Torrent Drugs And Chemicals Private Limited vs Registrar Of Trade Marks, Trade Marks Registry And The Assistant Registrar Of Trade Marks, Trade Marks Registry Branch

S. Usha, Technical Member

The appeal filed before the High Court of Gujarat, Ahmedabad as appeal No. 21 of 1995 has been transferred to this Board in terms of Section 100

of the Trade Marks Act, 1999 and numbered as TA/RECT/256/2004/TM/AMD.

This appeal is directed against the order passed by the Assistant Registrar of Trade Mark, Ahmedabad removing the trade mark 'RANITIN' under

No. 439974 in class 5, under Section 56(4) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) in the name of the

appellant in respect of pharmaceutical and medicinal preparations.

The appellant had filed an application under application No. 439974 for registration of the trade mark 'RANITIN' in class 5 on 7.7.1985 as a

proposed mark. The said application was advertised in the Trade Marks Journal No. 1009 dated 16.6.1991 at page 390. The said application was

opposed by three companies under opposition No. AMD-208, AMD-235 and AMD 244.

The said advertisement was cancelled by the Registrar of Trade Marks, namely the first respondent herein and the same was advertised in the

Trade Marks Journal No. 1018 dated 1.11.1991 at page 1017. The cancellation advertisement was made without notice to the appellant herein and

show cause notice in this regard was issued on 14.1.1992 communicating to the appellant the proposal of the Registrar to withdraw the order of

advertising the application before acceptance in pursuance of Sections 18(4)/19 of the Act read with Rule 44 of the Trade and Merchandise Marks

Rules, 1959.

On receipt of the entire records from the Head Registry it was found that the mark had already been registered and a notice under Section 56(4) of

the Act was issued calling upon the appellant to show cause as to why the entry of the impugned mark should not be removed. The appellant had filed

their reply contending that the notice under Section 56(4) of the Act was not authorised to be issued by the Assistant Registrar and the Assistant

Registrar was not a tribunal. The appellant also contended that the proceedings have been initiated malafidely and that action under Section 56(4) of

the Act was not maintainable due to delay and latches.

Learned Assistant Registrar had passed an order confirming his powers to issue notice under Section 56(4) of the Act and also that he had

jurisdiction to issue such notice. He had also given a finding that the notice issued under Section 19 of the Act was not yet decided and that

opportunity should be given to the appellants to be heard in the matter and ordered that the mark be removed from the register. Aggrieved by the said

order the appellant had filed the appeal. M.P.No. 130/2004 has been filed by appellant to take on record certified copies of documents.

The matter was taken up for hearing in the Circuit Bench at Ahmedabad on 25.7.2006. Learned Counsel Shri R.R. Shah appeared for the appellant

and none appeared for the respondents. But the second respondent had later sent their written submissions directly to the Registry.

Learned Counsel for the appellant mainly contended that the issuance of notice under Section 56(4) of the Act is bad in law. He also submitted that

he had replied to the notice to show cause as to why the advertisement should not be cancelled issued by the Registrar on 14.1.1992. He also drew

our attention to the order passed by the Senior Joint Registrar of Trade Marks on 8.7.1994 pursuant to the notice issued under Section 19 of the Act.

The Senior Joint Registrar had passed an order directing that the cancellation of the advertisement of the mark published be withdrawn as no

opportunity was given to the appellant to be heard. He had also directed the Registry to issue notice under Section 56(4) of the Act for removal of the

mark as three oppositions were already pending. The learned Counsel for the appellant submitted that the Assistant Registrar had passed an erroneous

order without considering the order passed by the Senior Joint Registrar. He also submitted that as per Section 32 of the Act this mark was on the

Register for seven years and was prima facie valid. He further contended that the Assistant Registrar had issued the order on 3.4.2003 stating that the

mark was removed for non payment of fees which was totally erroneous. He submitted that when the matter was pending before the High Court and

the matter being sub-judice, the order passed by the Assistant Registrar removing the mark from the Register was not maintainable. The learned

Counsel for the appellant also relied on various judgments in support of his contentions.

The second respondent in his written submissions had stated that the mark has not been renewed and no renewal fee had been paid and that it is

liable to be removed and that the appeal is liable to be dismissed. In view of the provisions of Section 13 of the Act the mark has to be expunged was

another contention of the second respondent. The second respondent had also submitted that the Assistant Registrar had powers to deal with the

matter and the order passed by the Assistant Registrar is correct and hence prayed that the appeal be dismissed.

We have carefully heard the contentions of the learned Counsel for the appellant and we have gone through the written submissions of the second

respondent. On perusal of the records we find that the order had been passed by the Assistant Registrar in an erroneous manner. We find that there

has been non application of mind by the Assistant Registrar in his findings. We find from the relevant records that an order had already been passed

by the Senior Joint Registrar on 8.7.1994 withdrawing the cancellation of the advertisement. Hence we feel that the matter under Section 19 of the

Act for cancellation of the advertisement does not survive and the direction to give an opportunity to be heard in the matter to the appellant as

mentioned by the Assistant Registrar in his findings also does not arise.

We also agree that the reason given for expunging the mark from the Register was that three oppositions were pending and that the registration

was in contravention of the provisions of the Act. In this regard we observe that the matter had to be dealt with in accordance with law. We have no

hesitation in holding that the Registrar had erroneously issued a notice under Section 56(4) of the Act without looking into the records at the time the

notice was being issued for expunging the mark as the advertisement had already been cancelled as withdrawn by an order dated 8.7.1994 passed by

the Senior Joint Registrar.

We are of the opinion that the matter should be remanded back to the Assistant Registrar of the Trade Marks to hear the three oppositions and

then decide the same in accordance with the law in order to maintain the purity of the Register.

Accordingly the appeal is allowed and the Assistant Registrar of Trade Marks, Ahmedabad is directed to hear and dispose of the matter in

accordance with law within a period of six months from the date of receipt of this order as the matter has been long pending. M.P.No. 130/2004 is

also allowed. There shall be no order as to costs.