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Judgment
Z.S. Negi, J
1 . The above original rectification application 84/2007 of the applicant is for the removal of trade mark 'LT', registered under No. 1169161 in class 25
in the name of the respondent, from the register of trade marks or rectification of the register under Section 47/ 57 / 125 of the Trade Marks Act,
1999 (in short the Act). An application (being M.P. No. 69/2007), along with the rectification application, for staying/injecting the effect and operation
of the impugned registered trade mark 'LT' till the disposal of the rectification application, has also been filed by the applicant. During the pendency of
the rectification application and stay/injunction application, the respondent has filed Form 3 (being Diary No. 1978/2008) seeking extension of time for
filing the counter-statement with a delay of 11 months.
2 . Averment is made in the application for stay/injunction that the impugned registration in the name of respondent is malafide and the same is
secured by playing fraud upon the Registrar of Trade Marks. The impugned registration is a wrong entry remaining on the register. The respondent on
the strength of impugned registration is interfering with the business activities of the applicant and continuation of impugned registration on the register
is causing grave, serious and irreparable injury to the applicant on daily basis in the market and trade. The prima facie case and balance of
convenience are in favour of the applicant. Owing to the impugned entry on the register, the applicant is suffering and shall continue to suffer if the
effect of the impugned entry on the register is not stayed till the disposal of the rectification application and the applicant cannot be compensated for
such suffering in terms of money.
3 . In the application for extension of time on Form 3, the applicant has stated that the present proceeding is an offshoot of multifaceted litigation
pending between the parties for which documents had to be called for from the Delhi lawyers handling two pending Delhi suits between the parties
and owing to change of personnel in the in-house legal department of the respondent company, they were not able to file the counter-statement
supported by documentary evidence within the prescribed time limit. The registered proprietor/respondent upon realising their mistake of not filing the
counter-statement, they were involved in collating the evidence which took time as the present facts and status of Delhi suit proceedings were to be
collated, complied an have been pleaded by the registered proprietors. It is further stated that no harm would be caused to the applicant in the
rectification application and moreover no sitting of the Bench of the Appellate Board has taken place at Mumbai since April, 2008.
4 . Miscellaneous Petition No. 69/2007 and Diary No. 1978/2008 came up before us for hearing on 3.2.2009 wherein Shri Saurabh Kapoor, Advocate
appeared for the applicant for stay application and Shri Vinod Bhagat, Advocate appeared for the respondent; Shri Vinod Bharat, Advocate appeared
for the applicant in Form-3 application and Shri Saurabh Kapoor, Advocate appeared for the respondent. Both the matters were heard together and
hence this common order is passed.
5 . Shri Saurabh Kapoor, learned Counsel for the applicant submitted that the applicant and his partner Mr. Puneet Badani has honestly, bonafidely
and during the course of trade and business adopted the trade mark 'L.T' which is the abbreviation of the firm's name, namely, M/s. Life Time Fashion
and made application No. 806336 as proposed to be used in class 25 on 16.6.1998 for registration thereof. The oral partnership did not last long and
dissolved in the year 2000 and Mr. Badani had filed affidavit along with Form TM-16 to bring the application for registration in the name of the
applicant. Thus the applicant is the owner and proprietor of the trade mark in respect of ready made garments and using the trade mark since 2001.
Learned Counsel pointed out that from the Trade Marks Journal MEGA 5 page 6106 it is clear that the respondent has filed application on 24.1.2003
for registration of L.T in relation to clothing and wearing apparels of all sorts. The respondent has obtained the impugned registration illegally,
dishonestly and fraudulently. Learned Counsel by referring the Chapter 27 paras 08 and 09 from P. Narayana's book on the Law of Trade Marks and
Passing off asserted that where an applicant for registration knowingly made a false claim to be the proprietor of the mark obtained registration by
fraud and also where the registration was obtained by suppression of a material fact or by making a false statement, such registration was made
without sufficient cause and could be said to have been obtained by fraud and such registration could be expunged. Also, where registration was
obtained on the basis of untrue statement regarding user of the mark where such user was material, the court is bound to remove the mark from the
register. The mark may be expunged if registration was obtained by an untrue statement made to the Registrar regarding any other material fact. The
respondent is guilty of fraud in claiming user of the impugned mark since 1.1.1946 in relation to clothing and wearing apparels of all sorts as it has
never used the impugned mark in relation to those goods at all till date. On the other hand, the applicant is not only prior user but also prior applicant
for registration of the mark L. T in respect of goods in class 25. By citing the order of this Appellate Board in Jain Doors Pvt. Ltd. v. Suresh Kumar
Jain MANU/IC/0021/2006, the counsel submitted that the respondent has obtained the registration by false statement of use, the respondent's mark is
liable to be dismissed. As the impugned mark of the respondent is identical with that of the applicant and the goods are of same description, falling
under the same class, as that of the applicant, it would deceive and cause confusion or is likely to cause deception and confusion. Relying upon the
order passed on 17.12.2008 by this Appellate Board in Smt. Raj Rani Agrawal, Proprietor of Bios Laboratory v. Parul Homeo Laboratory (P) Ltd.
and Anr. passed in M.P. No. 6/2008 in ORA/4/2008/TM/DEL, the learned Counsel urged to allow the stay application.
On the other hand, learned Counsel for the respondent while vehemently opposing the application for stay submitted that the present request of stay
at this belated stage cannot be granted. By drawing our attention to paragraph 13 of the counter-statement, he submitted that there is no provision for
stay in case of rectification proceeding. He pointed out that Section 95 of the Act does not envisage any stay in respect of rectification application. He
further submitted that, amongst others, it is denied in the same para that the respondent's mark is a wrong entry remaining on the register and the
respondent is not interfering with the applicant's business. In fact the applicant were infringing and passing off under the pirated mark, fraudulently
adopted by them with malafide motive of usurping upon the goodwill and reputation in order to make illicit gains. No urgency or grave situation has
been brought out by the applicant requiring the stay order to be passed for maintaining the status quo has been shown by the applicant. Learned
Counsel submitted that they have intention to use the mark for the goods falling under class 25. The date of entry of the respondent's mark is
17.5.2005 and the date of present application appears to be 14. 5.2007 and thus the present application for rectification is premature having regard to
the provisions of Section 47(1)(b) of the Act and is liable to be dismissed at the threshold.
7 . Shri Vinod Bhagat, learned Counsel for the applicant (respondent in the rectification application) seeking extension of time for filing counter-
statement submitted that the reason for not filing the counter-statement is explained in the application. He submitted that due to change of personnel in
the in-house legal department of the applicant company, the applicants were unable to file the counter-statement and after they realised their mistake,
they involved themselves in collecting, collating the evidence from different places where litigations between the parties are pending. This took time.
He submitted that the delay was neither deliberate nor wilful. He further submitted that the respondent's reply and evidence should not be shut out by
refusing extension of time. Without taking on record the counter-statement and evidence, proper adjudication may not be possible. Placing reliance
upon the order of this Appellate Board in the case of Kumar Dal Mills v. Bansi Lal Aggarwal MANU/IC/0014/2006, learned Counsel submitted that
in order to proper adjudication of application for rectification, the counter-statement is a necessary document and therefore the same may be taken on
record by extending the time requested for. Learned Counsel submitted that the applicant has shown sufficient cause for not filing the counter-
statement within the prescribed time limit. Relying the judgment of the Apex Court in Collector, Land Acquisition, Anantnag and Anr. v. Mst. Katiji
and Ors. MANU/SC/0460/1987, he submitted that the expression 'sufficient cause' employed by the legislature in the statute is adequately elastic to
enable the courts to apply the law in a meaningful manner which subserves the ends of justice that being the life-purpose for the existence of the
institution of courts. Learned Counsel concluded by submitting that if the time is extended and the counter-statement is taken on record, it would not
cause harm to the applicant in the rectification application.
8 . Learned Counsel for the respondent (applicant in the rectification application) vehemently opposed the application for extension of time in filing the
counter-statement with a delay of 11 months. He submitted that the applicant has not explained the delay fully as to when the change in personnel in
the legal department of the applicant took place and when the new personnel were posted there and how much time was consumed to collect and
collate the information and documents from other places. Learned Counsel in support of his submission relied on the order of this Appellate Board in
Dr. Reddy's Laboratories Ltd. v. Win-Medicare Ltd. and Deputy Registrar of Trade Marks MANU/IC/0071/2008 where in application for
condonation of delay was dismissed on the ground that the explanation contained in the application was found unacceptable or did not constitute
sufficient cause for condoning the delay. He also placed reliance upon the judgment of Delhi High Court in the case of Sunrider Corporation, U.S.A.
v. Hindustan Lever Ltd. and Anr. MANU/DE/2111/2007 wherein it was held that Registrar does not have power to extend time beyond three months.
Now we would consider whether stay prayed for by the applicants for rectification application can be granted. The well established principles
governing stay is prima facie case, balance of convenience and irreparable injury, that is to say, the applicant for stay has to establish prima facie case
for stay, balance of convenience in his favour and irreparable injury. The applicant has claimed that the respondent has obtained registration of trade
mark by playing fraud upon the Registrar of Trade Marks but no particulars of fraud has been given. The claim of applicant that the respondent on the
strength of registration interfering in its business activities and due to continuation of such registration, the applicant is suffering irreparable injury in
trade on daily basis. Nothing has been specified as to how the applicant is suffering the alleged injury. The applicant has claimed that the trade mark
'L.T' has been honestly and bonafidely adopted and the same is abbreviation of firm's name M/s. Life Time Fashion. The letters 'L.T' cannot be the
abbreviation of firm's name as abbreviation of firm's name would be 'L.T.F' not 'L.T'. At best the letters could be part of the firm's name but not
abbreviation thereof and, however, it is not the case of the applicant that 'L.T' is part of the firm name. On the other hand, the respondent has averred
that in the 'LT' Logo, letter 'L' is taken from Larsen and letter 'T' is taken from the Toubro, the renowned short name of 'L&T' (the abbreviation of
applicant's corporate name. The applicant's application for registration made on 16.6.1998 is on the basis of proposed to be used, whereas user date of
respondent is 1.1.1946. The applicant has averred that the respondent has filed voluminous documents in the suit but there is not a single invoice to
prove the use of clothing, etc., but those documents are not on our record for verification. One of the grounds for removal of the mark of the
respondent is non-use for more than 5 years and 3 months before the present application whereas the statutory period of 5 years and 3 months will
complete sometimes in the year 2010 as the impugned entry of trade mark was made on the register in the year 2005 (the date and month is not visible
in the copy of registration certificate on record) and such the application on this count is prima facie premature. The cases relied upon by the applicant
will be of no help to him as the facts are distinguishable. In the case of Raj Rani Agrawal (supra) the Appellate Board found an apparent difference
between the application published in the Trade Marks Journal and the corrigendum issued by the Registrar. Further, it was also found that the order
dismissing earlier rectification application was sent to the Registrar with a request not to issue the registration certificate despite that the registration
certificate was issued. In our considered opinion, the applicant has not established the prima facie case and, balance of convenience and irreparable
injury have not been shown. In view of the foregoing, we are not inclined to exercise our discretion in favour of the applicant. Since the applicant for
the rectification application has failed to established prima facie case for stay, we are not required to deal with the submission of the counsel for the
respondent that there is no provision in the Act to grant stay in the rectification application.
The provision of Rule 14 of the Intellectual Property Appellate Board (Procedure) Rules, 2003, amongst others provide that if the Appellate Board
is satisfied, on an application made to it in the prescribed Form-3 under these rules, that there is sufficient cause for extending the time for doing any
act prescribed under these rules (not being a time expressly provided for in the Trade Marks Act, 1999), whether the time so specified has expired or
not, it may subject to conditions as it may think fit to impose, extend the time and inform the parties accordingly.
11 . We have to consider whether there is any sufficient cause for not filing the counter-statement within the prescribed time. Before entering into the
discussion, it may be worthwhile to refer to two Judgments of the Apex Court. One is the case of Ramnath Sao @ Ramnath Sahu and Ors. v.
Goverdhan Sao and Ors. MANU/SC/0135/2002 which is a case under Section 5 of the Limitation Act to condone the delay of 130 days of the case of
appellant No. 3, of 5 years in the appellant No. 22 and 3 years in the case of the appellant No. 4, in applying to bring on record their legal
representatives and substituting the heirs. The learned Judges set aside the Judgment of the Division Bench of the High Court confirming the order of
the learned single Judge and condoned the delay by allowing the petition. Of course, that arises out of an application to bring the legal representatives
on record where the learned Judges have laid the following principle:
Thus, it becomes plain that the expression ""sufficient cause"" within the meaning of Section 5 of the Act or Order 22 Rule 9 of the Code or any
other similar provision should receive a liberal construction so as to advance substantial justice when no negligence or inaction or want of bona fide is
imputable to a party. In a particular case whether explanation furnished would constitute ""sufficient cause"" or not will be dependent upon facts of each
case. There cannot be straightjacket formula for accepting or rejecting explanation furnished for the delay caused in taking steps. But one thing is
clear that the Courts should not proceed with the tendency of finding fault with the cause shown and reject the petitioner by a slipshod order in over
jubilation of disposal drive. Acceptance of explanation, furnished should be the rule and refusal an exception more so when no negligence or inaction
or want of bona fide can be imputed to the defaulting party. On the other hand, while considering the matter the Courts should not lose sight of the
fact that by not taking steps within the time prescribed a valuable right has accrued to the other party which should not be lightly defeated by
condoning delay in a routine like manner. However, by taking a pedantic and hyper technical view of the matter the explanation furnished should not
be rejected when stakes are high and/or arguable points of facts and law are involved in the case, causing enormous loss and irreparable injury to the
party against whom the lis terminates either by default or inaction and defeating valuable right of such a party to have the decision on merit. While
considering the matter, Courts have to strike a balance between resultant effect of the order it is going to pass upon the parties either way.
Another Judgment of the Supreme Court which also worth mentioning is N. Balakrishnan v. M. Krishnamurthy MANU/SC/0573/1998 there was a
delay of 883 days in filing the application for setting aside the ex-parte decree. The Trial Court condoned the delay. However, when the matter was
taken to the High Court by way of Civil Revision petition, the learned Single Judge, set aside the order of the Trial Court and dismissed the petition for
condoning the delay. That order of High Court was set aside by the Supreme Court. Justice K.T. Thomas, speaking for the Court, succinctly laid
down the law observing thus in paras 8, 9 and 10:
The appellant's conduct does not on the whole warrant to castigate him as an irresponsible litigant. What he did in defending the suit was not very
much far from what a litigant would broadly do. Of course, it may be said that he should have been more vigilant by visiting his advocate at short
intervals to check up the progress of the litigation. But during these days when everybody is fully occupied with his own avocation of fife an omission
to adopt such extra vigilance need not be used as a ground to depict him as a litigant not aware of his responsibilities, and to visit him with drastic
consequences.
9 . It is axiomatic that condonation of delay is a matter of discretion of the Court. Section 5 of the Limitation Act does not say that such discretion can
be exercised only if the delay is within a certain limit. Length of delay is no matter, acceptability of the explanation is the only criterion. Sometimes,
delay of the shortest range may be uncondonable due to a want of acceptable explanation whereas in certain other cases, delay of a very long range
can be condoned as the explanation thereof is satisfactory. Once the Court accepts the explanation as sufficient, it is the result of positive exercise of
discretion and normally the superior Court should not disturb such finding, much less in revisional jurisdiction, unless the exercise of discretion was on
wholly untenable grounds or arbitrary or perverse. But it is a different matter when the first Court refuses to condone the delay. In such cases, the
superior Court would be free to consider the cause shown for the delay afresh and it is open to such superior Court to come to its own finding even
untrammelled by the conclusion of the lower Court.
The primary function of a Court is to adjudicate the dispute between the parties and to advance substantial justice. The time-limit fixed for
approaching the Court in different situations is not because on the expiry of such time a bad cause would transform into a good cause.
The learned Judge of the Supreme Court further observed in paragraphs 11, 12 and 13 which runs thus:
Rules of limitation are not meant to destroy the rights of parties. They are meant to see that parties do not resort to dilatory tactics, but seek their
remedy promptly. The object of providing a legal remedy is to repair the damage caused by reason of legal injury. The law of limitation fixes a lifespan
for such legal remedy for the redress of the legal injury so suffered. Time is precious and wasted time would never revisit. During the efflux of time,
newer causes would sprout up necessitating new persons to seek legal remedy of approaching the Courts. So a lifespan must be fixed for each
remedy. Unending period for launching the remedy may lead to unending uncertainty and consequential anarchy. The law of limitation is thus founded
on public policy. It is enshrined in the maxim interest reibublicae up sit finis litium (it is for the general welfare that a period be put to litigation). Rules
of limitation are not meant to destroy the rights of the parties. They are meant to see that parties do not resort to dilatory tactics but seek their remedy
promptly. The idea is that every legal remedy must be kept alive for a legislatively fixed period of time.
A Court known that refusal to condone delay would result in foreclosing a suitor from putting forth his cause. There is no presumption that delay in
approaching the Court is always deliberate. This Court has held that the words ""sufficient cause"" under Section 5 of the Limitation Act should receive
a liberal construction so as to advance substantial justice vide Shakuntala Devi Jain v. Kuntal Kumari (1969) 1 SCR 1006 and State of W.B. v.
Administrator, Howrah Municipality (1972) 1 SCC 366.
It must be remembered that in every case of delay, there can be some lapse on the part of the litigant concerned. That alone is not enough to turn
down his plea and to shut the door against him. If the explanation does not smack of mala fides or it is not put forth as part of a dilatory strategy, the
Court must show utmost consideration to the suitor. But when there is reasonable ground to think that the delay was occasioned by the party
deliberately to gain time, then the Court should lean against acceptance of the explanation. While condoning the delay, the Court should not forget the
opposite party altogether. It must be borne in mind that he is a loser and he too would have incurred quite large litigation expenses.
In yet another case of Collector, Land Acquisition, Anantnag v. Mst. Katiji AIR 1987 Supreme Court 1353, the Supreme Court held as under:
3 . The legislature has conferred the power to condone delay by enacting Section 51 of the Indian Limitation Act of 1963 in order to enable the Courts
to do substantial justice to parties by disposing of matters on 'merits'. The expression 'sufficient cause"" employed by the legislature is adequately
elastic to enable the Courts to apply the law in a meaningful manner which subserves the ends of justice that being the life-purpose for the existence
of the institution of Courts. It is common knowledge that this Court has been making a justifiably liberal approach in matters, instituted in this Court.
But the message does not appear to have percolated down to all the other Courts in the hierarchy. And such a liberal approach is adopted on principle
as it is realized that:
*1. Any appeal or any application, other than an application under any of the provisions of Order XXI of the Code of Civil Procedure, 1908, may be
admitted after the prescribed period if the appellant or the applicant satisfies the Court that he had sufficient cause for not preferring the appeal or
making the application within such period.
Ordinarily a litigant does not stand to benefit by lodging an appeal late.
Refusing to condone delay can result in a meritorious matter being thrown out at the very threshold and cause of justice being defeated. As against
this when delay is condoned the highest that can happen is that a cause would be decided on merits after hearing the parties.
3 . ""Every day's delay must be explained"" does not mean that a pedantic approach should be made. Why not every hour's delay, every second's delay?
The doctrine must be applied in a rational common sense pragmatic manner.
4 . When substantial justice and technical considerations are pitted against each other, cause of substantial justice deserves to be preferred for the
other side cannot claim to have vested right in injustice being done because of a non-deliberate delay.
5 . There is no presumption that delay is occasioned deliberately, or on account of culpable negligence, or on account of mala fides. A litigant does not
stand to benefit by resorting to delay. In fact he runs a serious risk.
It must be grasped that judiciary is respected not on account of its power to legalize injustice on technical grounds but because it is capable of
removing injustice and is expected to do so.
Making a justice-oriented approach from this perspective, there was sufficient cause for condoning the delay in the institution of the appeal. The fact
that it was the 'State', which was seeking condonation and not a private party was altogether irrelevant. The doctrine of equality before law demands
that all litigants, including the State as a litigant, are accorded the same treatment and the law is administered in an even-handed manner. There is no
warrant for according a step-motherly treatment when the 'State' is the applicant praying for condonation of delay. In fact experience shows that on
account of an impersonal machinery (no one in charge of the matter is directly hit or hurt by the judgment sought to be subjected to appeal) and the
inherited bureaucratic methodology imbued with the note-making, file pushing, and passing-on-the-buck ethos, delay on its part is less difficult to
understand though more difficult to approve. In any event, the State which represents the collective cause of the community, does not deserve a
litigant non grata status. The Courts therefore have to informed with the spirit and philosophy of the provision in the course of the interpretation of the
expression 'sufficient cause'. So also the same approach has to be evidenced in its application to matters at hand with the end in view to do even-
handed justice on merits in preference to the approach which scuttles a decision on merits.
Keeping in the above principles in view, we have to consider the averments made by the applicant and also whether the delay in filing counter-
statement can be condoned by extending the time for filing the counter-statement. The applicant/respondent has averred that multifaceted litigations
are pending between the parties and the information and documents relating thereto were to be collected and collated from the lawyers from Delhi in
two pending suits in Delhi which took time. Apart from this, the applicant/respondent could not file the counter-statement due to in-house change of
personnel in their legal department. The explanation of the applicant does not smack of malafide nor seems to be deliberate or wilful. There is little
scope to presume that the applicant/respondent might have deliberately delayed the filing of counter-statement, as the stake of applicant is high,
involving proprietary right in the trade mark and they would not have taken the serious risk of their mark being expunged from the register for want of
counter-statement in the rectification application. Otherwise also, by non-filing or late filing of counter-statement, the applicant/respondent do not stand
to gain any benefit but the risk of likelihood of loosing the trade mark is more. The bonafide intention to contest the matter by the applicant is inferable
from the fact that the applicant/respondent has filed the counter-statement after paying a late fee of eleven thousand rupees to the Appellate Board.
Apart from this, the counter-statement and evidence will be of assistance to the Appellate Board for proper adjudication of the matter, hence in that
sense the counter-statement and evidence is necessary documents to decide the dispute on merits. An important notable fact is that the applicant in
the rectification application has already taken cognizance of the counter-statement by filing rejoinder/reply to the counter-statement and the same has
not been refused to be taken on record. The cases relied upon by the respondent are distinguishable and cannot be of any assistance to him. In Dr.
Reddy's case (supra), the delay caused was attributed to shifting of office from one floor to another in the same premises and there was no averment
that the document was mixed up and found. The Issue in the Sunrider case (supra) was whether Registrar has power to extend time under Rule 50 of
the Trade Marks Rules, 2002, whereas in the case on hand the Rule 14 of the Intellectual Property Appellate Board (Procedure) Rules, 2003
empowers the Appellate Board to extend time on sufficient-cause being shown; however, it has not been brought to our notice as how the ratio
decidendi in the former case is applicable on the facts of the instant case. In view of the foregoing discussion, we are of the opinion that there is
sufficient cause for extending time for filing the counter-statement. Though we found that there is neither malafide intention nor deliberate or wilful
delay but still the applicant/respondent could have been little more careful in avoiding the long delay in filing the counter-statement. Hence we impose
a cost of Rs. 3000 on the applicant/respondent for extending the extension of time requested for. The application on Form 3 is allowed on condition
that the applicant/respondent shall pay a sum of Rs. 3000 to the counsel for the applicant for rectification or to the applicant for rectification
application within 4 weeks from the date of receipt of this order failing which the application on Form 3 shall stand dismissed.
13 . The result is that the application for stay/injunction is rejected and the application for extension of time for filing the counter-statement till 5th day
of August, 2008 is ordered on the above terms.