Qualcomm Incorporated vs Immobiliengesellschaft `

K.N. Basha, J

ORDER (169 of 2015)

1 . Mr. S.K. Bansal, learned counsel for the appellant and Mrs. Kajal Sinha, learned counsel for the 1st respondent are present before us today. The challenge in this appeal is to the order passed by the Joint Registrar of Trade Marks, Trade Marks Registry, Kolkata dated 30/10/2007 allowing Form TM-16 dated 13/04/2007 filed by the 1st respondent herein.

Mr. S.K. Bansal, the learned counsel for the appellant would contend that Form TM- 16 was filed by the 1st respondent only after opposition filed by the appellant herein and after the appellant disclosed the prior use etc., the 1st respondent claimed that they are the prior user. The learned counsel would contend that before the amendment, even publication was effected and there was no publication after the amendment. Mr. S.K. Bansal, the learned counsel for thee appellant would further contend that in the impugned order the Joint Registrar of Trade Marks, Trade Marks Registry, Kolkata has gone into the merits of the case, namely in respect of the prior user which would result in grave prejudice to the appellant herein as the fair procedure requires to afford opportunity to both sides after the amendment on the merits of the case. Therefore, it is contented that the impugned order is liable to be set aside.

Mrs. Kajal Sinha, learned counsel appearing for the 1st respondent would contend that they have preferred the Form TM-16 even prior to the date of opposition as early as 13/10/2005 within a period of four months from the date of submission of their application of registration. In order to substantiate their contention, the learned counsel for the 1st respondent would also produce the website extract in respect of the receipt of fees for filing Form TM-16 dated 13/10/2005. The learned counsel therefore would contend that there is no illegality or infirmity in the impugned order allowing Form TM-16.

4 . We have carefully considered the rival contentions put forward by either side and perused the materials including the impugned order passed by the Joint Registrar of Trade Marks, Trade Marks Registry, Kolkata.

5 . At the outset it is to be stated that it is permissible to file Form TM-16 for amendment by the applicant and in respect of the instant case, it is seen that the applicant has preferred Form TM-16 on 13/10/2005, i.e. within a period of four months from the date of their application for registration and the same is substantiated by the production of website extract of the receipt of fees paid by the 1st respondent herein dated 13/10/2005. However, by way of precaution the 1st respondent have also filed the Form TM-16 as the earlier application for Form TM-16 was not taken on record by the Registry of Trade Marks which resulted in passing the impugned order. We are unable to find any illegality in allowing Form TM-16 for amendment. However, we are able to find serious infirmity in respect of the impugned order as pointed out by the learned counsel for the appellant.

The perusal of the impugned order reveals that the Joint Registrar of Trade Marks by allowing the Form TM-16 also went into the merits of the case relating to the prior use. The fair procedure requires that after the amendment of the application the same should be given for publication and thereafter both sides should be afforded opportunity to put forward their respective claims and ultimately the decision has to be taken by the authority. The learned counsel would also rightly placed reliance on the decision of IPAB reported in 2014 (57) PTC 565 [IPAB] in Voltas Limited v. Debraj Dey & Anr.

In the said decision, the IPAB held that the advertisement was not given correctly as the advertisement does not contain the amended date of user. This Bench has held hereunder:-

13 . Sub-section 2 of Section 20 provides that if an application has been corrected or amended before advertisement, the advertisement of the corrected mark has to be re-advertised. Where an application has been advertised without carrying out any error in the application that has been corrected or the application has been permitted to be amended, the Registrar has the discretion to order re-advertisement of the application or cause the correction to be carried out in the Journal (Corrigenda).

14 . The necessary purpose of the trade marks advertisement is to provide complete information of the trade mark advertised, so that the public at large may receive a clear and full information of the trade mark. If the incomplete particulars of the trade mark or any incorrect information is given in the advertisement, the public are deprived of the opportunity of getting full particulars.

In 2000 PTC (20) 161 (Del) - Ashoka Dresses v. Bonn's Shirts and another - it was held that an incorrect advertisement which amounted to misrepresentation is required to be cancelled.

The principles laid down in the decision supra is squarely applicable to the instant case with only one difference. In the decision cited supra as a matter of fact advertisement was given consequent to the amendment without incorporating the amendment relating to the prior use and as far as the instant case is concerned advertisement was given prior to amendment but subsequent to the amendment the advertisement was not given and as such in our considered view, the said advertisement is illegal and the said incorrect advertisement would cause serious prejudice to the appellant. In view of the same, we are constrained to set aside that portion of the impugned order relating to the findings rendered by the Joint Registrar of Trade Marks, Trade Marks Registry, Kolkata in respect of prior use on the basis of amendment. Consequently, the Joint Registrar of Trade Marks shall give fresh advertisement incorporating the amendment in respect of the user claim made by the 1st respondent herein and thereafter shall proceed with the matter in accordance with the law by affording opportunity to both sides to substantiate their claims and contentions. It is made clear that the said exercise shall be completed within a period of six months from the date of receipt of the order copy of this Bench. Consequently, the Miscellaneous Petition No. 14/2008 is closed.