Bharathraj Mehta, Proprietor, Maharaja Enterprises vs Assistant Registrar Of Trade Marks

Raghbir Singh, J

Shri A. Prabhakara Reddy, the learned counsel for the appellant is present.

The appeals are against three orders of the Assistant Registrar of Trade Marks dated 12.9.2003 wherein the applications of the appellant were

rejected on the ground that the mark cannot be registered for the reason that the trade marks being descriptive are neither adapted to distinguish nor

capable of being distinguished. The grievance of the appellant is that the Assistant Registrar did not give any reason to arrive at the conclusion that the

marks are not registrable except a cryptic statement in the order which is as follows:-

The trade mark 'PRIME' being descriptive is neither adapted to distinguish nor capable of distinguishing the goods under application and thus is in

capable of registration even on evidence of extensive use. Therefore, the application is hereby refused registration under section 9 of the Act"".

We have perused the Rules with regard to the powers of the Assistant Registrar to pass such orders. In fact, Rule 40 of the rules framed under the

Trade Marks Act, 1999 which deals with ""Decision of Registrar"" empowers the Registrar to communicate his observations in writing to the applicant

and if the applicant intends to appeal from such decision, he may within one month from the date of such communication apply on Form TM 15 to the

Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.

Admittedly, the appellant did not choose to apply on Form TM 15 and approached this Board by way of appeal. The learned counsel for the

appellant, on our query in respect of non compliance of the procedure contemplated under the Act, replied that the Assistant Registrar does not

comply with the requests of the applicants on Form TM 15 within any reasonable time and if such request is made, the matter is kept pending before

the concerned authority for months together and this would cause further delay in the process of registration. Hence, to avoid the delay, the appellant

has no other option except to approach the appellate authority.

We have carefully considered the above submission of the learned counsel for the appellant. When the statute prescribes the procedure, we are of

the view that the said procedure must be followed and it can not be given a go bye for the convenience of the parties. Though we agree with the

learned counsel for the appellant that the order is a cryptic one, as already pointed out, Rule 40 of the Rules framed under the Act envisages such

circumstances. Hence, it is for the appellant to make a request on Form TM 15 and the Assistant Registrar of Trade Marks has to comply with such a

request.

As the rule stipulates a period of one month from the date of receipt of the impugned order for the appellant to make a request on Form TM 15, in

view of the filing of the appeal, we direct the appellant to make the request on Form TM 15 within three weeks from the date of receipt of a copy of

this order and the Assistant Registrar is directed to receive the same irrespective of the period of limitation contemplated under the statute and comply

with the same. It is further directed that the Assistant Registrar must avoid unnecessary delay in the compliance of the request of the applicant and

furnish a detailed order within three months from the date of receipt of request on Form TM 15. The appeals are disposed of accordingly.