ORDER No.76/2013
Prabha Sridevan, Chairman:
This appeal is filed against the order treating the TM (6) filed on 8th March 2006 as time barred and the application in class 42 as deemed to have been abandoned. The appellant applied for the mark âDARJEELING LOUNGEâ and it was advertised in the journal on 07.02.2005. Notice of opposition was filed by the respondents herein which was served on the applicant. The appellant filed their counter statement on 08.03.2006. The deputy Registrar held that since the notice of opposition was served on the applicants on 22.12.2005, the counter statement was filed beyond the statutory period.
2. The impugned order also shows that notice was given vide letter late 01.08.2008, to show cause why this time-barred counter statement should be taken on record. But there was no reply, and hearing was fixed on 11.12.2008. It is seen from the impugned order that no one appeared on behalf of the applicants to show cause why there was a delay in filing the counter statement. The respondent was represented by a counsel. After hearing the respondent and the pleadings, the impugned order was passed.
3. The learned counsel appearing for the appellant submitted that the impugned order is arbitrary and there is no application of mind. According to the learned counsel, in TM(6) it was specifically stated that the notice of opposition was received only on 10.01.2006. And if the time is calculated from 10th January, the counter statement was within time. The learned counsel submitted that the notice of opposition was sent on 22.12.2005 by the Trade Mark Registry. It means that at least two or three days would have elapsed from the date of despatch. And therefore, Impugned order stating that the notice was received on 22.12.2005 is clearly erroneous. The learned Counsel also submitted that since it was the time of Christmas and New Year, the postal delay cannot be ruled out.
4. The learned Counsel cited several judgments to show how the issue must be decided in such cases.
1. âHedges and Butler Limited Vs Mohan Meakin Limited and Othersâ â 1999 PTC(19)605
2. âJ. Kohli and Anr. Vs Ram Bhagwat and Ors.â _ 2003(27)PTC 161 (Del)
3. âN. Balakrishnan Vs M. Krishnamurthyâ â (1998) 7 Supreme Court Cases 123
4. âTea Board, India Vs ITC Limited â â GA No.3137 of 2010 , CS No. 250 of 2010
5. The learned Counsel for the respondent submitted that the application should be rejected at the threshold since Darjeeling is a mark that belongs to the respondent. It is geographical indication. The learned Counsel also submitted that a person who comes to Court with delay must show that his application is in time.
6. The matter was argued at length. But the issue is really the Counter Statement cited was filed on time or not. It is clear from the records that the Notice of Opposition was dispatched to the appellant with a copy marked to the respondent on 22.12.2005. Therefore, the Impugned Order is erroneous in its conclusion that the Notice of Opposition was served on the appellant on 22.12.2005. The TM(6) clearly stated that âWe ITC Limited â¦â¦â¦â¦.hereby give notice that the following grounds of which we rely for our application against which opposition has been received on 10.01.2006, by our attorneys.â This was received by the Registry on 08.03.2006. This is within time if the averment that the notice of opposition was received on 10.01.2006, is correct.
7. The impugned order states that the applicant has not disclosed the date of receipt of the notice of opposition and therefore, the Registrar presumed that there is a delay in filing the counter statement. According to the learned counsel for the appellant, the appellant did not receive the notice of hearing. If they had received they would have definitely be present for the hearing, since they were interested in prosecuting their application on 01.08.2008.
8. The Trade Mark Registry had sent TOP 1558 which called upon the appellant to show cause why the Counter statement should be taken on record. This was sent to the party i.e the appellant herein as well as their counsel at No.10 Hailey Road, New Delhi. This was received by the appellant on 13.08.2008. They wrote to the registry that the letter dated 01.08.2008 was received and that the notice of opposition was received in the office on 10.01.2006 and therefore the TM(6 )is on time. Therefore it was requested that the objection must be waived. On 4.11.2008, the notice of hearing for 11.12.2008 was intimated to the counsel on both sides. According to the appellant, this was not received by them and that is why they were absent.
9. We see from the records that there are several exchanges of letters between the parties regarding this mark. And, therefore, we will give the benefit of doubt to the appellant for their absence on 11.12.2008. However, the appellant will have to show that the notice of opposition was received by them only on 10.01.2006. The party seeking the authorities discretion for condonation of delay must satisfy us why the period of limitation should be extended. The registrar had not taken a note of the statement that it was received on 10.01.2006 and had dealt with it as if they had received it on 22.12.2005. This is an error. The notice of opposition was sent on 22.12.2005 therefore, it could not have been received on 22.12.2005. Further when there is an averment that it was received on 10.01.2006 that must be dealt with. Therefore, we send the matter back to the registrar who will hear both sides and the appellant shall prove by satisfactory evidence that the notice of opposition was received on 10.01.2006 as stated by them. This must be proved by acceptable evidence. Thereafter the Registrar may pass appropriate orders thereafter. We are not going into the question whether the mark is registrable or not. That decision will follow later only after the above order is passed. The appeal is allowed and the matter is sent back for re-hearing as indicated above. The Registrar shall send notice to the parties and decide the matter within 4 months from the date of receipt of this order. Miscellaneous Petition Nos.165 and 166/2012 are closed.