Metallica, San Frasisco vs Assistant Registrar Of Trade Marks, Trade Marks Registrty And Shri Jugalkishore M. Mehta And Chandradevi V. Mehta, Trading As Metalica Metals India

S. Usha, J

This instant appeal has been filed against the order dated 02.02.2006 passed by the Assistant Registrar of Trade Marks treating opposition No.

BOM-164463 as abandoned and allowing application No.

1049843B in class 6 to proceed to registration as per the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

The brief facts of the case are as follows: -

The Respondent No. 2 herein filed an application for registration of the trade mark ""METALLICA METALS INDIA"" on 05.10.2001 in respect of

s.s.sheets, plates, road, pipes and pipe fittings, ferrous and non-ferrous metal, m.s., c.s. pipe and alloy steel in class 6, claiming user since 01.04.1975.

The said application was advertised before acceptance in the Trade Marks Journal Mega 2 dated 26.09.2003. The Appellants herein filed their notice

of opposition opposing the registration of the trade mark under Sections 9(1)(a), 11(2), 11(3), 12, 18(1) and 18(4) of the Act on 26.02.2004.

The Respondent No. 2 filed their counter statement to the notice of opposition and the same was received by the Appellant with a covering letter

for the Respondent No. 1 on 02.02.2005 calling the Appellants to file their evidence in support of the notice of opposition under Rule 50 of the Trade

Marks Rule, 2002 (hereinafter referred to as the Rules) within two months or else the notice of opposition will be treated as abandoned under Rule

50(2). On 28.03.2005, the Appellant had sought extension of one month time for filing their evidence by filing a request on Form TM-56. The

Appellants again had filed a request for extension of one month on Form TM-56 on 02.05.2005 as the Appellants were out of India and it would take

time to prepare the evidence affidavit. The Appellant had also stated in the letter to the Registrar that they rely on the facts of the notice of opposition

in case the extension is refused by the Registrar. A copy of the extension and the letter was sent to the Respondents.

The Appellants received the copy of the impugned order dated 02.02.2006 stating that opposition was treated as abandoned and the application was

allowed to proceed for registration. The Appellants wrote a letter dated 13.02.2006 to the Registrar stating that they had complied with the

requirements of the provisions of Rule 50 (1) by relying on the facts of the notice of opposition. The Respondent No. 1 in turn replied stating that the

Form on TM-56 for extension of time was not refused but as the evidence was not filed the opposition was abandoned and directed the Appellant to

file a review petition.

Aggrieved by the said order, the Appellants are before us on appeal on the following grounds -

(a) the Respondent No. 1 erred in passing the impugned order;

(b) the Respondent No. 1 failed to appreciate the scope of the provisions of Rule 50 of the Rules;

(c) the Respondent No. 1 erred in passing the impugned order even though the Appellants had complied with the requirements of Rule 50(1) of the

Rules;

(d) the Registrar failed to appreciate that the Appellants had relied on the facts stated in the notice of opposition;

(e) the impugned order is passed by the Registrar in error of law and fact which is apparent on the face of the records and (f) the order passed by the

Respondent No. 1 is erroneous and against the public interest.

The impugned order be, therefore, set aside and the appeal be allowed.

The Respondent No. 2 filed their counter-statement denying the various averments made in the grounds of appeal. They further stated that the

Appellants have attempted to subjugate the process of registration. The Respondent further denied the averment that the letter relied on by the

Appellant was not received by them. The Respondent No. 2 had then gone into the merits of the matter.

On completion of the pleadings, the matter was set down for hearing on 09.06.2010 at the Circuit Bench Sitting at Mumbai. Learned Counsel Shri

Manish Saurashtri appeared for the appellant and Shri Ram. C. Makhija, learned Counsel appeared for the Respondent No. 2.

The learned Counsel for the Appellant brought to our notice the contents of the letter dated 02.05.2005 and stated that they had very clearly stated

that they rely on the facts stated in the notice of opposition. They re-iterated what was stated in the memorandum of grounds of appeal.

The learned Counsel for the Respondent No. 2 contended that the Appellant was only trying to delay the grant of registration. The delay in filing

evidence ought not to be condoned and the appeal is liable to be dismissed.

We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.

The only issue that arises for consideration in the appeal before us is whether the Registrar i.e. the Respondent No. 1 was correct in treating the

opposition as abandoned when the Appellant had relied on the facts stated in the notice of opposition.

In the instant case on hand, there is no doubt there has been a delay, but reasons have been given in explanation. That apart the Appellants have

relied on the facts stated in the notice of opposition. It is worth quoting the observation made in Hunt Wesson Inc.'s Trade Mark Application (1996

RPC 233 at 241), ""An opposition may determine whether or not a new statutory monopoly, affecting all traders in the country. Refusing permission to

an opponent who filed evidence late affects not only him but may also penalize the rest of the trade ... although the matter is not clear, it is probable

that if the evidence is excluded and the opponent, as a result loses them he will be able to return again in separate proceedings to seek rectification of

the register. An advantage of allowing the evidence ... is that it may well avoid multiplicity of proceedings.

The above observation squarely applies to the case on hand. The Appellant in fact has admitted in para e of the grounds of appeal that though the

Form TM-5 for extension of time for filing evidence was filed necessary fee was not deposited and therefore TM 56 is deemed not to have been filed.

The Registrar in the impugned order has not stated about the non-payment of the fees but has stated that Form TM-56 has not been refused. From the

above, it is to be taken that extension of time has been granted. The Assistant Registrar cannot expect the parties to assume and presume directions

without specific direction or intimation to the parties. Even assuming that the Appellants have not filed proper TM 56 with fees, but they are relying on

the facts stated in the notice of opposition the Registrar ought to have taken on record the same inviting the applicants (Respondents) to file evidence

in support of the application and the matter should have been decided on merits. We, therefore, are of the opinion that the matter is to be remanded

back to the Registrar for fresh hearing and consideration in accordance with law.

The matter is, therefore, remanded back to the Trade Mark Registry with a direction to the Registrar to invite evidence from both the parties and

to decide the matter in accordance with law.

Accordingly, the appeal is allowed in the above terms. No order as to costs.