Judgment:
ORDER (No.192/2009)
Z. S. Negi, Chairman:
1. This appeal, under section 91 of the Trade Marks Act, 1999, (hereinafter referred to as the Act), is directed against the order dated 30.4.2008 passed by the Deputy Registrar of Trade Marks, Chennai whereby he has disallowed the Interlocutory Petition, filed by the appellant seeking condonation of delay in filing the evidence under rule 51 of Trade Marks Rules, 2002 (hereinafter referred to as the Rules) and to take the evidence on record, being not maintainable and also devoid of any merit.
2. The appellant, a company incorporated in 1930 under the name of Vazir Sultan Tobacco Company Ltd., is carrying on a well established and reputed business as manufacturers and marketers of goods falling in class 34 for the last several decades. It is claimed that the appellant is the registered proprietor of several subsisting trade marks in respect of goods under that class, such as, VIJAY, VIJAY GOLD FLAKE DELUXE, VIJAY GOLD FLAKE SPECIAL VIRGINIA, VIJAY VIRGINIA and VIJAY DELUXE. The appellant on 30.6.1995 filed an application No. 671383 for registration of label mark consisting of words VIJAY DELUXE in class 34, which was for proposed to be used and the application was advertised before acceptance in the Trade Marks Journal No. 1328 (S-5) dated 30.3.2005. Thereupon the respondent No.1 filed opposition being No. MAS-206109 on 31.8.2005 on the ground that it adopted the mark VIJAY on 23.12.1980 and since then used the mark openly, extensively and continuously in respect of tobacco-bidis and the mark of the respondent No.1 has acquired a secondary meaning in respect of its products and also the registration of the mark applied for is barred under sections 9, 11, 12 and 18 of the Act.
3. The appellant filed the counter-statement on 7.6.2006 and the respondent No.1 filed evidence in support of opposition and a copy thereof was forwarded to the appellant which was admittedly received by it on 9.7.2007. The appellant on 6.9.2007 sought extension of time till 6.10.2007 for filing evidence but failed to file the evidence by that time. On 6.10.2007, the appellant intimated the Registrar and the respondent No.1 that it wished to place reliance on the facts stated in the counter-statement and craved leave to file evidence at a later date by way of an interlocutory petition and on 23.11.2007 filed evidence in support of the application along with an interlocutory petition seeking condonation of delay in filing the evidence under rule 51 of the Rules. The appellant had stated in the interlocutory petition that it has produced sufficient evidence in support of the application and unless the said evidence is taken on record, serious prejudice will be caused to it in so far as complete adjudication of the matter is concerned. The appellant stated that the affidavit and the documentary evidence filed by it as exhibits are most important and vital documents and the said documents could not have been submitted before the respondent No.2 earlier due to compelling circumstances and that no prejudice whatsoever would be caused to the respondent No.1, if the appellant is permitted to file its evidence in support of the application. The appellant had prayed that the delay in filing the evidence under rule 51 of the Rules be condoned and the said evidence be taken on record. After hearing, the respondent No.2 disallowed the interlocutory petition being not maintainable and also devoid of any merit and directed that the main matter shall be heard on 6.6.2008.
4. Against the aforesaid order disallowing the interlocutory petition, the appellant has filed the present appeal on the grounds, inter alia, that the respondent No.2 failed to properly peruse the plethora of judgments filed by the appellant at the time of hearing; that the respondent No.2 erred in not taking the submission of the counsel for the appellant into account that, having regard to the principles of natural justice, the evidence sought to be taken on record as evidence should not be shut out at any stage of the proceedings; that the delay in filing the evidence was not inordinate, the delay of 43 days ought to have been condoned by the respondent No.2 especially in view of the decision of the Full Bench of Delhi High Court in Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks, 2000 PTC 24 (FB) wherein it was held that rule 53(2) of the Trade and merchandise Marks Rules, 1959 (hereinafter to be referred to as the repealed Rules) is merely mandatory and not directory and the Registrar has power to grant extension of time for filing evidence; that the respondent No.2 should have waited for the evidence to be filed by the appellant to enable it to substantiate the appellants interest-where the public interest is affected by affecting the purity of register; that the respondent No.2 erred in not observing the principles of natural justice, which are flexible and cannot be put in a rigid formula and that the impugned order is contrary to the facts, law, equity and good conscience and the same is liable to be set aside. The appellant along with the appeal had filed a miscellaneous application seeking stay of operation of the impugned order till the disposal of the appeal. After hearing both the parties, the said miscellaneous application for stay was disposed of by this Appellate Board with the direction that the main appeal should be posted on 1.10.2009 for final hearing.
5. When the appeal came up before us on 1.10.2009 for hearing, Ms. T.V. Malavika, advocate appeared on behalf of the appellant and Shri L. Ramprasad, advocate appeared on behalf of the respondent No.1.
6. Learned counsel for the appellant contended that the appellant is the registered proprietor of variants of trade mark VIJAY and the said marks are extensively and continuously used by the appellant and as such the respondent No.2 ought to have allowed the interlocutory petition by taking the evidence in support of application on record. The learned counsel submitted that the evidence could not be filed in time as the documents to be filed in support of the application were old enough and it took a long time for the appellant to locate them from different places. The appellants evidence to be adduced in support of application were required to be located from different places and then sorted and collated, which consumed a lot of time of the appellant. That was the reason for seeking extension of time from the respondent No.2 and the respondent No.2 was empowered to grant extension of time for filing the evidence under rule 51 of the Rules. The learned counsel placed reliance upon the order of this Appellate Board in UCB v. Torrent Pharmaceuticals Limited and Ors, 2007 (35) PTC 820 (IPAB) to contend that the respondent No.2 has power to extend the time for filing evidence under rule 51 of the Rules and therefore he ought to have allowed the interlocutory petition by holding that where public interest is affected, delay is of no consequence. Learned counsel for the appellant by referring the decision of the Full Bench of High Court of Delhi in Hastimal Jains case (supra) submitted that in that case the Court held that limitation for filing of evidence prescribed under rule 53 of the repealed Rules (which provision provided for filing evidence in support of opposition) was only directory and not mandatory and the Registrar has power to extend time for filing evidence even though the period mentioned in rule 53 of the repealed Rules or the extended period thereof has expired and even though an application for extension of time is made beyond that period. She further submitted that the respondent No.2 ought to have taken notice of the fact that the respondent No.1 did not even appear before him even after taking two adjournments of the oral hearing and this non-appearance of the respondent No.1 showed its disinterest in contesting the interlocutory petition. Learned counsel also contended that the observation made by the respondent No.2 in his impugned order that âSince the applicants have failed to file evidence within the period of three months and they have not chosen any other option as given above under rule 51, the very maintainability of the aforesaid interlocutory petition is questionable as the same is not maintainable and is ordered accordingly.â is erroneous and contrary to the facts on record. By furnishing a copy of letter No.2517 dated 9.10.2007 addressed to the Registrar of Trade Marks, Trade Marks Registry, Chennai with a copy endorsed to the counsel for the respondent No.1 intimating the Registrar that the appellant wish to place reliance on the facts stated in the counterstatement and craving leave to file evidence if any, at a later date by way of an interlocutory petition and having acknowledgement dated 9.10.2007 regarding delivery of such letter received from the Trade Marks Registry, Chennai, the learned counsel submitted that there is no whisper about the said letter in the impugned order. It is therefore implicitly clear that the respondent No.2 has not at all taken the aforesaid letter into consideration. The learned counsel urged that the impugned order is liable to be set aside and award cost in favour of the appellant.
7. On the other hand, the learned Counsel for the respondent No. 1 vehemently opposed the appeal on the ground that the appellant has not given any cogent reason justifying for grant of extension of time for delayed filing of evidence in support of the application. He pointed out that the learned counsel for the appellant at the time of hearing the stay application had submitted that the appellant could not file the evidence due to internal differences in the appellant company but at present the learned counsel has submitted that the documentary evidence could not be adduced in support of the application because the documentary evidence which were old and required to be located from different places and collated for filing before the respondent No.2, which took a lot of time of the appellant. He pointed out that the appellant has deliberately given a vague ground (due to compelling circumstances) while seeking condonation of delay by way of interlocutory petition, so that it could twist the same in its favour as the circumstance may demand at the time of oral arguments. He submitted that his stand gets support from the two different stands taken by different counsel for the appellant at two different hearings. He went on to submit that the ground given by the appellant in the interlocutory petition (due to compelling circumstances) is very vague which was not at all sufficient to satisfy the respondent No.2 that the delay was not occasioned by latches on the part of the appellant or not by reason of its deliberate conduct. To buttress his submission, the learned counsel relied upon the order of this Appellate Board in Kumar Dal Mills v. Bansi Lal Aggarwal, 2006 (33) PTC 405 (IPAB) wherein this Appellate Board had allowed the application by condoning the delay as the applicant had shown sufficient cause for condoning the delay. Learned Counsel submitted that the Registrar has no power to extend the time for filing evidence exceeding one month in the aggregate after the expiry of two months period specified in sub-rule (1) of rule 51 of the Rules. Rule 51 of the Rules is reincarnation of rule 54 of the repealed Rules and the changes brought in the reincarnated rule is with the purpose of restricting the power of Registrar to extend the time for filing evidence to the maximum period of one month in the aggregate so as to avoid delay in concluding the registration proceedings. Placing reliance upon the decision of Apex Court in Mohammed Yusuf v. Faij Mohammad and Others, (2009) 3 Supreme Court Cases 513, the learned counsel submitted that it would be proper to encourage the belief in litigants that the imperative of incarnated rule 51 of the Rules must be adhered to by rejecting the request for extension of time exceeding one month after expiry of two months period specified in rule 51(1) of the Rules. Reliance was placed upon the decision of High Court of Delhi in Sunrider Corporation , U.S.A. v. Hindustan Lever Ltd. and Another, 2007 (35) PTC 388 (Del.) wherein the Court held that it is obvious that the Legislature wanted to make the provision of rule 50 of the Rules mandatory and did not want to give discretion to the Registrar in this connection. He further submitted that the Registrar has the power to refuse extension of time in a given case, when he finds that there is no plausible reason given in the grounds on which extension of time for doing some act is sought for by the applicant. He further submitted that the Registrar has the power to refuse extension of time in a given case, when he finds that there is no substance in the grounds on which extension of time for doing some act is sought for by the appellant. In support of his submission, the learned counsel referred to the decision of the High Court of Gujarat in the case of Wyeth Holdings Corpn. And Another v. Controller General of Patents, Designs and Trade Marks, 2007 (34) PTC 1 (Guj.) wherein the Court while holding the sub-rule (2) of rule 50 of the Rules to be directory clarified that by holding that the aforesaid provision as directory, does not take away the powers of the Assistant Registrar of Trade Marks to refuse extension of time in a given case when he finds that there is no substance in the grounds on which the extension of time is sought for. Learned counsel urged that the appeal has no merit and the same may be dismissed with costs in favour of the respondent No. 1.
8. We have carefully heard both the parties and perused the documents on record. The issue that arises in the appeal is whether the respondent No. 2 has the power to grant extension of time for filing of evidence in support of application under rule 51 of the Rules exceeding one month in the aggregate after expiry of the period of two months specified in that rule and whether the impugned order is contrary to facts on record, law and equity. Before adverting to the appeal, it would be appropriate to glance through the provisions of the Act and the rules made thereunder in this regard. Section 21 of the Act, which deal with opposition of registration provide under sub-section (4) thereof that any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire. Section 131 of the Act, which deal with the extension of time for doing any act reads as under:-
â131. Extension of time.- (1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in this Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.â
The manner of submission of evidence and the time therefor under sub-section (4) of section 21 and the manner of making an application under sub-section (1) of section 131 of the Act are respectively prescribed in rule 51 and rule 105 of the Rules, which read as under :-
â51. Evidence in support of application.- (1) Within two months or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, on the receipt by the applicant of the copies of affidavits in support of opposition or of the intimation that the opponent does not desire to adduce any evidence in support of his opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement and or on the evidence already left by him in connection with the application in question. In case the applicant relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies thereof.
(2) An application for extension of the period of one month mentioned in sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.
105. Extension of time.- (1) An application for extension of time under section 131 (not being a time expressly provided in the Act or prescribed under rule 79 or by sub-rule (4) of rule 80 or a time for the extension of which provision is made in the rules) shall be made in Form TM-56.
(2) Upon an application made under sub-rule (1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to impose, extend the time and notify the parties accordingly and the extension may be granted though the time for doing the act or taking the proceedings for which it is applied for has already expired.â
9. From the plain reading of the above extracted provisions, it is quite clear that the applicant is required to submit the evidence in support of application in the prescribed manner and within the prescribed time to the Registrar. Such manner and time is prescribed in rule 51 of the Rules which provide that the applicant shall file such evidence by way of affidavit as he desires to adduce in support of his application within two months or within such further period not exceeding one month in aggregate thereafter, as the Registrar may on request allow, from the date of receipt by the applicant of the copies of affidavit in support of the opposition or of the intimation that the opponent does not desire to adduce any evidence in support of the opposition. In nutshell, the time available for the applicant to file his evidence is two months, which is further extendable, on a request made on Form TM-56, not exceeding one month in the aggregate. The extension of time under section 131 of the Act can be sought in case where the time for doing any act is not expressly provided in that section or the rules made thereunder and that too on showing a sufficient cause to the satisfaction of the Registrar. In the present appeal, the appellant, in its own admission, has on 6.9.2007 sought extension of time till 6.10. 2007 and thereafter filed interlocutory petition on 23.11.2007 seeking condonation of delay in filing the evidence under rule 51 of the Rules and to take the said evidence on record. When the Registrar had no power to extend the time exceeding one month, he could have no power to condone the delay in filing the evidence after the lapse of three months. The appellant has filed the evidence under rule 51 of the Rules after a delay of more than 40 days after the lapse of three months period, including maximum extendable period of one month, available to it. When rule 51 of the Rules required the appellant/applicant to file its evidence in support of the application within two months or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, such evidence by way of affidavit as it desired to adduced, the same should have been filed within that particular time and manner only. The High Court of Delhi while considering the question whether the Registrar of Trade Marks has the power to extend the time for filing the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under rule 50(1) of the Rules, in Sunrider Corporations case (supra) has observed as under:-
â15. In Ramachandra (supra), the Supreme Court observed that in Taylor v. Taylor:1875 (1) Ch D 426, Jessel M.R. adopted the rule that where a power is given to do a certain thing in a certain way, the thing must be done in that way or not at all and that other methods of performance are necessarily forbidden. The Supreme Court further observed that this rule had stood the test of time. In that very case [Ramachandra (supra)], the Supreme Court placing reliance on Craies on Statute Law, 7th Edn. observed that with regard to the question as to whether a provision was mandatory or directory, no uniform rule could be laid down as to whether mandatory enactments should be considered directory only or obligatory with an implied nullification for disobedience. The Supreme Court further observed that it is the duty of Courts of justice to try to get at the real intention of the legislature by carefully attending to the whole scope. Such intention of the legislature is, therefore, to be ascertained upon a review of the language, subject-matter and importance of the provision in relation to the general object intended to be secured, the mischief, if any, to be prevented and the remedy to be promoted by the Act. Considering the provisions and making a comparative study of the old and the new Act as well as the old and the new rules, it is more than clear that specific words have been introduced in the new provisions and/or removed from the old provisions. Such additions and deletions are significant and bring out the true intention of the legislature. For instance, Rule 53 of the 1959 Rules did not prescribe any maximum period of extension of time. 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.
16. It is, therefore, quite clear that the answer to question No. 1 is that the Registrar does not have the power to extend the time for filing of evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under rule 50(1) of the Trade Marks Rules, 2002 â¦â.
10. The provision of rule 54 of the repealed Rules did not prescribe any maximum period of time extendable by the Registrar and as such the Registrar used to extend the time for a number of months for filing evidence by the applicants in suitable cases. The language employed in rule 51 of the Rules, which is a reincarnation of rule 54 of the repealed Rules, is different to the extent that it empowers the Registrar to extend the time not exceeding one month in the aggregate beyond the two months period specified in that rule. The decision of Full Bench of Delhi High Court in Hastimal Jains case (supra) will be of no help to the appellant as same High Court has distinguished that decision from the decision in the Sunrider Corporations case (supra). The learned Judge in the Sunriders case (supra) has, after extracting paragraph 19 of the Full Bench Judgment in Hastimal Jains case, observed that the Full Bench was of the view that Rule 53 (2) of the 1959 Rules was not mandatory, but merely directory; the Full Bench observed that although the word "shall" was used in Rule 53 (2), that by itself would not indicate that the provision was mandatory. He observed that the said Bench came to this conclusion specifically because of the expression "unless the Registrar otherwise directs" used immediately after the word "shall" and it is in this context that the Bench was of the view that the legal fiction created by the word "shall" was not absolute as it was limited by the words "unless the Registrar otherwise directs". Consequently, the Full Bench was of the view that the provisions of the repealed rule 53 (2) were not mandatory but directory. The request of respondent No.1 that rule 50 (2) of the Rules must also be interpreted in similar fashion as being directory and not mandatory was rejected by the learned Judge on the ground that the provisions of rule 53 of the repealed Rules and rule 50 of the Rules are materially different. First of all, in sub-rule (1) of Rule 50 of the 2002 Rules, the words "or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow" are missing in rule 53 (1) of the repealed Rules and, therefore, the decision in Hastimal Jain (supra) would not apply to the facts of the case on hand. The difference is that the expression "unless the Registrar otherwise directs" appearing in Rule 53 (2) of the 1959 Rules is missing from Rule 50 (2) of the 2002 Rules. For this reason also, the decision of the Full Bench in Hastimal Jain's case would not apply to the present case. In view of this, the reliance heavily placed upon the decision of above referred case will be of no help to the appellant. In view of the words â or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allowâ used consciously in sub-rule (1) of rule 51 of the Rules prohibits the Registrar from granting extension of time beyond one month from the lapse of two months period specified in that sub-rule. Assuming that the Registrar has power to extend the time beyond three months, even then the interlocutory petition would not have been allowed for want of convincing reason for extension of time. The said petition does not contain any details of action taken by the appellant to locate the relevant documents.
11. In the light of the above, we see no infirmity in the order passed by the respondent No.2. The respondent No.2 has considered the decision in the Sunrider Corporations case (supra) and came to the conclusion that the rule 51of the Rules also contain more or less same language as contained in rule 51(1) of the Rules. Regarding the objection of appellant that the impugned order does not contain a whisper of appellant letter intimating that the appellant wish to place reliance on the facts stated in the counter-statement. The said letter is not an absolute confirmation as envisaged under rule 51 of the Rules to the extent that the letter also seeks leave to file evidence if any, at a later date by way of interlocutory petition. However, the appellant has still an opportunity to bring that letter to the notice of the Registrar at the time of hearing of the main matter.
12. In view of the above, we find no merits in the appeal and accordingly dismiss the same. However, there shall be no order as to costs.