(Circuit Bench sitting at Delhi)
(No.114/2011)
Prabha Sridevan, Chairman:
1. The appellants in ORA/143/2006/TM/DEL have filed M.P.No.57/2008 and M.P.57/2007 has been filed by the respondents in ORA/ 143/2006/TM/DEL. The parties will be referred to as described in ORA/ 143/2006/TM/DEL.
2. We must narrate the background of this case in brief since these two M.P.s have been sent back for consideration on remand. This application for rectification has been filed for removal of trade mark registration No. 11988540 âMILTON in class 11. The Form-1 as originally filed commences with the words âWe, MILTON Plastics Limited, a company incorporated â¦.. hereby apply that the entry in the Register in respect of the above mentioned trade mark may be cancelled and removed from the Register of Trademarks in the following mannerâ¦â. The Form-1 proceeded to spell out the grounds on which the removal was sought for. This was accompanied by the statement of case where the cause title showed six petitioners in the place of the sole petitioner mentioned in Form-1. The first para of the statement of case referred to the petitioner Milton Plastics and gave the registered office of the said petitioner but thereafter, the first para referred to the petition being signed and verified by one of the Directors, petitioner No. 6 which referred to M/s Milton Plastics (the petitioner in Form-1). The statement of case referred to petitioner No. 1 to 5 setting up a partnership firm under the name of Milton Plastics in 1971 and of the Memorandum of Understanding of 1988 signed by the petitioners No. 1 to 5 as individuals and petitioner No. 6 by which petitioners 1 to 5 withdrew the proprietary right and ownership of the trade mark from the partnership firm and gave it to themselves in their individual capacity. The statement of case also refers to the grant of a licence by the petitioners 1 to 5 to the partnership firm mentioned above. The statement of case also states that in 1992, the partnership firm was converted into a limited company Milton Plastics Limited. But for the purpose of deciding these petitions it is not necessary to refer to the other averments in the statement of case.
3. The respondent filed M.P.No.57/2007 for a direction that the statement of case does not form part of the case file of the impugned rectification application. The petitioner filed M.P.57/2008 to amend the Form No.1. The amendment sought for was to amend the first para of Form-1 bringing in the petitioners mentioned in the statement of case as originally filed as part of the amended Form-1 and the first para of the statement of case was also amended to the effect that the petitioners No. 1 to 5 are the individuals who are the joint proprietors and owners of the trade mark. By a common order, this Board allowed M.P.No.57/2007 and dismissed M.P.No.57/2008 on 01.05.2009. In view of the aforesaid orders ORA 143/2006 was also dismissed as not maintainable. In this order the Intellectual Property Appellate Board (IPAB) held that apart from the discrepancies in Form No.1 when compared with the statement of case filed by the petitioners there could not be more than one applicant in an application for rectification and that âin such matters only one petitioner can be a person aggrievedâ. It was held that the licencee becoming a co-applicant does not arise and the registered proprietor should protect his statutory right independently. Against this order the applicant herein filed W.P.No.10633 of 2009 and the order passed by the Honble Delhi High Court is reported in 2010 (42) PTC 456 Dinesh Chandra Vaghani and Ors. Vs. Union of India and Ors. . The Honble Delhi High Court held that:
â17. There is nothing in the TMAA Rules or the IPAB Procedure Rules to indicate that an application for rectification can be filed only by one personâ¦
18. Consequently, this Court is unable to concur with the view expressed by the IPAB that an application for rectification can be filed only by an individual applicant and that more than one applicant cannot join in the making of such an application for rectificationâ¦.
19. The above position in the law does not imply that every person who has joined in an application for registration or rectification is, by that fact alone, entitled to be granted registration or the prayer for rectification. It is for the individuals who have joined in the application to satisfy the IPAB in that regard. All that this Court has explained is that the mere fact that more than one person has joined in making an application for rectification will not by itself constitute a ground for rejection of such application.
20. Turning to the facts of represent case, the sequence of events shows that the registration was initially granted to Petitioners 1 to 5 âtrading as MPâ. Thereafter, under the MoU, the proprietorship in the trade mark was transferred from the firm MP to the five individual partners i.e. Petitioners 1 to 5 who in turn gave a licence to the firm MP. Conseuqnet upon the MoU dated 22nd January 1988 1 to 5 as subsequent proprietors of the trade mark in question. According to the Petitioners no deision on Form TM-23 ha sbeen taken by theRegistrar of Trade Marks. Learned counsel for the Respondents points out that if the Register of Trade Mark has not yet been corrected to note the transfer of the proprietorship in the mark from the firm MP to the individual partners i.e. Petitioners 1 to 5, then the locus of the Petitioners 1 to 5 or even the Petitioner No. 6 MPL to seek rectification would itself be in doubt.
21. This Court does not wish to adjudicate on this question since in the considered view of this Court it is now for the IPAB to take re-examine the matter. With this Court not agreeing with the IPAB on the reasons given by it in the impugned order for rejecting the rectification application, it becomes necessary for the IPAB to once again consider the application M.P.No.57 of 2007 and M.P.No.57 of 2008 as well as the Original Rectification Application ORA No. 143/06/TM/DEL afresh. The IPAB will take into account the decision, if any, by the Registrar of Trade Marks on Form TM-23 submitted by Petitioners 1 to 5. If no decision has been taken as yet, a direction is issued to the Registrar of Trade Marks to take a decision thereon within a period of four weeks from today. The consequence of the decision of the Registrar of Trade Marks on TM-23 will be for the IPAB to consider. Further the IPAB will also consider the effect of the conversion of the firm M/s M.P. into the trade mark to M/s MPL. The documents placed on record by the Petitioners in the present proceedings, if not already produced before the IPAB, are permitted to be produced by it before the IPAB, are permitted to be produced by it before the IPAB for that purpose.
â¦
23.This Court is, therefore, not deciding the merits of either MP No. 57 of 2007 or MP No. 57 of 2008. It is for the IPAB to decide both applications afresh. Consequently, the impugned order is set aside. The two applications, MP No. 57 of 2007 filed by Respondents 3 and 4 and MP No.57 of 2008 filed by the Petitioners as well as the Original Rectification Application ORA No. 143/06/TM/DEL shall stand revived and will be listed not before the IPAB on 10th March 2010.â
It is thus that this matter is again before us.
4. The learned counsel appearing for the respondents (petitioners in M.P.57/2007) submitted that the Form-1 as originally filed was clear and there was no ambiguity in the fact that there was only one petitioner. The fact that the statement of case referred to the same petitioner as petitioner No. 6 and included five more petitioners cannot really change the original case as found in Form-1. When the respondent pointed out the discrepancies and prayed for a direction that the statement of case shall not form part of the case file; they had filed this petition in M.P.No.57/2008. According to the learned counsel five other petitioners will be allowed to be included without any justification if the amendments were allowed. The learned counsel also submitted that in the decision referred to above the Honble Delhi High Court had clearly stated that the IPAB should also consider wherever there are more than one applicant containing in an application for rectification, whether additional fees should be directed to be paid. The learned counsel submitted that this issue must also be tested in the present case whether the petitioners 1 to 5 who are now sought to be included would be required to pay separate fees.
5. The learned counsel read out the format of Form No. 1 and submitted that it clearly speaks of stating the full name, address and nationality and when the petitioners have not done so, they cannot be allowed to now introduce by way of rectifying the defect by an amendment to the original case. The learned counsel also submitted that in Form No.1 the signatory describes himself as Director of Milton Plastics and not as having signed it both as the Director of Milton Plastics and also in his individual capacity. The learned counsel submitted that all these would clearly show that that the amendment introduces really a new case and if the amendment were to be allowed the respondent should have an opportunity to file an amended counter statement. The learned counsel referred to AIR 2002 SC 1003 Gurdial Singh and others v. Raj Kumar Aneja and others where the Honble Supreme Court has given detailed directions as to how the amendment should be effected and deprecated the practice adopted in some of the lower courts and clearly indicated that it would be conducive to the ends of justice âif by a bare look the court would be able to know the shift in stand between the original pleading and the amended pleadingâ. The learned counsel also furnished a Xerox copy of the orders of the Honble Delhi High Court which deals with amendment of pleadings under Order 6 Rule 17.
6. The learned counsel for respondent submitted that the procedure adopted by the petitioner was a clear abuse of the process of law. The learned counsel submitted that, therefore, in as much as there is a great variance between the statement of case and Form No. 1 as originally filed, the M.P.No.57/2007 must be allowed and M.P.No.57/2008 be dismissed. But if for any reason M.P.No.57/2008 is accepted time must be granted to file amended pleadings.
7. The learned counsel for the petitioners (respondent in M.P.No.57/2007) submitted that there is absolutely no variance in the case but admittedly there was a discrepancy and that was sought to be corrected by a petition that is now being filed. The learned counsel submitted that the Form No. 1 requires that it be filed in triplicate along with the statement of case in triplicate. It does not lie in the mouth of the counsel for the respondent to state that he can separate the statement of case from Form No.1 and merely look at Form No. 1. The learned counsel submitted that all these years it had always been open to the respondent to file âwithout prejudiceâ an amendment to his original counter-statement. The learned counsel also submitted that the courts have always taken liberal view with regard to prayers for amendment and relied on the following decisions:
8. AIR 1964 SC 818 Kurapati Venkata Mallayya and anr. Vs. Thondepu Ramaswami and Co. In this case, the Receiver was appointed by the court to take charge of the property of a firm and when a suit had to be filed by the Firm, the Receiver had filed it in his own name and thereafter an amendment was sought for since it was contended that the suit was untenable because the Receiver had no right to institute a suit in his own name. Then the plaint was amended with the leave of the court describing the plaintiff as a firm represented by the receiver in the place of the original cause title. Thereafter the defendant filed an amended written statement.
9. The learned counsel referred it to the extent that when it is the case of mere misdescription, plaint can be amended.
10. The next decision referred was AIR 1957 SC 363 Pirgonda Hongonda Patil v. Kalgonda Shidgonda Patil and Ors. . Here, an application was filed by the plaintiff adding further particulars of the case.It was contended that the suit on the amended plaint was barred by limitation when the said amendment was filed. The Trial Court rejected the application. The High Court allowed it. Against that the matter went to the Honble Supreme Court. The Honble Supreme Court held that in that case the amendments do not really introduce a new case and the application filed by the appellant himself established that he was not taken by surprise, nor ought he to have to meet any new claim set up for the first time after the expiry of the period of limitation.
11. In para 21 of 2010 42 PTC 462 Dinesh Chandra Vaghani and Ors. Vs. Union of India and Ors, the direction given was âIPAB will take into account the decision if any, by the Registrar of Trade Marks on Form TM-23 submitted by petitioners 1 to 5.â The direction was given by the High Court to the Registrar to take a decision. In spite of a specific direction by the Honble Delhi High Court, the Registrar of Trade Mark has not taken a decision for reasons we are unable to understand. But this decision only says that we should take into account the decision, if any. So it is not necessary for us to wait for the decision. We were also required to decide both the applications afresh.
12. In the present case, we will first deal with application No. 57/2008. We have gone through Form No. 1. We have also read the statement of case. If the respondent had read the statement of case they would have known exactly what the stand of the applicants is and on what grounds they seek the removal of the trade mark.
13. The amendment does not change the grounds on which they seek removal. In the statement of case they have referred to the manner in which, according to them, the individuals had formed the partnership and the individuals had transferred the property of the partnership unto themselves and that the firm thereafter became a limited company. As regards the grounds, no amendment has been sought for. Therefore as held by the Honble Supreme Court in AIR 1957 SC 363 the respondent most certainly has not been taken by surprise unless he had deliberately chosen not to look at the statement of the case till today. If so they have only themselves to blame. It was there for them to see because the statement of case accompanied Form No.1. It is also well settled that merely by allowing the amendment the Court does not decide the merits of the case. It merely allows the amendment claimed. Then when the matter is heard on merits the person who amended his pleadings will still have to substantiate his case. So at this stage it is not necessary for us to examine whether all the facts stated by them in the statement of case are correct and whether there was indeed a firm and whether from the firm the property in the trade mark was transferred to the individual. They must be proved by acceptable evidence. In this case we are satisfied that the amendment does not introduce a new case. Therefore, following the judgements produced before us and by a series of decisions of both the Honble Supreme Court and Honble High Courts we allow M.P.57/2008.
14. We are grateful to the counsel for the respondent for pointing out how the original records should show the amended pleadings and we direct the Registry of the IPAB to indicate the amendment in red ink so that the difference between the original Form 1 and statement of case and amended Form 1 and statement of case is apparent by just a bare look.
15. As regards M.P.No.57/2007 the case of the respondent is that the statement of case cannot contain different and new grounds from what has been included in the statutory form. It is also their case that in fact there is no provision for filing the counter-statement. We are unable to understand this objection. Anyway, according to the respondents, the grounds of filing application for revocation must be included on Form No.1 alone. Ground (A) of Form No. 1 refers to violation of the provisions of sections 9(2) (a) and 11(1) of the Trade Marks Act, 1999; Ground (B) refers to violation of section 11 (2); Ground (C) refers to violation of section 11 (3) and Ground (D) to section 11 (10). The Form No. 1 thereafter refers to the civil suit filed by the respondents which according to them was a counter blast to the legal notice. So the two suits filed by one against another C.S. 1580/2002 and C.S. 1216/2003 are referred to. The statement of case gives the facts on which the above grounds are based and para 18 refers to the provisions of section 9(2) (a), 11 (1), 11 (2), 11(3), 11(10). So we fail to understand where the surprise came from or what is the abuse of the process of law.
16. In Form No. 1 the person seeking the revocation is only required to state the legal grounds on which he or they seek the removal of trade mark and it shall be accompanied by the statement of case because bare grounds are not enough. They have to set out the facts which will be proved by evidence and this prayer for eschewal of statement of case is clearly unsustainable. This is an original proceeding and the petitioner seeking removal or rectification will have to set out facts and the law based on which he seeks rectification and the evidence on which he proves the facts set out. He cannot do otherwise. Merely because there was a mis-description in the pleadings, the respondent have come up with what to us seems like a totally unacceptable prayer. The respondent clearly means to protract the proceeding. How can a Court deal with the grounds for rectification without the facts which form the basis? Therefore, this petition M.P.No.57/2007 is dismissed with cost of Rs.25,000/-.
17. The learned counsel for the respondent prays for time to file an amended counter-statement. We really think that this request is unjustified because if the counter statement as originally filed had met the various grounds on which rectification was sought for it, should have also dealt with the facts based on which grounds were raised. But the counsel for the respondent pleads that an order was passed by the IPAB in their favour and it only thereafter that order was set aside by the Honble Delhi High Court and therefore there was no occasion for him to file amended counter-statement. We accept this though with some reluctance. Our reluctance stems from the fact that this adjudicating body has been set up with the sole purpose of disposing intellectual property disputes speedily. And in fact the Honble Supreme Court had given a direction to all the Civil Courts dealing with the intellectual property disputes to hear them and decide them expeditiously. We think the direction applies to us double fold. But unfortunately we find M.P.s are filed for the slightest reasons, adjournments are sought for, and the disputes are protracted as if they are civil suits. In fact, all provisions of the CPC do not bind us and we are only required to observe the principles of natural justice and the Act specifies that we have the power of Civil Courts in respect of the matters mentioned in section 92(2).
18. In the result M.P.No.57/2007 is dismissed with costs as above. M.P.No.57/2008 is allowed.
19. The respondents are granted time till 06.09.2011 to file the amended counter-statement. We make it clear that we shall be following para 19 of AIR 2002 SC 1003 which reads as follows:
â19. Some of the High Courts permit, as a matter of practice, an additional pleading, by way of response to the amendment made in the pleadings by opposite party, being filed with the leave of the Court. Where it is permissible to do so, care has to be taken to see that the additional pleading is confined to an answer to the amendment made by the opposite party and is not misused for the purpose of setting up altogether new pleas springing a surprise on the opposite party and the Court. A reference to Order VI Rule 7 of the CPC is apposite which provides that no pleading shall, except by way of amendment, raise any new ground of claim or contain any allegation of fact inconsistent with the previous pleadings of the party pleading the same.â
The respondent shall strictly confine themselves to answer to the amendment and cannot set up altogether the new case which will require another reply and we will be saddled with endless series of pleadings. Post the matter on 06.09.2011.