Clarifying Service of Notice Rules under Trade Marks Rules: The Ramya S. Moorthy Case

Posted On - 3 October, 2023 • By - King Stubb & Kasiva


In a significant legal development, the case of Ramya S. Moorthy v. Registrar of Trade Marks[1] before the Hon’ble Madras High Court, has garnered attention to a crucial issue within trademark law. This case, while dealing with two writ petitions, discussed the critical question of when an applicant for trademark registration officially receives a notice of opposition, as stipulated by Section 21(2) of the Trade Marks Act, 1999. The dispute arose when the Petitioner’s two trademark applications in separate classes were declared abandoned due to ambiguity regarding the exact moment of receipt of the notice.

The Plaintiff’s Contentions

The legal counsel for the Petitioner argued that Section 21(2) of the Trade Marks Act, 1999 unambiguously specifies that the period for responding to a notice of opposition begins only when the applicant receives the notice of opposition. The Petitioner asserted that they did not receive the notice of opposition in dispute and hence could not file the Counterstatement in the prescribed time. The Petitioner also argued that the Trade Mark Registry’s reliance on a document indicating the transmission of the opposition notice to the agent of the applicant on January 19, 2023, is not tenable as it did not provide sufficient evidence that the applicant received the opposition notice.

The Respondent’s Contentions

The Respondents based his contentions on Rules 17 and 18 of the Trademarks Rules, 2017.The Respondents argued that notice of opposition could be lawfully served via email to the applicant’s provided address. They emphasized that, according to these rules, once an email has been sent, it qualifies as proper service.The Respondents’ referenced a specific document as proof that the opposition notice was successfully transmitted to the applicant on January 19, 2023. Based on the aforementioned rules and the evidence of successful email transmission, the Respondents contended that they had effectively served the applicant/Petitioner with the notice of opposition. Hence, they argued that the deadline for responding to the opposition notice had commenced, per Section 21(2) of the Trademarks Act, 1999.

The Court’s Decision

  • The Court emphasized Section 21(2) of the Trademarks Act, which stipulates that the applicant’s time limit for submitting a counterstatement commences upon receipt of an opposition notice.
  • Rule 18(2) introduced a legal fiction regarding the service of notice by post and e-mail, deeming it to be effective upon dispatch. However, this was contrary to Section 21(2) as the period should begin with the applicant’s receipt.
  • The Court determined that the prescribed time limit to file a counter statement must only start from the date of the applicant’s actual receipt of the e-mail, not solely by its transmission, to ensure that the applicant’s substantive rights are protected.
  • As a result, the Court allowed the petition and quashed the impugned orders, reinstated the trademark applications for reconsideration, and ordered the Petitioner to file counter statements within one month of receiving the Court’s order. The Registrar of Trademarks was entrusted with reviewing the situation impartially, affording both parties a reasonable opportunity.


In this case, the Court emphasized the paramount significance of safeguarding an applicant’s substantive rights and fairness in trademark registration proceedings. The Trademarks Act was affirmed by the Court’s ruling that the period for responding to a notice of opposition begins upon the applicant’s actual receipt of the notice, even if sent via e-mail. This decision reaffirms the principle that trademark registration procedures must prioritize protecting the rights of applicants, assuring equity and justice.

[1] Ramya S. Moorthy v. Registrar of Trade Marks and Another, 2023 SCC OnLine Mad 5305.