19th March, 2013
In an important decision, the Bombay High Court observed that an applicant for trademark was not obliged to inspect the website of the registering authority on a daily basis nor bound legally to take notice of anything that is posted on the website.
The court thus allowed, by order dated 1-3-2013, the Institute of Cost and Works Accountants of India (ICWAI) to continue their endeavour to trademark “CMA” in class 41 (education, providing training, entertainment, sporting and cultural activities). The petitioner had sought a writ of mandamus directing the respondent – Registrar of Trademarks to fix a date for hearing in respect of its application.
Abandonment of trademark application
The letter /examination report dated 19-9-2011 had been posted on the respondent - registering authority's website stating that there were certain objections. However, ICWAI did not receive the same ‘in writing’ and could not respond within the statutory limit of one month requesting for a hearing.
The Registrar contended that placing the notice of the website constituted compliance with Rule 38(4) of the Trade Marks Rules, 2002 (the Rules) and since the petitioner had not responded within one month the application was to be treated as abandoned. However, the Court held that merely placing the notice on the website would not amount of communication objection or proposal ‘in writing’ as per the Rules.
Downloading date can be relevant
The Court agreed with the petitioner that at best, the knowledge of the notice can be imputed on the date of downloading the same from the website which was on 13-3-2012. The petitioner had applied for hearing on 30-3-2012 and hence the application was held to be not abandoned.
In an important decision, the Bombay High Court observed that an applicant for trademark was not obliged to inspect the website of the registering authority on a daily basis nor bound legally to take notice of anything that is posted on the website.
The court thus allowed, by order dated 1-3-2013, the Institute of Cost and Works Accountants of India (ICWAI) to continue their endeavour to trademark “CMA” in class 41 (education, providing training, entertainment, sporting and cultural activities). The petitioner had sought a writ of mandamus directing the respondent – Registrar of Trademarks to fix a date for hearing in respect of its application.
Abandonment of trademark application
The letter /examination report dated 19-9-2011 had been posted on the respondent - registering authority's website stating that there were certain objections. However, ICWAI did not receive the same ‘in writing’ and could not respond within the statutory limit of one month requesting for a hearing.
The Registrar contended that placing the notice of the website constituted compliance with Rule 38(4) of the Trade Marks Rules, 2002 (the Rules) and since the petitioner had not responded within one month the application was to be treated as abandoned. However, the Court held that merely placing the notice on the website would not amount of communication objection or proposal ‘in writing’ as per the Rules.
Downloading date can be relevant
The Court agreed with the petitioner that at best, the knowledge of the notice can be imputed on the date of downloading the same from the website which was on 13-3-2012. The petitioner had applied for hearing on 30-3-2012 and hence the application was held to be not abandoned.