Lalit Kumar Arya vs Registrar Of Trade Marks And Gupta And Co.

S. Jagadeesan, J

This appeal arises out of the order of the Deputy Registrar of Trade Marks dated 18.1.1995. The second respondent filed application No.433839 on

13.2.1985 for registration of the numerical mark '3000' in respect of chewing tobacco included in class 34. The said mark was advertised in the Trade

Marks Journal No. 969 dated 16.10.1989 at page 931. The appellant herein filed a notice of opposition on 8.1.1990 on the ground that the registration

of the impugned mark is contrary to the provisions of sections 9, 11(a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958

(hereinafter referred to as the said Act). The second respondent filed counter statement on 26.7.1991. Thereafter the appellant filed TM-56 dated

6.11.1991 for extension of time for filing evidence under Rule 53(1). But, however the appellant did not file evidence within the extended period and

hence the Deputy Registrar called upon the second respondent by letter dated 16.6.1994 to file evidence under Rule 54. The second respondent filed

evidence by way of an affidavit in the name of one Mr. Ram Kumar Gupta alongwith a few photostat copies of bills. On 2.9.1994 the appellant filed

evidence in reply under Rule 55 alongwith an application seeking permission to file the evidence. The second respondent filed another interlocutory

petition seeking the Deputy Registrar to invoke the benefit of abandonment contemplated under Rule 53(2) since the appellant failed to file his

evidence in accordance with Rule 53(1). Under the impugned order the Deputy Registrar dismissed the interlocutory petition filed by the appellant and

rejected his evidence. However the Deputy Registrar allowed the application filed by the second respondent and by virtue of the deeming provision he

had rejected the opposition No.DEL 6586 of the appellant. Having done so, the Deputy Registrar further accepted the application of the second

respondent and directed to proceed with the registration. Aggrieved by the said order the appellant filed the appeal on the file of High Court of Delhi

at New Delhi in CM (M) 78/95 which was transferred to this Board by virtue of section 100 of the Trade Marks Act, 1999 and numbered as

TA/318/04.

We heard the appeal during the sitting at Delhi on 15.2.2005. Learned counsel Shri Dheeraj Seth and Ms.Ritu Singh appeared on behalf of the

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

The only contention raised by the learned counsel for the appellant is that the Deputy Registrar has proceeded to reject the opposition by dismissing

the application filed by the appellant for producing the evidence on the ground that the belated evidence filed by the appellant is against the ambit and

scope of Rule 53(2) and cannot be taken on record for consideration. This is clear from the last but one paragraph of the impugned order. Hence the

only assumption of the Deputy Registrar is that Rule 53(2) being mandatory, the Deputy Registrar has no power to take evidence on record. Now that

the full bench of High Court of Delhi in the case of Hastimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Another etc., reported

in 2000 PTC 24 held that Rule 53(2) is only directory and not mandatory, the matter has to be remitted back to the Deputy Registrar for fresh

consideration of the application filed by the appellant seeking permission to let in evidence.

The learned counsel for the second respondent though agreed that the full Bench of the High Court of Delhi held that Rule 53(2) is not mandatory

and only directory, still contended that the appellant having filed TM-56 as early as 6.11.91 and obtained extension of time for filing evidence under

Rule 53(1), he is expected to file the evidence atleast within a reasonable time, if not within the extended period. The appellant having waited for the

second respondent to file the evidence and after nearly three years of filing form TM-16 cannot be permitted to file the evidence. The undue delay on

the part of the appellant would cause hardship to the second respondent and as such the impugned order of the Deputy Registrar is correct and no

interference is called for.

We carefully considered the above contentions of both the counsel. There is no doubt that the appellant had failed to file his evidence within the

extended period in TM-16 which was filed as early as November, 1991. The Deputy Registrar called upon the second respondent to file the evidence

by letter dated 16.6.1994. Thereafter the second respondent filed the evidence on 4.8.1994. The appellant came forward with an application on

2.9.1994 for filing evidence in support of opposition. The Deputy Registrar had dismissed the application filed by the appellant and rejected the

opposition on the following terms:-

I have gone through the file carefully and come to the conclusion that the belated evidence filed by the opponents is against the ambit and scope of

Rule 53(2) and cannot be taken on record for consideration towards their trade mark 300 and 30. Hence the opponents have failed to establish the

grounds of their opposition and interlocutory petition.

Consequently the interlocutory petition filed by the second respondent was allowed and the application for registration of the impugned mark was

directed to be proceeded with. From the above extracted portion of the order of the Deputy Registrar it is clear that he has proceeded on the basis

that Rule 53(2) is mandatory as all along held prior to the full bench judgment of the High Court of Delhi. Now that the full bench of the High Court of

Delhi in Oswal Industries case reported in 2000 PTC 24 having held that Rule 53(2) being directory, it is for the Deputy Registrar to consider the

application filed by the appellant on merits on the principles laid down by the full bench. In fact we also relied upon the said judgment of the full bench

in R K Cable Company V Registrar of Trade Marks reported in 2004 (29) PTC 504 (IPAB)

Even assuming that Rule 53(2) is mandatory and the opposition of the appellant is to be rejected, still the Deputy Registrar owes an obligation to

consider the application of the second respondent for registration of the impugned mark on merits. In this case the Deputy Registrar has simply

accepted the application of the second respondent for registration of the impugned mark without assigning any reason and no where in the impugned

order he has considered the evidence produced by the second respondent. On this ground also the impugned order is liable to be set aside.

Accordingly the impugned order of the Deputy Registrar dated 18.1.1995 is set aside and the appeal is allowed. Application No.433839 in class 34

of the second respondent as well as opposition No. DEL 6586 of the appellant are remitted back to the Deputy Registrar for fresh disposal in

accordance with law and the Assistant Registrar or the Deputy Registrar as the case may of the Trade Marks Registry is directed to dispose of the

matter within three months in view of the long pendency and report the same this Board.

Taking into consideration the delay on the part of the appellant and the prejudice caused to the second respondent for nearly three years, we are of

the view that some cost should be imposed on the appellant. The appellant is directed to pay a sum of Rs.10,000/- by way of costs to the second

respondent within two weeks from the receipt of a copy of the order, failing which the appeal shall stand dismissed.