Author: Former Intern - Aparna Tripathy
In the matter of, Dhiraj Kumar Nanda v. The Registrar Of Trade Mark & Anr. [C.A.(COMM.IPD-TM) 7/2023], a single judge [Justice Prathiba M. Singh] of the High Court of Delhi, vide order dated July 3, 2023, affirmed that placing the notice of the website is not sufficient and notice should be communicated to the parties in writing.
Rule 50(1) of the Trade Marks Rules, 2017 (‘Rules’) states that “(1) The Registrar, after the closure of the evidence, shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice.” The nature in which the registrar shall ‘give notice’ of hearing to respective parties is not certain.
The Appellant’s application for the mark NUTRILIFE in Class 5 was ordered abandoned vide TM Office’s order dated September 23, 2022, in an opposition proceeding. During the course of the opposition proceeding, two hearings were scheduled in the year 2022. The Appellant filed the present appeal against the abandonment order, contesting that it did not receive any hearing notices in the matter and thus could not defend its position for its trademark.
The Respondent submitted that the hearing notice was received by the Opponent. However, it was not disputed that the hearing notice was not issued to the Appellant.
The court placed reliance on the judgement in Institute of Cost Accountants v. Registrar of Trade Marks 2013 SCC OnLine Bom 362 stating that, “The respondent was bound to communicate any objection or proposal in writing to the applicant.…placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The respondents have not indicated anything that obliged the petitioner to inspect the website on a daily basis”. The Court while allowing the appeal held that, “…As per the settled legal position, the Registrar is required to give notice to the parties, of the opposition hearing…the impugned order abandoning the application is set aside. A fresh date of hearing shall be communicated by the Registrar of Trademarks to the parties, on which the date the matter shall be heard and orders shall be passed in the opposition in accordance with law….”
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