Bentley And Remington (P) Ltd., vs Imperial Chemical Industries,

T.R. Subramanian, Technical Member

The present appeal is against the order dated 26.6.96 by which the Assistant Registrar of Trade Marks, Chennai had dismissed the appellants I.P.

(Interlocutory petition) which had been filed by them for taking on record the evidence in support of the application in respect of their trade mark

Application No. 466886.

The appellant (applicant), M/s. Bentley & Remington (P) Ltd., Bangalore, having office at Bentley House, 515E, 1st C Main Road, Vijayanagar II

Stage, Bangalore-560040 had filed a Trade Mark Application No. 466886 for registering of the mark ICIN in class 5. The mark was advertised in the

Trade Marks Journal and an opposition MAS 2257 was filed by the respondent (opponent) M/s. The Imperial Chemical Industries, Mill Bank, London

SWIP 3JF, England on 8th August, 1989. A counter statement was filed by the appellant (applicant) on 20th February, 1990. The respondent

(opponents) filed evidence in support of the opposition on 11th October, 1990. They also filed additional evidence in support of the opposition on

21.8.91 under Rule 53 of Trade and Merchandise Marks Rules, 1959. Thereafter, the appellant (applicant) were asked to file their evidence in support

of the application. But they did not file their evidence nor did they seek any extension of time for filing the same. A hearing on this matter was fixed

for 27.1.95.

In the mean time, a letter was received from the agent of the applicant Mrs. A.V. Nathan on 16.1.95 informing the Trade Marks Registry to

directly correspond with the applicant. The Trade Marks Registry informed the applicant directly that the hearing has now been adjourned to 12.6.95.

On 8.6.95 the appellants new advocate Shri M.K. Rao requested for adjournment of the hearing and the hearing was adjourned to 11.7.95. On 20th

July, 1995 Shri M.K. Rao filed an IP for taking on record the evidence in support of the application alongwith TM 16 to amend the date of user to read

as 1985. After obtaining the comments from the respondent (opponent), the IP was heard on 29.11.95 by the Assistant Registrar of Trade Mark. The

Assistant Registrar of Trade Marks after hearing the case has decided by his order dated 26.1.96 that the appellant (applicant) had not been vigilant in

prosecuting the present application and that they had filed the interlocutory petition for taking on record evidence in support of the application after a

lapse of almost 4 years from the due date. They have also failed to show sufficient cause to allow the interlocutory petition and also the request on

TM 16 for amending the date of user to 1985. The Assistant Registrar by his order dated 26th June, 1996 dismissed the interlocutory petition and also

the request on TM 16.

Against this order, the appellant (applicant) filed an appeal TMA No. 3/97 before-the Hon'ble High Court of Madras. The appeal has been

transferred to the IPAB in view of Section 100 of the Trade Marks Act, 1999 being brought into force w.e.f. 6.10.2003. The appeal came up before

the Board on 19th December, 2003, when Mr. M.K. Rao, Advocate, appeared for the appellant (applicant) and Ms. Gladys Daniel, Advocate

appeared for the respondent (opponent). Shri M.K. Rao submitted that two oppositions which have been numbered as MAS 2257 and MAS 2262

have been filed in the Trade Marks Registry both opposing the registration of the appellants Application No. 466886. The present case before the

Tribunal is in respect of MAS 2257 in which the interlocutory petition filed for taking on record evidence in support of the application and a request on

TM 16 for amending the date of user to 1985 has been disallowed by the Assistant Registrar by his order dated 26th June, 1996. He further pointed

out that the appellant (applicant) had filed a similar interlocutory petition and request on TM 16 in respect of the other opposition MAS 2262 and the IP

and request on TM 16 has been allowed by the same Assistant Registrar. He argued that because of the two conflicting orders in respect of the same

matter a peculiar situation would arise in the disposal of the two oppositions to trade mark Application No. 466886. He agreed that three has been a

delay in filing the evidence in support of the application by the applicant. The applicant had appointed Mr. A.V. Nathan, as their advocate and because

of the latch on the part of the advocate, the evidence had not been filed in time. The applicant came to know that the evidence had not been filed

when the Trade Marks Registry informed him directly that the hearing of the case was fixed for 12.6.95. He had then taken steps to appoint a new

advocate, to handle the matter. The present advocate had immediately taken up steps to rectify the defect and had taken prompt action to file the

present IP to bring on record evidence in support of the application and had filed TM 16 for correcting the error in the date of user mentioned in the

original trade mark application to 1985. He contended that the principle of natural justice allows evidence to be filed even though later and that equity

demands that evidence should not be shut off. He further pointed out that no harm would be done to the respondent/opponent if the evidence is taken

on record and the request on TM 16 is allowed as the exact date of user has to be decided at the main hearing on the basis of evidence filed.

In reply Ms. Gladys Daniel, advocate for the respondent (opponent) argued that the applicants had not shown due diligence in prosecuting the

application and that they have taken nearly 4 years to file their evidence and so they are not entitled to file the evidence at this late stage. She further

contended that the applicant is bound by the action of their agent and they cannot now claim that they had not been aware of the procedure before the

Trade Marks Registry. We have heard the arguments of both the parties. We are of the opinion that there has been a delay of almost

4 years by the appellant (applicant) in filing their evidence by way of IP for taking on record the evidence in support of the application and the request

on TM 16 for amending the user to 1985. We also agree with the contention of the counsel for the respondents (opponent) that the applicant is bound

by the action of their agent. However, the counsel for the appellant (applicant) has drawn our attention to the fact that the applicant had taken

immediate corrective action, the moment they were directly informed by the Trade Marks Registry that the hearing has been fixed for 12.6.95. He has

also brought to our notice that two conflicting orders have been issued, one in opposition MAS No. 2257 and the other in MAS 2262 in respect of the

same matter by the same Assistant Registrar. These two oppositions have been filed by two different parties opposing the registration of the

applicant's trade mark Application No. 466886. In the other opposition MAS 2262, an identical IP for taking on record the evidence in support of the

application and a request on TM 16 for amending the user to 1985 has been allowed by the same Assistant Registrar, whereas in the present

opposition, i.e., MAS 2257 the same Assistant Registrar has disallowed an identical IP and the request on TM 16. We are of the view that these two

conflicting orders would result in miscarriage of justice in deciding the two oppositions filed against Trade Mark Application No. 466886.

In the interest of justice, the order of the Assistant Registrar of Trade Marks dated 26.6.96 is set aside and the interlocutory petition filed by the

appellant (applicant) for taking on record the evidence in support of the application and the request on TM 16 for amending the user to 1985 is allowed

and they are to be taken on record by the Trade Marks Registry. The case is remanded to the Trade Marks Registry, Branch Chennai for taking

further proceedings on the matter.