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Judgment
Mr. C.M. Nayar, J.—These three petitions, being C.M.(M) Nos. 413/92, 398/ 92 and 399/92 have been filed to impugn the order dated July 21, 1992, passed by the Deputy Registrar of Trade Marks, Delhi, by which he disposed of the interlocutory petitions filed on August 31, 1990 in the Opposition Nos. DEL 6249, DEL 6254 and DEL 6247. The interlocutory petitions were filed by M/s Bata India Limited and the grounds taken therein are that M/s Adidas Sports Schuhfabriken Adi Dassler & Co. KG, West Germany were the proprietor of a number of trade marks in India including Registration Nos. (1)271864-8, (2) 352655 in class 25 and (3) 271863 in class 18. The consideration of these trade marks arises in the present Oppositions. The petitioner No. 1 assigned the trade marks by Deed of Assignment dated January 17, 1989, to M/s Bata India Ltd. and it is contended on behalf of this Company that they are the assignees and necessary parties to the Opposition and they may be added as Opponents in the proceedings pending before the Deputy Registrar. The respondents in each case replied to the Interlocutory Petitions and took the plea that M/s Bata India Ltd. have no concern with the present Opposition proceedings; there is nothing on record to prove that the said Company are assignees of these trade marks. The present interlocutory petitions are not maintainable and are liable to be dismissed.
The learned Counsel for the petitioners contended before the Deputy Registrar, as has been contended before me, that M/s. Bata India Ltd. may be made a party to the present Opposition Proceedings in accordance with the pro visions of Order 1 Rule 10 of the Code of Civil Procedure, as being a necessary party. He has further argued that the trade marks have been assigned by Deed of Assignment dated January 17, 1989, by M/s. Adidas KG (assignors) to M/s Bata (assignees). The learned Deputy Registrar heard these interlocutory applications and disposed of the same by holding that petitioner No. 1 had assigned a mark in question vide Schedule I to the Deed of Assignment dated January 17, 1989, and they having moved their Opposition in the Trade Marks Registry only on May 18, 1989, had no right to file the present Opposition Proceedings on the subsequent date since they were not the proprietors of the marks.
The interlocutory applications of M/s. Bata were rejected on the ground that the petitions were moved on August 31, 1990, to become a party to the Opposition Proceedings at a belated stage i.e. after more than 11/2 years, which was in violation of Rule 51 of the Trade and Merchandise Marks Rules, 1959 by which the party was entitled to become party to the Opposition Proceedings within a prescribed period, as defined in Rule 51 only by filing a notice of Opposition on the relevant form. The Deputy Registrar further concluded that there is no provision in the Trade Marks Law that a party could be added as a party at a belated stage and the provisions of Order 1 Rule 10 C.P.C. have no application in the Trade Marks Law. It has further been highlighted that at the time when the Opposition was moved the necessary registration was not in operation and the same was allowed in favor of M/s. Bata India Ltd. and necessary entries were made in the register as subsequent proprietor on October 14, 1992.
The learned Counsel for the petitioner has contended that the Deputy Registrar has gravely erred in not allowing the interlocutory applications by M/s Bata merely on the ground that the application was moved at a belated stage. He has further stated that M/s. Bata is now approved by the Registrar as subsequent proprietor and it will be in the interest of justice if the said company is permitted to participate in the proceedings. He has further referred me to Section 21 of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as ''the Act'') to highlight the proposition that any person may, within, the specified period from the date of the advertisement of the application for registration etc. may apply in the prescribed manner and on payment of the prescribed fee with regard to opposition to the registration and there is no bar of any one joining the proceedings in accordance with this provision and it may not even be necessary for a party to have a direct interest in the matter. The relevant provision of Section 21(1) reads as follows:
Opposition to registration.--(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration."
He has cited the judgment of the Chancery Division of the High Court in England as reported ''In the matter of an application by the HAVANA COMMERCIAL COMPANY FOR REGISTRATION OF A TRADEMARK Reports of Patent Cases 1916 (Vol. 33) 399, to reiterate the proposition that the opponent is not necessarily a person who is aggrieved and, Therefore, could not be a person who is interested in any existing mark. The relevant passage reads as under (page 404):--
"It seems to me, in the circumstances, that the Opponents, as claimants to a mark, have no merits whatever, and if it depended solely upon their ownership of the mark, I should not have had any difficulty whatever in the case. But there are two things to be considered. First of all, an opponent is not necessarily a person who is aggrieved, and Therefore need not be a person who is interested in any existing mark. It may Therefore be open to the Opponents to take the objection taken in the 4th of their grounds of Opposition that the registration will cause confusion in the trade and with the public; and the Registrar, when the facts are brought to his attention, is bound to consider the Application from not only the point of view of the Applicants and the Opponents, but also from the point of view of the public; and it is the point of view of the public which I must consider in the present case."
The learned Counsel for the respondents, on the other hand, has contended that the Deputy Registrar is already proceeding to hear the opposition of M/s. Adidas AG, who are the original proprietors of the trade marks and the observation of the Deputy Registrar to the effect that the said company had no right to file the opposition proceedings subsequent to the date of the assignment in favor of M/s. Bata India Ltd., is of no consequence as it is merely an observation and the Deputy Registrar is already hearing the opposition of M/s. Adidas AG. The controversy is, accordingly, narrowed down to the consideration as to whether the consignee M/s. Bata India Ltd. is a necessary party to the present proceedings and whether the delay in filing their interlocutory applications could be condoned or covered by the provisions of Order 1 Rule 10 C.P.C.
The Counsel for the petitioner states that the Deputy Registrar has not given any findings, which he was bound to do while not accepting the application which has been filed at a late stage. Support is sought from the provisions of Section 22 of the Act, which relates to correction and amendment and the powers vested with the Registrar to permit such correction of any error in, or an amendment of a notice of opposition or a counter statement u/s 21 of the Act. It has been argued that M/s. Adidas AG had already moved an application for the opposition and the subsequent interlocutory petition filed by M/s. Bata to which the trade mark had been validly assigned was merely an act of seeking correction and amendment of an earlier notice of opposition, which was already pending with the Deputy Registrar.
There is force in the contention of the Counsel for the petitioner to the effect that M/s. Bata India Ltd. is a necessary party in view of the subsequent Deed of Assignment in its favor and it will be against the norms of justice if the said company is excluded from the proceedings when they have substantial interest in the matter. There is no doubt that the application was moved at a belated stage but the fact remains that M/s. Bata was only approved by the Registrar as a subsequent proprietor on a later date i.e. October 14, 1992. In this view of the matter it will be wrong to deprive the said Company to participate in the proceedings merely on the ground of delay. "
The provisions, as contained in Sub-section (8) of Section 109 of the Act would indicate that the provisions of the CPC shall apply to the appeals before the High Court under this Act and it has been argued that the same benefit could accrue to the petitioner in proceedings before the Deputy Registrar. It will not be necessary for me to give any finding in this regard in view of the fact that M/s Adidas AG is already a party to the proceedings and the Deputy Registrar is hearing them in respect of their opposition to the registration of the trade mar, of the respondents. M/s Bata India Ltd., who are now approved as a subsequent proprietor, in view of the Deed of Assignment dated January 17, 1989, do have vit interest in the matter and it will be necessary for them to be made a party to the proceedings and to dispose of the matter after hearing them.
In view of the above, the impugned order dated July 21, 1992, is set aside are the learned Deputy Registrar of Trade Marks, New Delhi, shall proceed in the matter in the light of the above judgment, after giving due opportunities to all the parties in accordance with law. There will be no order as to costs.