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Judgment
Prabha Sridevan, J
1 . Two identical trade marks had expired and were removed from the register. The proprietor of the mark applied for renewal and restoration on the
ground that the Registry had not informed them by issuing Form 0-3 that the marks was due to expire. Both the application for renewal and the
application for restoration were filed beyond time. Yet the marks were restored by the impugned order. The mark is ""Band Master Blend"" (BMB in
short). The affected person/ the appellant before us is the registered owner of ""Master Blend"" (MB in short). Shorn of all details, this is the crux of the
matter which is before us. The appellant moved this appeal against the order of restoration, and prayed for urgent orders of stay. We directed that
notice should be served on the respondent. Accordingly, notice was served and both the counsel for the appellant and the respondent elaborately
argued the stay petition.
2 . The miscellaneous petitions came up for hearing before us at the Circuit Bench Sitting at Kolkata on 24.08.2011 and 25.08.2011. Shri Hemant
Singh, learned counsel appeared for the appellants whereas the respondents No. 3 and 4 were represented by Shri Ranjan Bachawat.
3 . The appellant is the registered owner of the mark ""Master Blend""-No: 1456202 dated 23.05.2006. The appellant is the subsidiary of Pernod Ricard,
a French Company. It has a worldwide presence and is the owner of many renowned and acclaimed brands of alcoholic beverages. The appellant
adopted the mark MB in Asian Countries, and the registration certificates are marked in evidence. The user is dated from 1995. In 2005 the appellant
adopted the trademark MB. It conducted a search in class 33 and the search report is marked as Annexure B. After satisfying itself that there was no
such trademark the appellant adopted the trademark MB for whisky to be sold in India. The date of application for registration of the mark in class 33
is 23-5-2006. It was advertised in the Journal no 1441 on 1.6.2010. The annual sales of the above brand from 2006 to 2010 have increased from
36,733 cases to 97, 801 cases and the annual turnover from 2.56 crores to 9.43 crores. Certificates of the Chartered accountant and the sales invoices
are annexed as evidence. When the appellant applied for Excise approval of its label MB in 2010, for the first time the respondent raised objections on
the basis of its mark BMB. The objection was overruled by the Excise Commissioner on 6-1-2011 since the mark BMB had expired. The objection is
marked in evidence. In the objection it was admitted that the respondent had not used the mark BMB since 1995. It is only then that the appellant
came to know of the registration Nos. 488802 and 488803. But since they had been removed from the register in 2010 itself, the appellant did not file
for cancellation. This removal had been notified in the Journal 1435 dated 1.3.2010. The trademarks had expired on 7.4.2009. On 26.4.2010, beyond
the period of one year from the date of expiration of the mark, the respondent filed Forms TM-12 and TM-13. In June 2010, the respondent filed for
Excise approval of the label BMB. On 6-10-2010, the appellant submitted a representation to the Registrar to grant an opportunity of hearing in the
proceedings for removal and restoration. On 8-12-2010 the appellant filed Suit No:3140/2010 before the Bombay High Court for infringement of
copyright and passing off. An order of injunction was granted. Against that Appeal No 173/2011 was filed by the respondent. This appeal was
dismissed. But in the Notice of Motion the High Court granted injunction on 5th July 2011, which was not to come into effect till 1st October 2011,
since the issue of restoration and renewal were before the Registrar.
4 . Before the Registrar the appellant raised the objection that neither the renewal application not restoration application could be entertained since
they were beyond time, and that the respondent had not proved that Form O-3 was not sent, and that the appellant would suffer substantial injury if the
mark is restored.
5 . The respondent relied on the public notice by which representations were called for, from proprietors whose marks had been removed. The
respondent submitted that Form O-3 was mandatory and the non issuance vitiated the entire proceedings.
The Registrar restored the marks, against that order this appeal has been filed.
7 . The learned Counsel for the appellant submitted that the Registrar had totally exceeded his jurisdiction. The time limit stipulated by the statute
cannot be violated. The sections 25(3) and 25(4) of the Trade Marks Act, 1999 (the Act in short), have to be read harmoniously and one cannot be
construed in such a way as to render the other redundant. If Sub S(3) were to be read to mean that at any time beyond the time mentioned therein the
registration can be renewed, then sub-section (4) will be rendered redundant. He submitted that the appellant before applying for the registration had
bonafide, made a search and only after obtaining a search report, the appellant sought for registration. He submitted that it is an admitted fact that the
respondent had not used the mark BMB since 1995. The learned counsel submitted that by the impugned order the Registrar had taken away the
ground of non-user which the appellant could have legitimately raised to cancel the respondent's mark. The learned counsel submitted that the persons
who should have stated on oath that the Form O-3 had not been sent, had not done so, instead persons who had hearsay information had alone filed
affidavits, and hearsay evidence is inadmissible, and further the onus of proving something lay solely on the person asserting it to be so. The learned
counsel submitted that even assuming without admitting that Form O-3 was not sent, that would not vitiate the order of removal, since the law gives
six months' time from the date of expiration of the mark to pay the renewal fees, before the mark is removed. The law gives another grace period,
which is six months after the expiration date but before one year from the expiration date to seek restoration. This would clearly show that the law did
not intend that failure to issue Form O-3 would by itself render all proceedings void. The learned counsel submitted that the exercise of discretion
under Sub S (4), must take into account third party's rights and possible injury. The learned counsel submitted that when the respondent started using
the mark only recently after a long period of non-user they had deliberately adopted a label which was identical or deceptively similar to the appellant's
label as regards the lettering, the colour composition etc. The learned counsel submitted that the order if allowed to remain will cause irreparable
injury, and therefore it must be stayed.
8 . The learned counsel for the respondent submitted that there was a public notice dated 24.09.2010 issued by the Controller admitting that the Forms
O-3, were not issued. Further in this case the persons in charge of the affairs of the company, and the attorneys had clearly stated that the Forms O-3
had not been received. Nothing further need be proved. Once this mandatory requirement of section 25(3) r/w Rule 64, was not complied with, the
consequences of non-renewal would not follow. In fact the removal is non-est in the eyes of law because of the breach of this mandatory provision.
According to the learned counsel for the respondent the appellant's application was malafide. The respondent's marks which were closely similar or
identical to the appellants were on the register until they were removed and therefore the appellant could not have obtained registration of his mark.
The non-use of the mark was really not an issue. The learned counsel submitted that in the small of gap of time when the respondent's mark was not
on the Trade Mark registrar, the appellant had secured his registration. The learned counsel submitted that this was an extra-ordinary situation when
the Controller found that over 56,000 marks had been removed and that is why the notice had been issued to deal with the matter on a case -to-case
basis. The learned counsel submitted that the issuance of Form O-3 was something within the special knowledge of the Registrar and the respondent
cannot prove the negative. However the respondent had filed affidavits in evidence that the registrar had not sent the Forms. The learned counsel
submitted that since the hurdle of sub section (3) was not crossed, the invocation or bar of sub-section (4) did not arise. The learned counsel submitted
that the impugned order did not warrant any interference.
9 . There are some special circumstances in this case, but that cannot mean we can circumvent the law. We will consider the effect of the public
notice, the importance of Form O-3, the question of limitation and whether the appellant had made out a case for stay.
PUBLIC NOTICE: The Controller-General issued a public notice on 24.09.2010 the crucial extracts are as follows:
Over the last six months about 56,429 registered trade marks have been notified in TM Journal as removed from the Register of Trade Marks due to
non-payment of renewal fees within the prescribed period provided by law. About 0.1% complaint has been received in respect of the same. A few
complaints mentions that O-3 Notice have not been received by the proprietor or the new agent on record whose mark has been removed from the
Register. Some complaints also been received that the original registration certificate has never in fact been received by the registered proprietor or
that it has been sent to the previous agent on record in some cases. In a few cases the speaking orders of the Hearing Officers has not been given
effect to the application to proceed to registration and registration certificate have in fact not been received by the applicants and the trade mark has
been now removed from the Register.
... It may be mentioned that there is no practice at present to re-open a lapsed mark beyond the first cycle of renewal date. A speaking order will be
issued in each case after a hearing.
Then another Public Notice was issued on 30.11.2010. The second notice was only to extend the time within which the representations can be
submitted. It is important to note that the Controller had not declared that a lapsed mark will be re-opened beyond the first cycle of renewal date. The
Controller had taken note of an unprecedented number of marks had been removed and there were 0.1% complaints regarding this. Of these a few
complained that O-3 notice had not been received. So the public notice is only intimation to the public that removed marks will be restored in
accordance with law. Nothing more. The public notice cannot extend the period of limitation.
The Importance of Form O-3. The duration of the registration of a trademark is specified in section 25 (1). When the respondent renewed the
mark BMB on 7th April, 2002, the period was 7 years and so it was renewed till 2009. The respondent may have renewed it, the respondent did not. If
an application is made as per section 25
(2), the Registrar shall renew it for further period. Section 25 (3) provides that the registrar shall issue noticed to the registered proprietor before the
expiration of the period informing him that the ""registration of the trade mark will expire on...and that the registration can be renewed for a further
period..."" This Form O-3 has been considered by the High Court and this IPAB in several decisions. In OA/52-55/2011/TM/DEL M/s Alberto Culver
USA Inc vs. The Registrar of Trade Marks, this Board by order dated 1st of august 2011, had held following Allied Nippon, Tetragon Chemie, and
Abdul Karim Sahib had held that section 25(3) was mandatory. Rule 64 is also important.
If the time for renewal is drawing near and the registered proprietor is not alert to his right, the Registrar is required to send the notice not less
than one month and not more than two months before the registration of the last registration. Let us suppose even then the mark is not renewed, and
then the mark will expire. But the law has been further liberalized on the recommendation of the Parliamentary Committee on the Trade Marks bill, by
clearly providing that the Registrar shall not remove the mark if the an application for renewal is made within 6 months from the date of expiration of
the last registration. If even then the renewal is applied for, the law says that the Registrar ""may' remove the mark.
But he shall not remove the mark till the expiry of the time mentioned in section 25(3). Once it is removed for non-payment of renewal fees as
above, the removal must be advertised forthwith. Even it is removed, the law provides for restoration, if an application is made after 6 months and
before one year from the date of expiration of the last registration. So to secure this right must be the proprietor's look out, the law has provided so
many protective buffers.
Now we will look at the facts on hand.
• The respondent did not pay the renewal fees on time on his own.
• The respondent alleges non receipt of notice.
• The period for renewal expired on 7-4-2009
• The respondent did not apply for renewal thereafter, within six months i.e.7.10.2009.
• The registrar removed the mark and advertised it in the journal on 1-3-2010.
• The respondent had time till 7-4-2010 to restore the mark that is more than one month and less than two months before the above date.
• The respondent does not file it before 7-4-2010. They file it on 23-4-2010, without any explanation for the delay.
• In September 2010 the public notice is issued.
• The respondent suddenly woke up and gave reasons for the delay and righteously demanded restoration and renewal.
The decisions cited above clearly hold that the Registrar is by law bound to issue Notice as per Form O-3.
In Tetragon Chemie which is a brief order, it is seen that the proprietor had filed the renewal application in 2002, but the order of removal was
communicated in 2003. The Hon'ble Karnataka High Court held that there is no material to indicate that notice was issued. In any event, in that case
the renewal application had been filed before the removal. This is not so in the present case, the facts are different.
In Allied Nippon, the order does not state whether the trademark was removed from the register. The Hon'ble Delhi High Court held that the
benefit of doubt shall be given to the petitioner. The order only speaks of renewal of the trademark, so it does not apply to this case where the
trademark was removed.
In Alberto Culver also the mark had lapsed but there was no removal. Hence while these decisions may hold the position that the Registrar was
mandatorily bound to issue the notice, there is a slight variation in facts. In the present case the mark was removed, section 25(4) was invoked. The
removal was notified and yet the proprietor did not file for restoration within time.
Several decisions were relied on to show how the section must be interpreted
In 2009 (10) SCC 552,Union of India v. A.K. Pandey to show that the word 'shall"" is peremptory, if it is followed by prohibitive or negative words.
The words ""not more than"", in the Rule 64, do not decide the issue. What is crucial is the section where the registrar is required to notice, if this is
followed by a negative provision then ""shall"" is imperative is what that decision means. In this case, that provision does not contain any such negative
words. On the other hand that decision applies to the proviso to 25(3). This is couched in a negative form, so the Registrar just cannot remove the
mark if an application is made as provided in the said proviso.
AIR 1975 SC 915 Ramachandra Keshav Adke v Govind Joti Chavare was relied on to show that if power is given to do certain things in certain
way, it must be done that way or not at all. The learned counsel for respondent submitted that since, the notice had not been sent as mandated the
removal cannot follow. But for the same reason, when power is given to restore the removed mark as per S.25(4). It must be done in that way, or not
at all. So at this interim stage, we cannot hold that the removal is non-est.
Nawab Khan Abbas Khan v. State of Gujarat (1974) 2 SCC 121 requires that where hearing is obligated by a statute which affects fundamental
rights then there is a duty to give hearing. We do not see how this applies to this case. In any event the respondent's application for restoration, though
time-barred, has been allowed, in this case.
While there can be no doubt how the statute shall be interpreted, it is equally important to remember that no provision can be construed in such a
manner as to render another meaningless., especially at this interim stage.
25 . The section 25(3) and 25(4) are clear and we cannot read section 25(3)in a manner which makes section 25(4) meaningless.
Then there is the question of onus of proof. As rightly contended by the learned counsel for the appellant, the onus of proof lies on the person who
asserts the fact to be proved. So the respondent must prove that Form O-3 was not issued. The learned counsel for the respondent submitted that the
negative cannot be proved, and that this was within the special knowledge of the Registrar and hence the registry must show it was issued.
The respondent's agent L.S. Davar & Co has stated in its petition for restoration and renewal filed on 29/11/2011, that the ""Previous attorney's
agent of client have already filed a declaration in the form of an affidavit in this regard"" to prove non - receipt of FormO3. The learned Counsel for the
appellant submitted that the previous attorneys were Roy Choudari and Co., and then Marks and Trade, and neither of them has filed any declaration.
The counsel for the respondent has not shown us any such declaration. However he produced the affidavit of one Mahesh Nedungadi who has sworn
that he has been associated with USL in one capacity or the other that "" No notice was given as mandated by section 25 (3)"". The learned counsel for
the appellant submitted that when the above declaration is not forthcoming and when it is not clear what is the source of information for this deponent,
it is best a piece of hearsay evidence.
In New India Assurance Company Ltd v Nusli Neville Wadia the question was regarding the onus as per S.5 of the Public Premises (Eviction of
Unauthorised Occupants) Act 1971. The Supreme Court held that it was not correct to put the entire onus on the notice, without requiring the landlord
to prove anything. According to the learned counsel for the respondent, applying that, in this case the onus should not be put on the proprietor. In that
case the Estate Officer seeks eviction of the unauthorized occupant and therefore the he has to prove he is entitled to remove the occupant. In this
case it is the proprietor who seeks restoration. So we cannot apply the decision in the manner the respondent wants us to at this stage.
I n AIR 2000 SC 1233 V.N. Bharat v. D.D.A. the Supreme Court held that the presumption under section 114(f) is a rebuttable presumption, and
except for denial there is nothing else that the appellant could have done to prove a negative fact. The learned counsel for the respondent submitted
that the same reasoning should be applied here. The respondent had denied receipt and it is for the Registrar to prove that it was sent
At this stage when the appellant alleges that the denial of receipt of notice has not been shown by direct evidence, and when the declaration
referred to by L.S. Davar and co has not been produced we cannot apply the above decision and hold that the presumption under S114(f) Evidence
Act has been rebutted, further official acts are presumed to be regularly done. The respondent may be able to show at the final hearing that the
presumption has been rebutted, but at the interim stage we are unable to brush aside the submissions of the appellant.
Non-User. The case of the appellant is that the respondent had admittedly not used the mark from 1995. The ground of non-user has now been
taken away from them because now the respondent has started using the mark; the respondent denies that there was any admission. The evidence
proves otherwise.
Now we come to Annexure J which is crucial. This is dated nil ""The objector USL ...claimed exclusive right....by virtue of prior user and not as a
registered owner of Trade Mark"", and ""However for the subsequent years thereafter, the trade mark was not used in its commercial activities in spite
of the fact the registration of the said Trade mark was valid and in force up to the mid year 2009 So there is a clear admission of non-user from 1995.
1996 6 SCC is relied on to show that no one can secure the assistance of a court of law for enjoying the fruit of his own wrong. We do not see
how this arises. The appellant has filed the search report to see if there are any identical marks, and the registration has been done thereafter. The
appellant has also shown that the expired label of the respondent as registered in 1945 was strikingly different from the appellant's label. And when
they recommenced user in 2010, the label becomes startlingly similar to the appellants, this is very modestly referred to as ""a particular label' in the
written submissions The learned counsel for the appellant submitted that though the original mark and label of the respondent was totally different
from the respondents, the label now used by the respondent after 2010 is identical to the appellants, and so the intentions of the respondent are oblique
and malafide. The learned counsel for the respondent submitted that the respondent had engaged the services of a leading advertising agent to design
the label. If the respondent had engaged the services of an agency for designing the label, it must be a unique case of telepathic artistic inspiration. In
any event, this will arise while deciding passing 0ff.
Should the appellant have been heard? Rule 66 clearly refers to the interest of other affected persons, and Abdul Karim Sahib also holds that
justness requires us to consider whether by restoration any third party would be prejudiced. The registrar correctly afforded the appellant to take part
in the Tm!2 and TM 13 proceedings. Having taken part in it, the respondent cannot now raise his voice that the appellant ought not to have been
heard.
As regards prima facie case, we find that,
a) The applications under TM12 and TM13 are time-barred.
b) The public notice cannot extend the limitation.
c) Even after the date of removal 1.3.2010, the respondent had time till
6.4.2010, to file TM12 and 13, but they did not.
d) The evidence available is not sufficient to rebut the presumption under S.114 Evidence Act, and even if it was the hurdle of S.25(4) is there.
So prima-facie it appears that the removed mark was restord by a time barred application.
As regards irreparable injury and balance of convenience,
a) The appellant's mark was registered on June 2010, w.e.f. 23.5.2006. the respondent had admittedly not used the mark in its commercial activities
from 1995 till June 2010.
b) If so on the date of registration of MB the appellant might have successfully moved a rectification application for non-user, which has now been
taken away.
So both must be held in favour of the appellant.
36 . We have dealt with all the issues in elaborate detail, only because both the counsel argued as if they were dealing with the main matter. We had
to refer to the submissions and answer them. We make it clear, that all this issues are decided prima facie only.
We are of the opinion that the appellant is entitled to an order of stay pending the appeal. Accordingly, miscellaneous petitions No. 159 & 160/2011
in OA/59 and 60/2011/TM/KOL are allowed. Miscellaneous petitions No. 161 & 162/2011 for early hearing stand disposed of. No order as to costs.
Post the main matter in February, 2011. The counter statement if any shall be filed by then.