Asian Paints Limited vs Assistant Registrar Of Trade Marks And Royal Touch Paints

Raghbir Singh, J

This original appeal has been filed by the appellant against the decision of the Assistant Registrar of Trade Marks dated 5.7.2004 disposing of an

interlocutory petition dated 5.7.2004 filed by the appellant in matter of their opposition being opposition No. DEL-T-1609 in matter of application

No.518458B of second respondent.

Second respondent filed an application being application No.518458 for the registration of trade mark 'ROYAL TOUCH ' in class 2. The appellant

gave a notice of opposition opposing the registration of the said mark, inter alia under section 9, 11(a), 11(e), 12(1) and 18(1) of the Trade and

Merchandise Marks Act, 1958. The appellants could not file the affidavit in support of opposition and requested for extension of time in TM-56. The

appellants received notice dated 18.5.2004 from the first respondent, the Assistant Registrar of Trade Marks fixing the date of hearing on 5.7.2004.

The Assistant Registrar held the hearing without calling upon second respondent to file their evidence. Learned Assistant Registrar treated the notice

of opposition given by the appellant as abandoned by virtue of provisions under Rule 50(2) of the Trade Marks Rules, 2002. He accepted the

application No.518458 in class 2 to proceed for registration. The appellant has also submitted that the application had been filed in the name of M/s

Royal Touch Paints which is not a person in terms of the provisions of Trade and Merchandise Marks Act, 1958. However, later on the application in

TM-16 was filed whereby the names of the applicant were substituted and the same has been allowed by the Assistant Registrar by his order dated

5.7.2004.

The appellant has submitted that first respondent has erred in disposing of the application without calling for the evidence of second respondent, the

applicant and has worked against the purity of the Register. He has committed a grave error in not considering the principles of natural justice, public

interest in passing his order. The order passed by first respondent is erroneous and against public interest.

The matter was taken up for hearing during the sitting of the Board held at Delhi on 28.1.2005. Learned counsel Ms. Pratibha Singh appeared on

behalf of the appellant and learned counsel Shri M.R. Bhalerao appeared on behalf of the second respondent.

Learned counsel for the appellant drew our attention to Rule 50 of Trade Marks Rules, 2002 making provision for filing of evidence in support of

opposition. She contended that Rule 50(2) is directory in nature. She relied upon the Full Bench Judgment of Delhi High Court in Hastimal Jain Vs.

Registrar of Trade Marks 2000 PTC 24 DEL in this regard. Rule 53(2) of the Trade and Merchandise Marks Rules, 1959, parallel of Rule 50(2) of

the Trade Marks Rules, 2002, was held to be directory by the Hon'ble High Court. The immediate effect of this interpretation is that the Assistant

Registrar is not under a mandate to deem the opposition as abandoned. In suitable cases, he can permit for grant of extension for filing of evidence in

opposition.

Learned counsel for the second respondent pointed out that Rule 53 of the Trade and Merchandise Marks Rules, 1959 has undergone material

changes in its new transformation as Rule 50 of the Trade Marks Rules, 2002. He pointed out three substantive changes which have been made in the

text of the Rule. Sub rule (1) has been modified with a view to provide that the opposition shall be filed within two months from service of a copy of

the counter statement or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow. New

sub rule (3) has been added with a view to provide that the application for grant of extension of a period of one month mentioned in sub-rule (1) shall

be made in Form 56 accompanied by the prescribed fee before the expiry of the period of two months therein. He pointed out that sub-rule(2) has

been amended with a view to take away the in built discretion of the Registrar provided under the old Rule in the nature of expression ""unless

Registrar otherwise directs"". He submitted that with this new provisions in the Rule no discretion is left with the Registrar to grant extension beyond

one month.

Learned counsel for the appellant submitted that, besides allowing extension for filing of evidence in opposition, the learned Assistant Registrar

should have waited for the evidence to be filed by the respondent on record. The society at large has a vital interest in maintaining the purity of the

Register. In view of that with a view to substantiate his claim in the impugned mark the relevant evidence should have been brought on record for

arriving at a correct decision.

Provisions under Rule 50 of Trade Marks Rules, 2002 are not to be read in isolation. The other connected provisions under the Act and the Rules

made there under are to be taken into account. Section 131 of the Trade Marks Act, 1999 provides as under:-

Extension of time.-(1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that

there is sufficient cause for extending the time for doing any act (not being a time expressly provided in this Act), whether the time so specified has

expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly.

(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and

no appeal shall lie from any order of the Registrar under this section.

Section 131 of the Trade Marks Act, 1999 and Rule 105 of the Trade Marks Rules, 2002 are reproduction with mutatis mutandis changes, of section

101 of the Trade and Merchandise Marks Act, 1958 and Rule 106 of the Trade Marks Rules, 1959 respectively. The scope of section 105 had been a

matter of consideration under 2000 PTC 24 DEL by the Full Bench of that Court. It is enough to mention that rule 105 provides for grant of extension

of time by the Registrar in all matters of excepting a few matters specifically referred to in that rule. Accordingly, provisions of Rule 105 are to be

read in furtherance of substantive provisions contain in section 131 of the Act. It is true that Rule 50 in its new incarnation has undergone changes of

fundamental character. However, the settled proposition of law is that the provisions in subordinate legislation have to be in conformity with the

provisions of principal legislation. Section 131 as interpreted by the Courts by virtue of its parallel provision under section 101 under the Trade and

Merchandise Marks Act, 1958 is very much in place in its old form which unambiguously confers a discretionary power in the Registrar to grant

extension. It is a settled position in law that the discretion of the Registrar under section 131 of the Act extends to the grant of extension in matter of

filing of evidence in opposition. In view of the above, the Registrar was very well competent to grant extension to the appellant in filing their evidence

in opposition. Registrar also did not wait for the filing of evidence by the respondent. The society has a vital interest in the purity of the Register and

for that matter to get to know the grounds for claiming the registration of the mark. The Registrar should have insisted on the filing of the evidence by

the respondent so that by putting his reliance there upon he could discuss and give his reasons in the impugned order. The impugned order has been

drawn up in a very sketchy manner. Quasi judicial orders affecting the vital interests of the society should be put down in a more serious manner.

In view of the above, the matter relating to consideration of the application for registration and of opposition thereto is remitted back to the Registrar

for fresh consideration.