of receipt of the decision of refusal/conditional acceptance) to state in writing the grounds for the decision as well as the materials used therefor, is inconsistent with the mandatory provision of Section 18(5) of the Trade Marks Act, insofar as it provides for sending the copy of the order to the applicant without the grounds for the decision.

The Court perused the submissions of the Petitioner and observed that “…the Registrar of Trade Marks is duty bound to send the copy of the order passed under Section 18(5) of the Trade Marks Act containing the grounds for refusal/conditional acceptance and material used by him in arriving at his decision to the applicant. Rule 36 of the Trade Marks Rules is arbitrary, unreasonable and inconsistent with the mandatory provision of the statute insofar as it empowers the Registry to communicate the decision without the grounds for refusal/conditional acceptance. In that view of the matter, Section 18(5) of the Trade Marks Act shall prevail over Rule 36 of the Trade Marks Rules.” Allowing the instant writ petition, the Court further heldthat “the Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order.”

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