Fact of the Case:
Alpha Foundation for Education and Research, a charitable educational trust established in 1993, had been using the trademarks "AKARA," "AKARA STAR KIDS," and its associated logo for its educational institutions since 2011. The plaintiff was the registered proprietor of these trademarks under Classes 41 and 16. Akara Education Private Limited applied for the registration of the trademark "AKARA" in Classes 9, 37, and 41. The appellant opposed these applications, claiming that the impugned trademark was identical to or deceptively similar to its own, leading to confusion among the public.
The opposition notices were filed by the appellant on various dates in 2017, challenging the respondent's trademark applications. However, the Assistant Registrar of Trade Marks rejected the opposition, treating it as abandoned on procedural grounds due to a delay in filing evidence. The appellant challenged this order, arguing that it was not given a fair opportunity to present its case.
Procedural Background in Brief:
The appellant filed opposition notices in 2017, objecting to the respondent's trademark applications. The Assistant Registrar of Trade Marks fixed different hearing dates for the cases. The appellant submitted its evidence under Rule 45(1) of the Trade Marks Rules but filed it after the stipulated two-month period. The Assistant Registrar rejected the evidence for being belated and held that the opposition was abandoned.
The appellant challenged these orders before the Intellectual Property Appellate Board (IPAB), but due to the dissolution of IPAB, the cases were transferred to the Madras High Court. The matter was heard by Justice N. Seshasayee, who examined whether the rejection of the opposition on procedural grounds was justified.
Reasoning of the Court:
The court observed that the Assistant Registrar failed to comply with Section 21(3) read with Rule 44(1) of the Trade Marks Rules, 2017 and Rule 49(1) of the Trade Marks Rules, 2022, which require the Registrar to serve a copy of the counter-statement on the opponent. The court found that there was no proof that the counter-statement was duly served on the appellant, which was a crucial procedural requirement before evidence could be demanded from the opponent.
The court further held that Rule 45(2) of the Trade Marks Rules, 2017, was procedural and directory in nature and could not override the substantive right of the opponent to contest the registration of a trademark. The Registrar's decision to reject the opposition merely on the ground of delay in submitting evidence was found to be arbitrary and inconsistent with the purpose of maintaining the purity of the trademark register.
The court reasoned that the Registrar could not insist on the submission of evidence unless the counter-statement had been properly served on the opponent. Since the Registrar failed to prove that the counter-statement was duly served, the rejection of the opposition as abandoned was unsustainable. The benefit of doubt had to be given to the opponent, as what was at stake was the statutory right to oppose the registration of a potentially conflicting trademark.
Decision:
The Madras High Court set aside the impugned orders of the Assistant Registrar of Trade Marks. It directed the Registrar to restore the opposition along with the appellant’s evidence and pass a fresh order on merits within four months. The appeals were allowed with no order as to costs.
Case Title: Alpha Foundation for Education and Research Vs. Akara Education Private Limited & Anr.
Date of Order: March 13, 2024
Case Number: (T)CMA(TM) No.82 of 2023 and other connected appeals
Neutral Citation: Not specified
Name of Court: Madras High Court
Name of Hon’ble Judge: Hon’ble Justice N. Seshasayee
