Bausch and Lomb Incorporated vs Union of India

Mr. A.J. Desai, J.(Oral) - By way of the present petition under Articles 14, 19 (1) (g), 21, 226 and 227 of the Constitution of India, the petitioner has prayed as under :-

"(A) Admit the present petition.

(B) Your Lordships be pleased to issue an appropriate writ of mandamus and/or a writ in the nature of mandamus and/or any other appropriate writ, order or direction quashing and setting aside the decision dated 15.5.2015 passed by respondent No. 2 as being unjust, illegal, arbitrary, without jurisdiction, contrary to the provisions of the Act, and violative of Articles 14, 19 (1) (g) and 21 of the Constitution of India;

(C) Pending admission, hearing and final disposal of the petition, this Hon''ble Court may grants an ex parte ad interim relief by staying the implementation, execution and operation of the order dated May 15, 2015 and consequently stay further opposition proceedings under No. AMD-156315 pending before the respondent No. 2

(D) Ad interim relief in terms of prayer (C) above may kindly be granted;"

Pursuant to the notice issued by this Court, the respondent No. 3 who has filed an application under Section 18 of the Trade Marks Act, 1999 (hereinafter referred to as ''the Act'') for registration of a Trade Mark has filed affidavit-in-reply and opposed grant of any relief as prayed by the petitioner. Rejoinder thereto as well as sur-rejoinder have been filed by the petitioner as well as respondents.

The brief facts relevant from the record are as under :-

3.1 The respondent No. 3 filed an application under Section 18 of the Act for registration of the mark "OCUVIT" on 5.3.1998. The said mark was advertised in the Trade Marks Journal Mega I dated 25.8.2003 and was made available on 7.10.2003.

3.2 The petitioner who claims that similar mark "OCUVITE" is already a trade mark belongs to the petitioner and hence, submitted opposition application under Section 21 of the Act. The said application was taken on record by the Registrar of Trade Marks i.e. respondent No. 2 herein on 7.5.2004. The counter statement was filed by the respondent No. 3 on 6.7.2004. The counter claim of the respondent No. 3 was taken on record by the Registrar, Trade Marks on 14.10.2004. As per the Trade Marks Rules, 2002 (hereinafter referred to as ''Rules''), evidence in support of opposition application has to be filed within a period of two months of serving the counter statement. On 30.11.2004, the petitioner filed an application for extension of time for filing evidence under Section 131 of the Act. The said extension application was granted by the Registrar of Trade Marks vide order dated 31.1.2005. Instead of producing the evidence on record within the extended time limit, the same were produced by the petitioner on 2.4.2005 by way of filing interlocutory petition. The said application which was filed by the petitioner in the year 2004 came to be finally decided by the Registrar only on 15.5.2015 by which the Registrar rejected the said application by holding that the Authority has no power to condone the delay in submitting the evidence as per Rule 50 of the Rules.

3.3. Hence this petition.

Mr. Maulik Nanavati, learned advocate appearing for the petitioner would submit that the only question involved in the present petition is whether the Registrar of Trademarks has power to condone the delay if evidence is not produced within the prescribed time limit as provided under Rule 50 of the Rules. He would further submit that in the case of Wyeth Holdings Corporation and another v. Controller General of Patents, Designs and Trade Marks and others, Special Civil Application No. 5042 of 2006 decided on 8.8.2006, the coordinate Bench of this Court has held that provisions of sub-rule (2) of Rule 50 are ''directory'' in nature and also held that the Assistant Registrar does have power to grant extension of time in light of the merits contained in the grounds on which the extension is sought for.

4.1 He would further submit that in the decision of the Delhi High Court in the case of M/s. Sunrider Corporation, USA v. M/s. Hindustan Lever Limited and another, delivered on 27.7.2007 in Writ Petition (Civil) No. 10721 of 2005 has held that the Registrar does not have power to extend the time for filing of the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under Rule 50 (1) of the Rules. However, the coordinate Bench of this Court in the case of Sanyo Ceramics v. Sanyo Electric Company Limited and another, rendered in Special Civil Application No. 25710 of 2007 on 28.7.2008 has considered both the above referred decisions and has held that the provisions of sub-rule (2) of Rule 50 are held to be directory and, therefore, delay was condoned and the matter was to be considered after considering the opposition. He would further submit that even the Tribunals are now condoning the delay relying upon the above referred decision of the coordinate Bench of this Court.

4.2 He would further submit that the Trade Mark Manual which are issued under the Act and Rules suggest that effect of Rule 50 is directory in nature. He, therefore, would submit that the respondent No. 2 should have condoned the delay which is of less than 90 days and should have allowed the petitioner to produce the evidence and should have decided the interlocutory application which remained undecided for a considerable long time from 2004 to 2015. He, therefore, would submit that this Court may exercise the power under Article 226 of the Constitution of India and condone the delay in the interest of justice.

On the other hand, Mr. Hardik Mehta, learned advocate appearing for the respondent No. 3 has relied upon the decision of the Delhi High Court rendered in the case of M/s. Sunrider Corporation, USA (Supra) and would submit that the respondent No. 2 has rightly rejected the application submitted by the petitioner which is beyond the prescribed period of limitation as provided under Rule 50 of the Rules. He would further submit that if this Court intends to quash the impugned order, then the matter may be remanded to the respondent No. 2 and the respondent No. 2 may be directed to consider the application of the petitioner on merits. He would further submit that no reasons have been pleaded by the petitioner while filing application for condonation of delay. Therefore also, the respondent No. 2 would be the proper authority to decide the application. He, therefore, would submit hat the petition be dismissed.

Mr. Kshitij Amin, learned Central Government Standing Counsel appearing for the respondent Nos.1 & 2 has opposed this petition.

I have heard learned advocates appearing for the respective parties. I have also gone through the impugned order passed by the respondent No. 2. I am of the opinion that the question involved in the present petition is whether the provisions of Rule 50 of the Rules are ''mandatory'' or ''directory'' in nature. I have also gone through the decisions relied upon by the petitioner as well as by the respondent No. 3. It appears that the coordinate Bench of this Court in the case of Sanyo Ceramics (Supra) has considered both the decisions i.e. decision of the coordinate Bench of this Court in the case of Wyeth Holdings Corporation and another (Supra) and the decision of the Delhi High Court in the case of M/s. Sunrider Corporation, USA, and after considering the said decisions, has held that the provisions of Rule 50 of the Rules are directory in nature. I have also considered the fact that the respondent authority has issued Trade Mark Manual by which the Officers have been directed that Rule 50 of the Rules should be treated as directory in nature. Considering the overall facts and circumstances of the case, I am of the opinion that the respondent No. 2 should not have rejected the application of the petitioner on the ground that the respondent No. 2 has no power and that the provisions of Rule 50 of the Rules are mandatory in nature.

In the result, the present petition stands allowed. The impugned order dated 15.5.2015 passed by the respondent No. 2 is quashed and set aside. Though the petitioner has filed Interlocutory Application for condonation of delay in filing the evidence in the year 2005, the respondent No. 2 has decided after considerable long time i.e. on 15.5.2015 and hence, in my opinion, it would be a futile exercise to remand the matter for fresh consideration to the respondent No. 2, particularly when there is no inordinate delay in producing the evidence on record. Hence, the Interlocutory Application filed by the petitioner for condonation of delay in filing the evidence is hereby allowed. The delay caused is hereby condoned. The petitioner is hereby directed to produce evidence before the respondent No. 2 within a period of 15 days from today. The respondent No. 2 thereafter shall proceed with the Opposition Application on merits, in accordance with law as expeditiously as possible. Rule is made absolute to the above extent.

Direct service is permitted.