AI Structured Summary
Not yet generated for this judgment
Judgment
Z.S. Negi, J
The Original Appeals 33 and 34/2005/TM/CH are filed against the two orders passed by the Assistant Registrar of Trade Marks, Chennai both
dated 23rd February, 2005 refusing to take on record the proposed Opposition Nos. MAS-158043 and MAS-158042 to application Nos. 803447 and
803448, for registration of trade marks in class-10 and class-11 respectively.
The trade marks 'ULTRAFILTER INDIA' (label mark) in class-10 and class-11, respectively as applied for by the Respondent No. 2 were
advertised by the Registrar of Trade Marks in Trade Marks Journal No. 1302(Supplement), dated 8.9.2003 at pages 198 and 205, respectively and the
said Journal was made available to the public on 10.9.2003. The Appellant/opponent had filed requests on Forms TM-44 both dated 15.12.2003 for
extension of time of one month for filing notices of opposition to application Nos. 803447 and 803448 both in the name of the Respondent No. 2.
Subsequently, the Appellant/opponent filed the notices of opposition on 9.1.2004. The Forms TM-5 (notice of opposition), both dated 9.1.2004 had
been taken on record by the Trade Marks Registry and intimation relating thereto were sent to the Appellant/opponent on 9.2.2004. Later on, the
Trade Marks Registry vide notices dated 24.3.2004 called upon the Appellant to show cause as to why the Forms TM-44, dated 15.12.2003, which
were in contravention of the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act) and the rules made thereunder, should be
taken on record. Appellant filed their reply and also filed Forms TM-56 whereby extension of time from 10.12.2003 to 15.12.2003 for filing Forms
TM-44 were sought but the same were refused vide letters dated 24.6.2004 issued by the Trade Marks Registry. The matters were set down for
hearing on 8.7.2004 at the request of Appellant and on 23.2.2005 the impugned orders were passed by the Respondent No. 1. Aggrieved by the said
orders, the Appellant filed the above appeals.
The Respondent No. 2 filed its counter statements through its power of attorney holder Shri R. Vekatesh Bhargava on 8.9.2005. In February, 2006,
the Appellant filed Miscellaneous Petition Nos. 28 and 29/2006 in Appeals 33 and 34 for permission to amend its mis-described name in the Appeals
and in March, 2006 filed Miscellaneous Petition Nos. 39 and 40/2006 to change its name in the aforesaid appeals in view of the merger of company
and change of name, which were allowed on 4.8.2006 on condition of payment of costs. After amendment of the cause title in the appeals the same
came up for hearing on 27.10.2006. Since the parties, material facts and legal issues involved in both the appeals are same, it has been decided that
the arguments made and conclusions arrived at in Original Appeal 33/2005 shall be adopted in relation to Original Appeal 34/2005 also. Shri P. Vinod
Kumar, Advocate appeared on behalf of the Appellants and Shri Harisankar Mani, Advocate appeared on behalf of Respondent No. 2.
The Learned Counsel for the Appellants contended that the order of the Respondent No. 1 refusing to take the opposition on record is contrary to
law and that the impugned order dated 23.2.2005 should be set aside. He drew our attention to the grounds for relief and legal provisions contained at
page 2 of the appeal 33/2005. The grounds, amongst others, are that Section 21 of the Act provides for a total of four months time to file a notice of
opposition, the notice of opposition filed on 9.1.2005 by the Appellant/opponent was within that statutory period and the Appellant has by filing such
notice within four months had substantially complied with the statutory requirement; that since Section 21(1) of the Act does not specify the time limit
within which request for extension of time for filing Form TM-44 is to be made, the stipulation of making such request under Rule 47(6) of the Trade
Marks Rules, 2002 (hereinafter referred to as the Rules) should be understood as being directory and not mandatory and as such the notice of
opposition ought to have been taken on record; that Rule 47(6) of the Rules is beyond the rule making powers vested under the Act, therefore, the said
rule ought to be understood as being applicable with much less vigour if not as being non-existent; that in any event, the Respondent No. 1 ought to
have seen that the Appellant had filed a request on Form TM-56 on 17.6.2004 to excuse the delay of five days in filing the request on Form TM-44
and ought to have extended the time by exercising powers under Section 131 of the Act; and that the Respondent No. 1 ought to have seen that the
official notice regarding opposition given in the Trade Marks Journal does not require the filing of TM-44 within three months' period and, therefore,
ought to have interpreted Rule 47(6) of the Rules liberally. The Learned Counsel in support of his contention and the averments of the appeal relied on
the Delhi High Court Full Bench decision inH astimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Ors. 2000 PTC 24 (FB a)nd
orders of this Board in Asian Paints Limited v. Registrar of Trade Marks and Anr. 2005 (30) PTC 444 (IPAB) and Hindustan Lever Limited v.
Surinder Corporation (OA/114/2004/TM/DEL and M.P. No. 123/2004).
The Learned Counsel for the Respondent No. 2 vehemently opposed the grounds for relief and legal provisions referred to above. He contended
that the impugned order, which was passed after giving due notice and hearing elaborate arguments of counsel of both sides by the Respondent No. 1,
is not at all contrary to any law prevailing now and not liable to be set aside. The Learned Counsel in his written submission has stated, inter alia, that
the notice of opposition and the application for extension of time under TM-44 have themselves been made by a company which is non-existent and as
such the present appeal has to be dismissed in limine; that since no TM-44 was filed before the three months period under the rules, not notice of
opposition of the Appellant can be entertained and the appeal ought to be rejected; that the Appellant has approached this Hon'ble Board with unclean
hands; and that the present appeal has become infructuous as subsequent to the impugned order, the registration of trade mark has been granted, and
if the registration so granted has to be reconsidered, then the same can be done only in terms of Section 57 of the Act.
The issues that emerge to be decided are as to whether the Assistant Registrar erred by not granting extension of time on the ground that Form
TM-44 was not filed before expiry of three months as provide by Sub-rule (6) of Rule 47 of the Trade Marks Rules, 2002 (hereinafter referred to as
the Rules) and consequently not taking the notice of opposition (Form TM-5); whether Rule 47(6) of the Rules is beyond the rule making powers of
delegate and whether holding the word ""shall"" used in Rule 47(6) as directory but not mandatory negates the effect of provisions of Section 21 of the
Act.
Section 21(1) of the Act provides 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 aggregate, as the Registrar, on application made to him in the prescribed manner
and on payment of prescribed fee, allow, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. From the
plain reading of Sub-section (1) of Section 21, it is evident that the Legislature has only fixed three months for filing opposition from the date of
advertisement or re-advertisement of an application for registration but neither specified within what period the application for extension of time be
applied nor empowered the executive to prescribe such time and as such left it open to the Registrar of Trade Marks to exercise his discretion
according to the circumstances required. This implies that the notice of opposition can be filed even after expiry of three months, as specified by Sub-
section (1) of Section 21, alongwith the prescribed application for seeking extension of time to file such notice. Sub-rule (6) of Rule 47 of the Rules
provide that an application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given under
Sub-section (1) of Section 21, shall be made in Form TM-44 accompanied by the fee prescribed in the First Schedule before the expiry of the period
of three months under Sub-section (1) of Section 21. This Sub-rule is made by the executive without the powers expressly conferred on it by the
statute so to do. The High Court of Bombay while deciding the validity of Sub-rule (6) of Rule 47 of the rules, inS ardar Gurudas Singh Bedi v. Union
of India and Ors. 2006 (33) PTC 321 (Bom.) (DB,) where Form TM-44 was filed after expiry of period of limitation and the same was refused giving
rise to cause of action to the Petitioner to file petition against thereto, has observed as under:
...Is Rule 47(6) as now framed, in consonance with Section 21 of the Act, and if not, is it ultra vires Section 21 of the 1959 Act. Section 21 of the
Act states that 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 proscribed fee, allows, gives notice in writing in the prescribed manner to the Registrar, of opposition to the registration. Rule 47(6) provides that
this application for extension must be done before the expiry of the period of three months. In other words, what the rule contemplates is jurisdiction in
the Registrar to extend time by exercise of discretion, only if it is made before the expiry of three months period. The rule as read, confers no
discretion in the Registrar to accept objections filed, if the period of there months has expired. In Mahanth Ram Das. v. Ganga Das A.I.R. 1982 S.C.
887, the issue before the Apex Court was the power to extend time where the time extended to do particular act had expired. In that case, the High
Court had set time for payment of Court fees. The fees could not be paid within the period stipulated. Even though an application was made for
extension of time before the time had run out, it was not considered and as on the date of hearing, the appeal period had expired. The Apex Court on
the facts of that case was pleased to observe as under:
How undesirable it is to fix time per-emptorily for a future happening which leaves the Court powerless to deal with events that might arise in
between, it is not necessary to decide in this appeal....
In Kantilal Tulsidas Jobanputra v. The Registrar of Trade Marks and Lion Pencils Pvt. Ltd. in Misc. Petition No. 926 of 1977 and Misc. Petition No.
1511 of 1977, in consideration, was Rule 53 of the Trade and Merchandise Marks Rules, 1959. A Notice of Opposition was filed by the Petitioner
there in the matter of application for registration of the mark. There was some dispute as to the person entitled to file opposition. In the meanwhile the
period for filing evidence in support of opposition had expired and the Registrar of Trade Marks directed that the opposition be deemed to be
abandoned by virtue of Rule 53 of the 1959 Rules. An application for review as filed was rejected. A learned Single Judge of this Court considering
Rule 53, was pleased to hold firstly that rule was directory and not mandatory and secondly, the Registrar's power to extend time for filing evidence in
support of opposition does not stand extinguished, if the application for extension of time was not filed or extension was not granted before the expiry
of period of two months prescribed by Rule 53(1) and thirdly the Court held, that Rules or procedure before any Tribunal were for advancement of the
cause of justice and not to close the doors, thus preventing the parties to get determination on merits. It is not necessary to advert to other findings.
This interpretation of Rule 53 also came up for consideration before a Full Bench of Delhi High Court inH astimal Jain Trading as Oswal Industries v.
Registrar of Trade Marks and Anr. 2000 PTC 24 (FB.) The Full Bench of the Delhi High Court was pleased to hold that Rule 53 is directory and
enables the Registrar to extend time, even though the time has expired. Dealing with the issue that procedural law is meant to advance the cause of
justice, we may quote from the observations of the Apex Court in State of Punjab and Anr. v. Shamlal Murari and Anr. AIR 1976 S.C. 1977. The
Apex Court in the matter of procedural law was pleased to observe as under:
We must always remember that procedural law is not to be a lyrant but a servant not an obstruction but an aid to justice. It has been wisely observed
that procedural prescriptions are the hand-maid and not the mistress, a lubricant, not a resistant in the administration of justice, Where the non-
compliance, though procedural, will thwart fair hearing or prejudice doing of justice to parties, the rule is mandatory. But grammar apart, if the breach
can be corrected without injury to a just disposal of the case. We should not enthrone a regulatory requirement into a dominant disderatum. After all,
Courts are to do justice, not to wreck this end product on technicalities. Viewed in this perspective, even what is regarded as mandatory, traditionally
may, perhaps, have to be e moderated into wholesome directions to be complied with in time or in extended time.
The Law is now well settled, that a rule cannot travel beyond the scope of the Parent Act. If authorities are needed, we may refer to the case of
Laghu Udyog Bharati and Anr. v. Union of India and Ors. (1999) 6 SCC 418, wherein the Apex Court observed:
The rules, therefore, cannot be so framed which do not carry out the purpose of the chapter and cannot be in conflict with the same.
Similar view is taken in Additional District Magistrate (Rev) Delhi Admn. v. Sheo Ram and Ors. (2000) 5 SCC 45.1 The Apex Court observed as
under:
It is a well-recognised principle of interpretation of a statute that conferment of rule-making power by an Act does not enable the rule-making
authority to make a rule which travels beyond the scope of the enabling Act or which is inconsistent therewith or repugnant thereto. From the above
discussion, we have no hesitation to hold that by amending the Rules and Form P-5, the a rule-making authority has exceeded the power conferred on
it by the Land Reforms Act.
From what we have discussed above, the conclusion which emerges is that in matters of procedural law Courts should normally read the provisions as
directory and the rule should sub serve the object of the Act and not defeat it or in other words be in conflict and travel beyond the scope of the
enabling Act. In an exercise in subordinate Legislation, it is not open to the delegate conferred with power to make subordinate legislation, to make a
rule which would be inconsistent or contrary to the provisions of the principal Act itself. If there be a purported conflict in interpretation, to save the
rule it is, possible for the Court to read down the rule to make it in conformity with the provisions of the substantive law. Bearing this principle in mind,
let us consider the issue as framed. Is Rule 47(6) in conformity with Section 21 and if it be in conflict, whether it can be read down to make it in
conformity with the mandate of Section 21.
The power conferred to file opposition to registration is not merely to the person who is the proprietor of the mark or claims interest in the mark.
The expression ""any person"" has to be given a wider meaning. As the object of the opposition is to maintain the purity of the register, Shavaksha in
'The Trade and Merchandise Marks Act, 1958', Third edition, has observed as under:
The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom the particular goods are
associated. It is, therefore, essential that the register should not contain trade marks which are identical, or which so closely resemble each other, than
an unwary purchaser may be likely to be deceived into thinking that he is buying the goods of a particular person whereas he is in fact buying goods of
another.
It is therefore, essential that the register should not contain any trade mark which is identical or which so closely resembles to each other, that the
common purchaser may be likely to be deceived by believing that he is buying the goods of particular person whereas he is in fact buying the goods of
another person. That being the object, the Court while interpreting the provisions must bear that in mind so as to maintain the purity of the Register.
The expression ""any person"" would have to be given wider meaning to include even a consumer and not necessarily the proprietor or person having
interest in the mark. If this is so understood, then the object behind Section 21 manifests itself. The ordinary period for a person to file an objection
would be three months. The period for extension of time on reading of Section 21 of the Act could be before the expiry of the period of three months
or can be even after the expiry of three months. At the first blush considering the expression ""within such further period"" it would appear that granting
extension of time of one month in aggregate can only be before the expiry of the period. If it is so read, then the time to file objection will have to be
before the expiry of three months and the discretion in the Registrar to extend time is only before the expiry of three months. The Rule 82 as framed,
if the construction is accepted, will be intra vires Section 21. The rule so read would mean that only a class of persons who had knowledge or were
vigilant of the publication before the expiry of the period of three months, can alone apply for extension. The other class of persons whose attention is
drawn after the expiry of three months, even by a day or though aware for reasons beyond their control, will be barred from filing their opposition,
however sufficient their cause. Rule 47(6) as now framed is couched in the same language as Rule 51(3) under the Rules of 1959. The said rule was
omitted by S.O. 397 dated 23rd July, 1969. In other words, the delegate entrusted to make the rules, itself found that the rule was acting harshly and or
oppressive and not in conformity with the object of the Act. The language of Section 21 in the Act of 1958 and Act of 1999 is substantially the same.
If that be the position, the question is, what is that made the delegate frame a rule similar in language to a rule which was omitted. No explanation has
come from the Respondents. The Section uses the word three months and such further time of one month. That period can also be beyond three
months. It would therefore, have to be held, that the power in the Registrar to extend the period, can be before the period of three months has expired,
as also even after the period of three months has expired. In such event, the expression one month in aggregate will have to be read to mean also on
the expiry of the period of three months. The discretion in the registrar therefore, to extend the time would also be on the expiry of the period of three
months. It is not as if the Registrar is bound to give a period of one month. It is open to the Registrar considering the facts of the matter, to give such
additional period and if discretion is to be exercised to extend time, then to grant such time, so that it does not exceed in the aggregate one month. This
is how the delegate, understood the law when Rule 51(3) was omitted in 1969, in the rules of 1959. The period of one month in aggregate therefore, in
Section 21, will have to be read to mean aggregate of one month even on the expiry of the period of three months.
If Rule 47(6) as it now stands has to be accepted, then it confers power to extend time only if the application is made before the expiry of period of
three months. Such a rule will be clearly ultra vires Section 21(1) of the Act of 1999. It is also not possible to read down Rule 47(6) so as to make the
rule intra vires Section 21. Nothing also has been brought before us to point out any mischief that was being occasioned and which mischief was
required to be remedied. In the Act of 1940, Section 15(2), did not set out the period, but left it to the rule making authority. The Rule making authority
provided a period of four months to file opposition. Under the Act of 1958, the period was fixed by the Legislature itself, though the delegate made
rules in an exercise of subordinate legislation. The same is the position in the Act of 1999. In these circumstances, we are clearly of the view that
Rule 47(6) is clearly ultra vires of Section 21 of the Act and consequently will have to be struck down as null and void.'
The Appellant has, alongwith the appeal, filed Miscellaneous Petition No. 54/2005 for interim stay of operation of the impugned order dated
23.2.2004 and copy thereof alongwith appeal was sent to the Assistant Registrar of Trade Marks, Chennai on 6th July, 2005 for filing a statement, if
any, and stating that the notice a of hearing of the Miscellaneous petition will be intimated to all concerned in due course but despite that the certificate
of registration was issued in 2005, before this Board could take up hearing of the stay petition in February, 2006. It will be unjust to compel the
Appellant at this stage to resort to initiate proceeding under Section 57 of the Act, especially when the impugned order has been passed by the
Assistant Registrar without considering the merits of the notice of opposition on a hyper technical ground. We are, therefore, unable to agree with the
written submission made by the Learned Counsel for Respondent No. 2 that owing to registration of application No. 803447, there can be no
opposition proceedings in terms of Section 21 of the Act in respect of the said registration, and if the registration granted has to be reconsidered, then
the same can be gone into only in terms of Section 57 of the Act'.
The above mentioned decision of the Hon'ble High Court of Bombay has the persuasive force and which equally applies to the present appeals.
There is no other decision brought to our notice which is contrary to the aforementioned decision. In view of the aforementioned decision of the
Hon'ble High Court of Bombay, we are of the opinion that the Assistant Registrar of Trade Marks ought to have allowed extension of time for filing
notices of opposition, taken to Forms TM-5 on record and then decided the matters on merit. It has been brought to our notice two cases, namely, Anil
Kumar Chanani v. Tommy Hilfiger Licensing Inc. 2005 (31) PTC 445 (Reg.) and Rajarappa Steels Pvt. Ltd. v. Kamdhenu Ispat Limited 2005 (32)
PTC 670 (Reg.) in which the Joint Registrar of Trade Marks, Kolkata allowed the Forms TM-44 and taken on record the notices of opposition, which
were filed after expiry of the prescribed period of three months under Sub-section (1) of Section 21 of the Act, by applying the principles laid down by
the Full Bench of High Court of Delhi in the Hastimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Anr. (supra).
In view of the above, we allow the Original Appeal 33/2005 and set aside the order of the Assistant Registrar of Trade Marks, Chennai dated the
23rd February, 2005 refusing to take on record the proposed notice of opposition No. MAS-158043 to application No. 803447. Consequently, we allow
Form TM-44 and remand the matter to the Registrar with the direction to take the proposed notice of opposition on record and expeditiously dispose it
of in accordance with law. By adopting the conclusion arrived at in OA 33/2005, we also allow the Original Appeal 34/2005 and set aside the order of
the Assistant Registrar of Trade Marks, Chennai dated the 23rd February, 2005 refusing to take on record the proposed notice of opposition No.
MAS-158042 to application No. 803448. We allow Form TM-44 and remand the matter to the Registrar with the direction to take the proposed notice
of opposition on record and expeditiously dispose it of in accordance with law. However, there shall be no order as to costs.