The case of Coaster Shoes Company Pvt. Ltd. v. Registrar of Trade Marks & Anr. brings into focus critical questions about the procedural obligations in trademark opposition proceedings, and the rights of parties under the Trade Marks Act, 1999 and the Trade Marks Rules, 2002.
Coaster Shoes Company Pvt. Ltd. is engaged in the manufacturing, marketing, and sale of footwear and has been in the business for several decades. The dispute began when Coaster Shoes Company sought to protect its trademark "TRAVEL FOX," which was first adopted by its predecessor, Apex Shoes Co. Pvt. Ltd., in 1999 and used since 2000. Over time, this trademark built substantial goodwill and recognition in the Indian market.
The central issue arose in 2007 when Respondent No. 2 filed applications for trademarks proposing the use of a mark similar to "TRAVEL FOX." The petitioner promptly filed opposition proceedings on 8th March 2010 against these applications, claiming that the impugned mark was deceptively similar to its registered and widely used trademark, thus creating confusion in the market.
Petitioner alleged non-receipt of the counter-statement from Respondent No. 2, which is essential for the progression of opposition proceedings.
The most significant issue in this case was whether the Registrar of Trade Marks fulfilled its statutory duty by properly serving the counter-statement filed by Respondent No. 2 to the Petitioner.
Section 21(3) of the Trade Marks Act, 1999 stipulates that the Registrar of Trade Marks must serve a copy of the counter-statement filed by the applicant (Respondent No. 2) on the opponent (the Petitioner, in this case) within a reasonable period. The service of the counter-statement triggers the next stage in opposition proceedings. Rule 50 of the Trade Marks Rules, 2002 requires the opponent (Petitioner) to file evidence in support of the opposition within two months from the date of service of the counter-statement. Failure to do so leads to the abandonment of the opposition. Section 27 of the General Clauses Act, 1897 establishes a presumption of service when a document is properly addressed, prepaid, and sent by post. However, this presumption is rebuttable if the party can provide evidence showing non-receipt.
The Petitioner emphasized that it had never received the counter-statement from Respondent No. 2 or from the Registrar of Trade Marks. They contended that under Section 21(3) of the Act, it is the statutory duty of the Registrar to serve the counter-statement. As no evidence of service was provided, the timeline for filing evidence under Rule 50 never started. Even though Section 27 of the General Clauses Act allows for the presumption of service once a document is dispatched, the Petitioner argued that they successfully rebutted this presumption by presenting evidence (such as written follow-ups and affidavits from their legal representatives) proving that the counter-statement was never received. Respondent No. 1, the Registrar of Trade Marks claimed that the counter-statement was dispatched on 30th March 2012 via speed post to the Petitioner’s address. He provided dispatch records from their system as proof of service. He argued that under Section 27 of the General Clauses Act, service is deemed complete once the document is dispatched by post, irrespective of whether it was received or not.
In its judgment, the court found that the Registrar of Trade Marks failed to provide conclusive evidence proving that the counter-statement had been received by the Petitioner. The court noted that while dispatch may have occurred, no proof of delivery was furnished, which is crucial in cases where statutory rights are impacted. The court accepted the Petitioner’s argument that the presumption of service under Section 27 of the General Clauses Act had been successfully rebutted.
This case highlights how procedural technicalities should not overshadow the substantive rights of parties, especially in matters involving the protection of intellectual property.