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Judgment
This application has been filed for grant of time to file the counter statement. The Respondent ought to have been filed it on or before 7.5.2009.
Twenty-seven months have been passed. It is only thereafter they have moved this application. When the matter came up first, the applicant had only
filed the application for extension of time without the counter statement. We informed the counsel that if the counter statement does not accompany
the application, it will not be considered at all. It is after this, the counter statement has come forth and was filed on 11.7.2011. In the Form 3 that was
filed for extension of time for 27 months, it is stated that by oversight, relevant file was mis-placed amongst the closed/decreed files in the counsel's
office and that when the hearing notice dated 20.6.2011 was received on 23.6.2011, the Respondent's counsel realized the lapse. Thereafter, this Form
3 was filed and subsequently the counter statement was filed as per our directions. We observed that when the delay is 27 months, mere letter
addressed to the Registry will not suffice. Therefore, the counsel prayed for time to file the affidavit to support their case for condonation of long
delay.
2 . Today, this affidavit by the first Respondent has been filed. According to this affidavit as far back to 2009, the instructions were given to the
counsel and only now the deponent was informed that through oversight the file was mis-placed amongst the closed/decreed files in the office of the
advocate. The deponent states that he was under the bonafide belief that the relevant counter statement would have been filed within the prescribed
time. The aforesaid oversight was discovered only upon receipt of the hearing notice. The deponent has stated in para 7 of the affidavit that no
prejudice will be caused to the applicant if the counter statement is received today. He also states that ""I have taken care to ensure that, save invoices
which show the continuity of my use of the impugned mark, I have not produced and/or relief upon any document(s) obtained/issued during the period
of delay to substantiate my case.
The learned Counsel for the applicant submitted that while there can be no dispute that there has been a huge delay, the delay must be condoned
because the party was not to be blamed for the mistake, if any, that had occurred in the counsel's office. He also submitted that no prejudice will be
caused if after the receipt of counter statement the matter is argued. It is also stated that no document has been filed along with the counter statement
which is a document pending this litigation. Therefore, it cannot be said that because of the delay any material advantage had accrued to the
Respondent.
The Learned Counsel for the Respondent / applicant on the other hand, submitted that on the strength of the impugned trade mark, the Respondent
had obtained injunctions in various courts and this advantage had continued in his favour only because of the long delay in filing the counter statement.
The Learned Counsel also submitted that the reason given is not really substantial to justify the ground for extension of time.
Before we consider the merits of this matter, we think certain procedural aspects must be made clear and this will apply to everyone. Rule 14 of
The Intellectual Property Appellate Board (Procedure) Rules, 2003 deals with extension of time and it provides for extension of time for doing any act,
whether the time so specified has expired or not. This extension of time may also be made subject to such conditions as the Board may think fit to
impose. Sub-rule 2 of Rule 14 clearly indicates that the Appellate Board is not required to hear the parties before disposing of an application for
extension of time. It appears that hitherto the Deputy Registrar had under Rule 27 been condoning the delay or extending the time as the case may be
for doing any act. This was done under the understanding of Rule 27(ix) which reads as follows:
(ix) to decide questions relating to extension of time in respect of filing of counter statement, reply, rejoinder etc.
6 . When Rule 14 is clear that it is the discretion of the Appellate Board to grant extension of time it can only mean that the extension of time is within
the sole discretion of Intellectual Property Appellate Board (IPAB) and no one else. This is further reinforced by the phrase ""Subject to such
conditions as it may think fit to impose...."". Here the word 'it' refers to the Board. Therefore, the conditions that
should be imposed while extending the time is by the Board which may deem fit to do so.
Sub-rule 2 of Rule 14 speaks of the Board not being required to hear the parties. Therefore, right to grant extension of time with or without
conditions and the right to refuse extension of time is exclusively within the discretion of the Appellate Board. No other officer or person can assume
this power. If we were to construe Rule 27(ix) as granting the power to Deputy Registrar it would run contrary to the scope of Rule
If we read Rule 27, we find that the functions of the Deputy Registrar which is of course subject to orders of the Chairman is to receive
applications, appeals, counter statements, replies and other documents. He can decide all questions arising out of the scrutiny of the appeals which
means if the appeals are not in conformity with the rules, the Deputy Registrar can make the necessary required corrections before they are
registered. The Deputy Registrar may also to require any application, appeal, counter statement, replies presented to the Appellate Board to be
amended so that they are in conformity with the rules.
8 . The Deputy Registrar may fix dates of hearing of the applications or appeals or other proceedings and issue notices therefore subject to the
directions of the Chairman. He may direct any formal amendment of records. He may order supply of copies of documents to parties to proceedings.
He may grant leave to inspect the records or requisition of records from any court, Registrar of Trade Marks or other authority. It is seen that on
consideration of all these functions, the Deputy Registrar does not perform any function which is even faintly judicial, they are ministerial. To grant
him the power of condoning the delay or extending the time, would be implicitly granting him the power to refuse to condone the delay or refuse to
grant extension of time. Therefore, the entire proceedings which must be adjudicated by the Board would come to a conclusion by the order the
Deputy Registrar if we understand Section 27(ix) to mean that the Deputy Registrar can extend time. We do not think this is an appropriate
understanding of Rule 27 that the Deputy Registrar is to decide question for extension of time and not to decide the right to have time extended. For
example, if there is any doubt as to the exact number of days of delay, the officer may decide.
Therefore, hereafter all applications made under Form 3 will be placed before the Board. As per Rule 14 (2) the Board need not hear the parties
before disposing of the application. On a perusal of the papers, the Board will, if satisfied that sufficient cause is made out, grant extension of time.
While doing so, the Board may insist that on the date by which the time is so extended, the counter statement shall be filed. The Board, may if it thinks
fit, post the matter for hearing. But this is entirely at the discretion of the Board.
We find that in a similar matter the Hon'ble Calcutta High Court in W.P. 669 (W) of 2010 in Prabhu Shankar Agarwal and Ors. v. Registrar of
Trade Marks and Ors. held as follows:
The bonafide or otherwise of the applicant has to be tested by the Board while it considers the petition and it is entirely the discretion of the Board to
accept or to reject the prayer for tendering additional evidence. It has not been demonstrated before me that no miscellaneous petition could be filed in
terms of the extent statutory provisions once judgment is reserved by the Board. It is true that in terms of Rule 27(2) of the Rules the Deputy
Registrar is empowered to decide all questions arising out of scrutiny of appeals and applications before they are registered but, in my considered
view, the scrutiny must be directed towards ascertaining whether the applications and the appeals are in the prescribed form or not and not towards
the stage of filing such applications, which ought to fall for consideration of the Board. In the present case, the Deputy Registrar in returning the
miscellaneous petition appears to have acted clearly beyond his jurisdiction.
We found that the practice hitherto adopted by the advocates is to file multiple Form 3s without even annexing the counter statements and taking
advantage of multiple orders of extension of time. When this Board has come into existence for expeditious disposal of Intellectual Property disputes,
such a practice must be nipped, since it runs counter to the object of the Act.
Now we come to the present case. The delay here is very long i.e. 27 months. But strictly speaking, no prejudice has been caused to the applicant
merely by virtue of this delay except of course the burden of orders of injunction operating against the applicant. The Respondent has stated on oath
that he has not produced any document which has come up pending the litigation.
In these circumstances, we grant the prayer of the application on a payment of cost of Rs. 30,000/- payable to the applicant on or before one
week from the date of receipt of this order.
The matter is adjourned to 22nd July 2011 on which date the applicant shall furnish proof of payment of cost, and we will proceed to hear the main
matter.