(Circuit Bench Sitting at Ahmedabad)
ORDER (No.205/2011)
Prabha Sridevan, Chairman:
1. These two appeals have been filed against the order treating the opposition as abandoned and ordering registration of the marks Nos. 1641653 (Dandi Salt) and 1641655 both in class 30. The appellant is aggrieved that he had no notice of the various dates of hearing and the abandonment order was arbitrary.
2. According to the learned counsel for the appellant, the appellant had filed the notice of opposition. Thereafter the appellant did not receive the notice to file affidavit in support of opposition. It is only when they saw in the website that registration had been granted they requested the Respondent No. 2 to communicate the details of the proceedings and on 21.07.2010 they received the documents including the impugned order dated 17.05.2010 and this communication itself showed that the letter was unserved. Thereafter they filed a writ petition before the Honble Gujarat High Court which passed an order stating that the appellants remedy did not lie in moving the High Court but the appellant should have gone back to the Registrar or filed an appeal before the Intellectual Property Appellate Board. Thereafter he had filed this appeal.
3. According to the learned counsel, this appeal has been filed within three months from the date on which the order was communicated. The learned counsel submitted that all the communications of the appellant bore the business address as well as an alternate address, and the appellant and the respondent had been fighting in various fora, therefore, the address to which communications had to be sent was very well known to the respondent. He submitted that only after the order was passed the appellant realised that the respondent had filed an interlocutory application to take up the matter and pass orders. This was filed within the time given to the opponent to file his notice of opposition. The learned counsel submitted that the Trade Mark Rules provide for two months time to file the opposition and the Registrar has the power to extend this time by one more month. Even before this time had lapsed, the respondent with unseemly haste had moved the application and for reasons un-known the Registrar had also passed the order. The learned counsel also submitted that the date of hearing namely 03.05.2010 was fixed only for hearing the interlocutory application. On that day the appellant was not present because he had no notice and the matter was adjourned to 14.05.2010 which was also not known to the appellant. According to the learned counsel on the adjourned date, the Registrar could have only heard the interlocutory petition and not passed the main order. The learned counsel also submitted that he was given to understand that in another matter between Dandi Salt and the Respondent herein, an order had been passed by this Board. He submitted that the appellant is the assignee from Kunwar Ajay Foods Pvt. Ltd., who was the principal respondent in the writ petition before the Honble Andhra Pradesh High Court where certain important directions had been given. The learned counsel also submitted that several oppositions had been pending which was known to the Registrar since the impugned order states that the registration is ordered subject to the outcome of the other oppositions. He submitted that it is not possible to understand why there was a hurry in issuing the registration certificate on the very same day, which is unheard of in the history of the Trade Marks Registry. He submitted that stay must be granted.
4. Before the learned Senior Counsel appearing for the respondent commenced his submissions we asked him why we should not grant a stay since in the connected matter that was heard on 17.11.2011 (ORA/239and240/2010/TM/AMD) we were about to grant stay when the same respondent came forward to give an undertaking. We also asked him that when it is apparent from the order that the Registrar had not taken note of the directions issued by the Andhra Pradesh High Court in the review petition why stay should not be granted. We further asked him why we should not grant stay when it was ex-facie evident that the Registrar did not even bother to examine the outcome of the other opposition and had hastily issued registration certificate. The learned Senior Counsel submitted that the issue of public interest which will be relevant in the first two questions posed by us will not weigh with us here since this is a case where upon statutory abandonment taking place, registration had automatically followed. He submitted that the appeal itself is not maintainable without an application for condonation of delay and relied on a judgment of the Honble Gujarat High Court [MANU/GJ/1077/2011 Paschim Gujarat Vij Company Ltd. vs. Kemchand Nathabhai Gadhavi]. He submitted that the records would show that notices were served and therefore the stand of the appellant that he came to know of the impugned order only on 21.07.2010 is unacceptable. He submitted that the time granted under Rule 50(2) is mandatory as per the new Act and produced a decision of the Honble Delhi High Court [2007 (o) AIJ-DL 1334029 Surinder Corporation, USA vs Hindustan Lever Limited] in this regard. He submitted that the appeal is not maintainable in any event and the remedy was to go before the Registrar for a review of the order. He submitted that Rule 15 should be read along with Rule 50 (2) and it was not necessary for the applicant to file any documents to show that he is entitled to registration. He also submitted that the respondent had given public notice on 24.05.2010 informing the public of the grant of registration and the appellant would surely have seen it. He said that this was not a fit case for grant of stay.
5. Both the counsel argued at length almost as if they had made their submissions on the main matter, but we were only hearing the application for stay. So we do not want to go into the details with regard to all the materials on record since that would pre-empt our decision in the main case. We will only examine whether on a prima-facie consideration the appellant is entitled to an order of stay.
6. The respondents case is that the appeal is time barred. When the appeal was filed on 21.10.2010, the Registry raised this issue. The appellant filed the communication dated 21.07.2010 from the Trade Marks Registry enclosing the unserved order dated 17.05.2010. Thereafter he filed the Writ Petition before the Honble High Court which was disposed on 06.09.2010. Even if the pendency before the High Court is not excluded the appellant is in time. The applicant bonafide filed a Writ since they were not sure if the impugned order was appealable. The Registry was satisfied that the appeal was in time. The Honble Gujarat High Court gave the appellant the option to move the Registrar of Trade Marks or this Board. The appellant moved the Board. The appellant has neither delayed the matter nor chosen the wrong forum. The appeal is maintainable.
7. Here the order passed in ORA/239 and 240/2010/TM/AMD on 17.11.2010 is relevant. A Public Interest litigation was filed to desist granting registration of any mark bearing the word âDandi in connection with salt. In fact even the impugned order indirectly makes a reference to it where it is mentioned that the advertisement was cancelled in view of the order/direction of the Honble Andhra Pradesh High Court. The writ was ordered as prayed for. The matter went to the Honble Supreme Court. Then the Honble Supreme Court granted leave to the aggrieved party to file a review. In the review petition originally status-quo was granted. But alleging violation of the status-quo order a contempt petition was filed against the statutory authorities as well as the respondent herein. The Court subsequently ordered on 19.06.2009 that the applications for registration (filed by the respondent herein) may proceed upto the point of registration but no final decision shall be taken in pursuance of the applications No. 1641653 and 1641655. This order is still in force. Thereafter the main review petition was taken up and orders were passed on 08.02.2010. The following para in the said order is relevant:
âWhile the review petitioner in W.P.No.31333 of 2008 is a private limited company using âDandi as its name, the review petitioner in W.P.M.P. No.15669 of 2009 seeks a trade mark for use of the name âDandi on its package. As the review petitioners have filed complaints/objections both before the Company Law Board, Mumbai with regards use of the name âDandi mark âDandi before the Registrar of trade Marks, Ahmedabad, and since Section 4(2) enables the said authority, if he has any doubt in this regard, to refer such questions to Central Government for its decisions, we consider it appropriate to direct the said authorities to examine, whether or not such use of the name âDandi is in violation of Sections 3 and 4 read with Entries 7 and 9-A of the Schedule to Act 12 of 1950, and pass appropriate orders in accordance with law. In as much as the pleadings in the Writ Petition and the Review W.P.M.P.s are wholly insufficient for examination of the question, whether a purposive construction would require use of the name âDandi to be construed as a colourable imitation of the name of pictorial representation of Mahatma Gandhi or as suggesting or calculated to suggest the patronage of the Government of India or the Government of a State or as being connected with any local authority or Corporation or a body constituted by the Government under any law for the time being in force, we do not propose to examine this contention in these review proceedings.â
The review petitioner in W.P.M.P. No.15669 of 2009 is none other than the respondent No. 1 herein.
8. The respondent seems to have persuaded the Registrar that in view of the directions above, the Registrar was no longer barred from giving the final decision. Therefore, the Registrar cancelled the withdrawal of the advertisement. The Respondent No. 2 would have had knowledge since notice had been ordered The order in the contempt case was passed is extracted below:
âRespondent no. 4 and the subordinates are permitted to proceed further with the proceedings initiated under letters dated 31st October, 2008 in Application No.s. 1641653 and 1641655 in Class 39 in the name of Indo Brine Industries Ltd., and shall not act in pursuance of show cause notice dated 6th May, 2009 addressed to M/s Jasani and Company. It is, however, directed that no final decision shall be taken by respondent No. 4 in pursuance of the applications referred to hereinabove.â
In spite of an order passed by the Division Bench directing the Respondent no. 2 not to pass final orders, the respondent No. 2 has proceeded to grant registration. Therefore, the registration deserves to be stayed on this ground alone. For the above reason we were about to grant stay in ORA/239 and 240/2010/TM/AMD. The respondent agreed to file an undertaking which that applicant accepted. The same reasons prevail upon us to grant stay.
9. The extract from the judgement of the Honble Andhra Pradesh High Court in the Review Petition clearly says what the Registrar should bear in mind before granting registration. It has even directed the Registrar to refer the question to the Central Government if need be. The learned Senior Counsel submitted that the Registrar need not consider this at this stage, and that after registration is granted, if the mark is not registrable rectification can be filed. We do not think so. S.9 forbids registration, if the mark hurts the religious sensibilities of a class or section, or if it contains scandalous or obscene matter or if it is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. This can not be understood to mean that the Registrar can grant registration to something which hurts religious sensibilities or is obscene leaving it free for some public spirited individual to file a rectification petition. S.9 (2) is categorical. The registration is prohibited if the conditions of S.9(2) are satisfied. The learned Senior Counsel submitted that the directions of the Honble Andhra Pradesh High Court are only to the authorities under the Emblems Act. The authorities under the Emblems Act as per S.2(g) is any authority which can register a trade mark or designs or grant a patent. The respondent No. 1 knew about this direction of the Honble Andhra Pradesh High Court and yet granted registration merely because the opposition was abandoned. The power granted to the Registrar is a quasi-judicial power and there must be application of mind. Prima facie we find there is no application of mind, and for this reason too we must grant stay.
10. The order clearly states that Registration is subject to the outcome of other decision. If so, we are unable to understand how the certificate of registration was granted on the same day. On this ground too the appellant will be entitled to stay.
11. We further take into account the appellants grievance that many of the notices were not served on him. Communication under which the unserved cover containing the impugned order sent to the appellant shows that several communications namely, letter No. OA-10720 dated 24.02.2010, letter No.OB 9623 dated 30.03.2010, letter No. O.129 with envelop consisting receipt No. EMS Speed Post No. EG 02684747 3IN, letter No. 561 dated 06.05.2010 with envelop consisting receipt No. EMS Speed Post No. EG 02325732 2IN and letter No.1588 dated 17.05.2010 were unserved and this appellant had been fighting the grant of registration at every juncture. Therefore, we have to accept the contention of the appellant at this stage that had they been served, they would not have allowed the abandonment to take place.
12. There are other questions in this matter which arises for consideration namely:
a. whether on abandonment the Registrar without considering the grounds for registration should automatically order registration?
b. whether section 132 would apply, even to an opponent whose opposition is abandoned?
c. Whether the documents produced at the pre-advertisement stage should not be marked in evidence at the time of registration?
13. We heard the counsel on these issues also but we are not dealing with them since this is only an application for stay. For all the reasons explained above we are prima-facie satisfied that the impugned order deserves to be stayed pending disposal of the O.A.s M.P. No. 8/2011 and 10/2011 are ordered accordingly. M.P.No.9/2011 and 11/2011 filed for early hearing stand closed. No order as to costs.