Can the Registrar of Trade Marks pass a non speaking order without communicating the grounds for refusal?
Intellectual Property Attorneys Association v. The Controller General of Patents, Designs and Trademarks & Anr:
The Intellectual Property Attorneys Association (hereinafter referred to as Petitioner), aggrieved by the non-speaking orders passed by the Controller General of Patents, Designs & Trade Marks (hereinafter referred to as Respondent) while refusing registration of the trade mark applications, approached the Delhi High Court, contending that the said refusals were in violation of Section 18(5) of the Trade Marks Act, 1999.
The Court analysed Section 18 and Rule 36 to arrive at a decision in the case:
Section 18 deals with application made for the registration of a trade mark under which sub-clause 5 states that ‘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’.
Rule 36 of the Trade Marks Rules, 2017 provides that the Registrar shall communicate his decision in writing and an appeal against such decision can be preferred by filing form TM-M.
The Hon’ble Court, after a perusal of the two provisions, ruled that the Registrar of Trade Marks is duty-bound to send a copy of an order passed u/s 18(5) of the Act containing the reasons/ grounds of such refusal.