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The provisions of Rule 50 (2) are mandatory and the Registrar has no discretion. If the evidence affidavit has not been filed within the time prescribed, the opposition would have to be deemed to have been abandoned. The Registrar has also no discretion in extending the time beyond the maximum period of one month prescribed under Rule 50(1).” 19. It is against the judgement cited in 2006 (32) PTC 287 (IPAB) that this order has been passed. Therefore, 2006 (32) PTC 287 (IPAB) cited has been over ruled. 20. In the present case the order shows that the Assistant Registrar had disallowed the TM-56 holding that the opponent may file their evidence in reply under Rule 52. 21. The order is correct. If the appellant wants to file any evidence in reply, they may do so subject to any objection that may be raised by the respondents herein that the evidence is not strictly in reply but the main evidence itself. Therefore, the evidence, if filed by the appellant, shall be strictly considered and only that evidence which is strictly in reply may be received as such and nothing else. The appeal is, therefore, dismissed with costs of Rs.2,500/-.

Appeal to the Great Spirit

Appeal to the Great Spirit (Photo credit: cliff1066™)

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018

(Circuit Bench Sitting at Delhi)

 

OA/8/2006/TM/DEL

FRIDAY, THIS THE 18th DAY OF MAY, 2012

 

 

HON’BLE SMT. JUSTICE PRABHA SRIDEVAN    … CHAIRMAN

HON’BLE SHRI V. RAVI                                               … TECHNICAL MEMBER

 

M/s Mahalakshmi Products,

Sandeep Cinema Compound,

Muzzafarnagar (U.P.)                                                     … Applicant

 

(Represented by Advocate: Shri Shravan Kumar Bansal

and Shri Saurabh Kapoor)

Vs.

1. M/s Surinder Engineering Works,

Dhobiana Road,

Bhatinda,        Punjab – 151 001.

 

2.  The Assistant Registrar of Trade Marks,

Baudhik Sampada Bhawan,

Plot No. 32, Sector – 14,

Dwarka, New Delhi – 110 075.                                  …  Respondents

(Represented by Advocate: V.P.Ghiraiya)

 

ORDER (No.125/2012)

 

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

 

          This appeal is against the dismissal of an application which deals with the procedure for the opponent to file his evidence.

 

2.                 The respondent filed an application bearing No. 615914 for registration of the mark VENUS label per se in class 9. It was advertised in the Trade Marks Journal No.1232 dated 01.10.2000. The appellant filed notice of opposition on 26.12.2000. The respondents filed their counter statement on 03.12.2001. This was served to the appellant on 23.09.2002. The appellant took several extensions of time for filing their evidence and extensions were duly granted on 26.12.2002, 27.01.2003, 26.02.2003, 30.04.2003, 30.06.2003, 28.07.2003 and 22.08.2003. Finally on 18.12.2003 they submitted a letter that “the opponents do not wish to file evidence in support of the opposition but want to rely upon the submissions made in the notice of opposition.” The respondent filed their evidence under Rule 51 which was taken on record and the appellant was asked to file evidence, if any, as per Rule 52, by an office letter dated 19.08.2004. It was then that the appellant filed the interlocutory petition in which the impugned order has been passed on 17.09.2004. The Assistant Registrar of Trade Marks held that the appellant could file their evidence in reply but the delay cannot be condoned. Against that the present appeal has been filed.

 

3.                  The learned counsel for the appellant submitted that the impugned order must be set aside in the interest of justice and it is submitted that procedural law should not come in the way of rendering justice and the time limits specified in the rules are not mandatory in nature and delay can be condoned. They relied on the following judgements:

(i)                 2006 (32) PTC 287 (IPAB) Hindustan Level Ltd., vs. Surinder Corporation & Anr.

(ii)               2009 (41) PTC 474 (Del.) Liberty Footwear Company vs. Force Footwear Company & Ors.,

(iii)              AIR 1997 SC 3243 Jaipur Development Authority vs. Smt. Kailashwati Devi

(iv)           2000 PTC 53 S.Z. & Company vs. Modern Bidi Factory

 

4.                 The learned counsel for the respondent submitted that there was nothing wrong with the impugned order. What is being filed is not the evidence in reply but the main evidence under Rule 50 which cannot be permitted. The learned counsel read out the relevant rules and submitted that the rules are very clear in this regard.

 

5.                 We will first refer to the judgements.

 

(i)           In 2006 (32) PTC 287 (supra) appellant was called upon to file evidence in support of opposition. The appellant in that case kept seeking extension of time and submitted that the power of the Registrar under Rule 50 was directory and not mandatory. The order of the Registrar was also cryptic and therefore the matter was remanded.

(ii)         In 2009 (41) PTC 474 (supra) where the Hon’ble Delhi High Court held that the IPAB has its power of following its own procedures and where no time is prescribed, Rule 14 can be invoked.

(iii)        AIR 1997 (SC) 3243. In this the parties sought permission to adduce additional evidence pending trial. This was refused on the ground that the party which had not filed evidence before the trial court cannot do so later. The Hon’ble Supreme Court held that there is no justification to restrict the provisions to Order 41 Rule 27(1) (aa) only to those who have adduced evidence in the trial court.

 

6.                 Section 21 of the Act deals with the opposition to registration. The following steps are spelt out in the said section:

(a) within three months from the date of advertisement or re-advertisement, any person may give his notice of opposition and the opponent has one more month, if allowed by the Registrar, on application made in the prescribed manner and on payment of prescribed fee. Rule 47(6) provides for the manner in which such applications for extension can be made i.e. in TM 44 before the statutory period of three months expires;

 

(b) The Registrar to whom this notice of opposition has been given, serves a copy of the same to the applicant;

 

(c) within two months from the receipt of this notice by the applicant, the applicant shall serve the counter statement. If he does not file the counter statement his application is deemed to have been abandoned. When the applicant sends counter statement, the Registrar serves a copy of it on the opponent and the evidence filed by the opponent and the applicant shall be submitted in the prescribed manner and within the prescribed time to the Registrar.

 

7.                 These, in brief, are the steps leading from the date of advertisement to the date when the Registrar begins his hearing. S.21(4) clearly states, that the evidence which the opponent submits must be in the prescribed manner and within the prescribed time and so it is with the applicant. It is important to remember that the procedures in Trade Marks application have a fixed time structure. This is important because the obtaining of registration, and the application for removal of such registration are all in public interest and in the interest of commerce. The purpose is to protect the commercial health. The Rules in this regard are Rules 52 and 53. Time is clearly specified and therefore, we cannot invoke Rule 51 which applies to extensions of time “not being a time expressly provided in this Act.” Rule 50 deals with evidence in support of opposition. The opponent has two months’ time to file evidence and one month more if the Registrar allows it.

 

8.                 In the present case, counter statement was served on the opponent on 23.09.2002. The evidence under R.50 should have been filed on or before 23.11.2002. The outer limit of extension that the appellant could have obtained is one months more i.e. 23.12.2002. On the other hand he had obtained several extensions which was extended periodically from 26.12.2002 to 22.08.2003. We are not sure if the Registrar has the power to do it in view of the explicit words in the rule. The Rule reads that the opponent has to leave with the Registrar such evidence by way of affidavit “within two months from service on him of a copy of counterstatement or within such period not exceeding one month in the aggregate thereafter.” This does not mean every extension of time can be one month. It should be understood to mean that the total extension of time, if calculated, should not exceed one month. So the maximum time an opponent has for filing his evidence can be three months and not more. The opponent has the option to file such evidence within the period mentioned above or he may intimate to the Registrar that he does not desire to adduce evidence but intends to rely on the facts stated in the notice of opposition.

 

9.                 Sub-rule 2 deals with the abandonment of opposition. That is, if he neither files his evidence within two months or within one month thereafter, nor has he stated in writing that he does not wish to file evidence, then the opposition is deemed to have been abandoned.

 

10.             Sub-rule (3) deals with the application for extension of time of period of one month.

 

11.             If we need any clarification regarding the period by which the two months time for filing evidence can be extended, sub-rule (3) makes it clear. Before the expiry of the period of two months the extension of the period of one month can be applied for in Form TM-56.

 

12.             We  are repeating this section only to make it abundantly clear to the Trade Marks Registry as well as to the practitioners that no extension of time can be taken if in aggregate three months period had lapsed from the date on which counterstatement had been served on the opponent.

 

13.             Once the Rule 50 period is past, we move to Rule 51. Once the applicant has received copies of the affidavit in support of opposition, or intimation that he does not desire to adduce evidence then, “within two months or within such further period not exceeding one month in aggregate thereafter, if allowed by the Registrar, the applicant may leave evidence by way of affidavit and deliver to the opponent copies of the same or he might intimate to the Registrar that he does not desire to adduce any evidence but to rely on the facts stated in the counterstatement, or on the evidence that had already been left by him along with the application.” Sub-rule (2) makes it clear that extension of time cannot be more than one month in aggregate above the statutory period of two months period.

 

14.             Next comes Rule 52, which is evidence in reply. This shall be filed within one month from the date of receipt of copies of the applicant’s affidavit or one month more, if the Registrar allows it and evidence by affidavit in reply. This evidence shall be confined to matters strictly in reply. The next stage is further evidence which can only be by leave of the Registrar who may, at any time, if he thinks fit grant such leave. The present application along with TM-56 has been filed to receive evidence under rule 50. The facts are as follows:

(i)                 on 18.10.2003, the appellant had written a letter stating that they do not wish to file evidence in support of opposition but want to rely only upon the submissions;

(ii)               This is informed to the respondent’s counsel by the Registrar of Trade Marks drawing his attention to rule 51. The corresponding rule in Trade and Merchandise Marks Rule 1959 were different. There, there was no restriction that only one month extension can be given and not more. Therefore, the decisions arising out of the earlier Act gave discretion to the Registrar to extend time. The present Rules came into force in 2003 on 15.09.2003. Thereafter the Registrar could not extend the time beyond the one month period. If we allow the applicant to file his evidence, after rule 51 stage has crossed, it would result in grave miscarriage of justice to the applicant. The applicant is given the option not to file any evidence but to rely on the facts stated in the counterstatement or the evidence already left by him in connection with the application. He may choose to do that because, the opponent had declared that he would not be filing any evidence but would be relying on the facts stated by him in the opposition. Now, by filing a condonation of delay petition if the opponent files the evidence under Rule 50, the applicant would be greatly prejudiced. It matters little whether in this case the applicant had exercised that option or not. We have to construe the rule as it should be applied regardless of the factual position. The Rule is clear and unambiguous. The object of the Rule and the effect of the Rule is further made clear by the words “this evidence shall be confined to matters strictly in reply” in Rule 52 which means that the opponent can not give the primary evidence to prove the facts pleaded in the statement of case. Under Rule 51 in the counterstatement the applicant may have raised a new allegation which goes to the root of the matter which would have a bearing on the opponent’s case which the opponent must rebut.  So he is given the opportunity to plead in reply and to file evidence to prove his pleadings. That is the purport of Rule 52.

(iii)              Nor can we expand the scope of Rule 53 which deals with further evidence. Further evidence itself means evidence in addition to whatever has been already filed. Therefore, if the opponent had filed evidence under Rule 50, or evidence in reply under Rule 52, then the Registrar may give him leave to file further evidence. So is the case with the applicant. Bur further evidence is not an opportunity to give the parties who have not filed any evidence earlier.

 

15.             The law in this regard has already been laid down by the Hon’ble Delhi High Court in 2007 (35) PTC 388 (Del.) Surinder Corporation, USA vs. Hindustan Lever Limited and another. As regards the effect of S.21 (4), the learned Judge held thus:

“6…

The crucial expressions used in the aforesaid provision are “in the prescribed manner” and “within the prescribed time”. It, therefore, becomes necessary to examine as to what is meant by the word “prescribed”. Section 2(1) (s) defines “prescribed” to mean prescribed by rules made under the Act. Section 157 of the 1999 Act relates to the powers of the Central Government to make rules. Sub-section (2) provides the specific matters for which rules may be made. Clause (vii) of sub-section (2) specifically refers to submissions of evidence and the time there for under sub-section (4) of Section 21. It is clear that the Central Government had power to make rules with regard to inter alia, submissions of evidence and the time therefore under sub-section (4) of Section 21.”

 

16.     Then reading rule 50, the learned judge held in para 7 as follows:

 

“7. Reading Rule 50, it is clear that the evidence by way of affidavit in support of an opposition to the registration of a trade mark has to be filed within two months of the service of a copy of the counter-statement on the opponent. This period of two months is further extendable by a period of one month in the aggregate thereafter as the Registrar may on request allow. Clearly, in the first instance, the evidence affidavit has to be filed within two months of the receipt of a copy of the counter-statement. The Registrar may extend this period by a further one month in the aggregate if a request for the same is made in time. Sub-rule (2) of Rule 50 makes it clear that if an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition. It is also interesting to note that sub-rule (3) refers to the application for extension of the period of one month mentioned in sub-rule (1). It is also stipulated that such an application has to be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein. So, it is clear that a strict regimen has been prescribed for the filing of evidence by way of affidavit in support of an opposition. A plain reading of the provisions makes it abundantly clear that the evidence has to be filed within two months in the first instance and, if an appropriate application for extension of time is made before the expiry of the period of two months and if such application is allowed by the Registrar, then latest by a further month. In other words, under no circumstances can the evidence affidavit be filed beyond the maximum three months prescribed under the said rule. In case the opponent has not taken steps within the prescribed time, then there is no option left with the Registrar but to deem that the opponent has abandoned his opposition…

 

 

There is no doubt that Rule of the 2002 Rules has been validly framed in exercise of the Central Government’s rule making powers under Section 157 (1) in general and Section 157 (2) (vii) in particular. In this background, it can be safely stated that the time and manner prescribed in Rule 50 of the 2002 Rules should be treated as having been prescribed by the 1999 Act itself.

 

9. The decisions referred to in the cases of Delta Impex (supra), Pranam Enterprises (supra) and Popular Construction (supra) all clearly indicate that where the statute itself prescribes a maximum condonable period, then it would not be open to the authorities under that statute to extend the period for doing an act beyond the prescribed maximum condonable period. It is, therefore, clear that the Registrar does not have any power to extend the time for filing the evidence affidavit beyond the maximum period of one month after the initial period of two months.”

 

17.     The learned Judge has also dealt with rule 105 and S.131 in the foregoing words.

“…The said rule stipulates that an application for extension of time under Section 131 of the 1999 Act has to be made in Form TM-56. It may be remembered that this is the same Form TM-56 in which an application for extension of time is required to be made under Rule 50 (3). However, the extension of time permissible under Rule 105 is not applicable to the following cases:

i) where time is expressly provided in the Act ; or

ii) where time is prescribed by Rule 79 or by sub-rule (4) of Rule 80; or

iii) where time for the extension of which provision is made in the rules.

Therefore, in cases where time is expressly provided for doing of an act under the 1999 Act or where provision for extension of time for doing such act is made in the rules itself, then Rule 105 would have no applicability…In any event, Rule 50 (1) specifically makes provision for the extension of time for filing the evidence affidavit. That being the case, Rule 105 cannot have any application…An exception has been carved out in Rule 105 with regard to provisions made in the Rules for extension of time. But, no exception has been made in Rule 50. Therefore, Rule 105 would have no application insofar as the filing of an evidence affidavit in support of an opposition beyond the prescribed time is concerned. It is only Rule 50 which would apply. In fact, sub-rule (2) of Rule 105 itself circumscribes the power of the Registrar to extend time by using the expression “subject to the provisions of the rules where a maximum time limit is prescribed”. Rule 50 (1) prescribes a maximum time limit. Therefore, even under Rule 105, the Registrar cannot extend time beyond the prescribed maximum time limit”.

18.      The learned judge also dealt with the Full Bench judgement in Hastimal Jain and had observed that the words unless the Registrar otherwise directs are missing in the present rule 52 and that therefore,

“The new Rule 50 (2) simply and plainly states that if an opponent takes no action under sub-rule (1) within the time prescribed therein, he shall be deemed to have abandoned his opposition….

            … Whereas Rule 50 of the 2002 Rules specifically provides for extension of time not exceeding one month in the aggregate. This introduces a clear stipulation that the Registrar’s powers to grant extension of time are limited to one month in the aggregate beyond the two months prescribed under the said Rule. This limitation was not there in the earlier Rule, but it is definitely there in Rule 50 of the 2002 Rules. The second instance is that the words “unless the Registrar directs” have been consciously deleted from sub-rule (2) of Rule 53 in its new incarnation in Rule 50(2). It is obvious that the legislature wanted to make the provision mandatory and did not want to give any discretion to the Registrar in this connection. The object is apparent that the delays be cut down in deciding the application for registration of a trade mark…

 

 

17. Lastly, I would like to observe that the Intellectual Property Appellate Board in arriving at the conclusion that it did was under the impression that the Registrar had discretion in the matter and was exercising a discretionary power. This premise is not correct. The provisions of Rule 50 (2) are mandatory and the Registrar has no discretion. If the evidence affidavit has not been filed within the time prescribed, the opposition would have to be deemed to have been abandoned. The Registrar has also no discretion in extending the time beyond the maximum period of one month prescribed under Rule 50(1).”

 

19.             It is against the judgement cited in 2006 (32) PTC 287 (IPAB) that this order has been passed. Therefore, 2006 (32) PTC 287 (IPAB) cited has been over ruled.

 

20.             In the present case the order shows that the Assistant Registrar had disallowed the TM-56 holding that the opponent may file their evidence in reply under Rule 52.

 

21.             The order is correct. If the appellant wants to file any evidence in reply, they may do so subject to any objection that may be raised by the respondents herein that the evidence is not strictly in reply but the main evidence itself. Therefore, the evidence, if filed by the appellant, shall be strictly considered and only that evidence which is strictly in reply may be received as such and nothing else. The appeal is, therefore, dismissed with costs of Rs.2,500/-.

 

 

 

(V. RAVI)                                                                                  (JUSTICE PRABHA SRIDEVAN)

TECHNICAL MEMBER                                                       CHAIRMAN

 

 

 

 

 

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

 

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