(Circuit Bench at Ahmedabad)
Honble Shri Z.S. Negi, Chairman:
This is an appeal under section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 3.5.2006 passed by the Assistant Registrar of Trade Marks whereby the Interlocutory Petition dated 8.8.2005, filed by the respondent No.2 herein in rectification No. AMD-60931 to registered trade mark No. 535953B in class 3 was allowed and further evidence filed by the registered proprietor taken on record and liberty given to the appellant herein to file rebuttal within 30 days from the receipt of the impugned order dated 3.5.2006.
2. The appellant herein, claiming to be the subsequent proprietor of the trade mark âAJANTA under Nos. 191915 as of 3.9.1959 in class 21 in respect of brushes included in class 21, 220724 as of 19.2.1964 in class 3 in respect of non-medicated toilet preparations, cosmetics, perfumes and 344242 as of 18.12.1978 in class 21 in respect of tooth brushes included in class 21(which are stated to be renewed from time to time and are valid and subsisting in the name of the appellant), filed a rectification application on 11.04.2002 on Form TM-26 before the Registrar of Trade Marks, Ahmedabad to expunge, vary, cancel or remove the entry relating to the registered trade mark AJANTA, in the name of Manubhai Ukabhai Patel and others trading as M/s Ajanta Transistor Clock Mfg. Company, under No.535953B as of 27.8.1990 in respect of the goods included in class 3. The Trade Marks Registry by its letter No. TOP/GEN/2416 dated 5.8.2002 acknowledged receipt of Form TM-26 to the appellant and by endorsing a copy of the said letter informed the registered proprietor/respondent No.1 that rectification proceedings have been intimated by the above given appellant/applicant and thereafter, the Registrar served vide letter dated 25.9.2003 a copy of Form TM-26 on the original registered proprietors/respondent No.1 herein calling upon them to file their counter-statement under rule 95 of the Trade and Merchandise Marks Rules, 1959 (in short the repealed Rules) of the grounds on which the rectification application is contested but the respondent No.1 did not file the counter-statement. In the meanwhile, the respondents No.1 and 2, knowing fully well as to the pending rectification application of the appellant, filed a rectification application before the Trade Marks Registry at Mumbai against the registered trade mark No.220724 in class 3 as of 19.2.1964 of the appellant and the same is still pending before the Registrar of Trade Marks, Mumbai.
3. The respondents No.1 and 2 also filed on 18.1.2003 a suit, being Civil Suit No.163 of 2003, against Mahipal Vijaychand Sariya and others, for the infringement of Trade Mark and passing off wherein the appellant entered appearance as the successor-in-interest of the deceased Mahipal Vijaychand Sariya, and filed application raising objections, amongst others, as to the maintainability of the suit against the deceased person because a suit against the dead person is nullity and hence required to be dismissed. Thereupon, the respondents No.1 and 2 moved an application, for amendment of the plaint to delete the name of deceased Mahipal Vijaychand Sariya and to add the name of the appellant in the suit, which is yet pending for final hearing and disposal. It is notable that the City Civil Court at Ahmedabad has not granted any ex parte interim injunction in the suit of the respondents No.1 and 2. The appellant also filed two separate suits being Suit Nos.667 of 2003 and 2877 of 2003 before the Honble High Court of Bombay and the Honble Single Judge of that High Court, after hearing the parties in the application for interim injunction, was pleased to grant the interim injunction against the respondents No. 1and 2 in the respective suits as to the use of the trade mark AJANTA for their products and the appeals preferred by the respondents No.1 and 2 before the Honble Division Bench of Bombay High Court are pending for the adjudication.
4. It is further stated that it appears from the impugned order dated 3.5.2006 passed by the Assistant Registrar in the Interlocutory Petition that the respondent No.2, after the aforesaid two Civil Suits of the appellant, approached the Assistant Registrar through its Trade Marks Attorneys, H.K. Acharya and Co., vide their letter dated 1.4.2004 whereby they filed General Power of Attorney and stated that Ajanta India Ltd. has become the proprietor of the registered trade mark No.535953B and other registered trade marks by virtue of assignment deed dated 19.9.2002 and requested that a copy of Form TM-26 be served on them on behalf of Ajanta India Ltd. and the Assistant Registrar taking cognizance of the said letter served a fresh copy of Form TM-26 on H.K. Acharya and Co. vide official letter dated 2.4.2004 directing the respondent No.2 to file the counter-statement of the grounds on which the registered proprietor relied upon. The appellant alleges that the Assistant Registrar neither informed to the appellant about the letter dated 1.4.2004 of H.K. Acharya and Co. at all nor communicated the said official letter dated 2.4.2004 to the appellant. The appellant for the first time came to know as to the filing of the counter-statement dated 6.4.2004 by respondent No.2 when the Assistant Registrar served a copy of thereof vide office letter No.TOP/02792 dated 23.6.2004 on the appellant and as such the appellant filed a request for extension of time on Form TM-56 dated 20.8.2004 and thereafter, filed the evidence in support of application for rectification by way of an affidavit dated 17th September, 2004 of Harish Motichand Sariya together with Exh.-1 to 9 and documentary evidences under rule 50 of the Trade Marks Rules, 2002 (hereinafter referred to as the Rules). The appellant has in para 31 of the affidavit, categorically objected the locus-standi of the said Ajanta India Ltd. by stating as under :-
â31. At the further out-set, I say and submit that the counter statement has been made and filed by one Vikram Krishnamurthi Iyer of Ajanta India Ltd. who has no locus standi to make and file the counter statement. Neither he nor Ajanta India Ltd. are the proprietor of the above referred registered trade mark. In the circumstances, the Registrar should proceed with the above case as if no counter statement has been filed by the Registered Proprietor and in such a case, the Registrar should accept all the statements and submissions made by the Applicant in the application on Form TM-26 as also in the Statement of Case as deemed to have been admitted by the Registered Proprietor.â
5. The respondent No.2 filed evidence along with affidavit of Ashok O. Patel, director of respondent No.2 containing Exh.-A to F in support of registration which was taken on record as if the same are filed by the registered proprietors as provided under rule 51 of the Rules. It is relevant to state that in the said affidavit on behalf of respondent No.2, any of the facts and grounds so urged in the affidavit evidence of the applicants for rectification have not at all denied and have also not denied the contents of above extracted Para 31 of the affidavit of Harish Motichand Sariya and, therefore, the statements of facts made in the said affidavit are deemed to have been admitted by the respondent No.2. The appellant/applicant for rectification, thereafter, filed an affidavit in reply dated 15.12.2004 of Harish Motichand Sariya in the matter under rule 52 of the Rules, wherein in para 4, the appellants/applicants have reiterated that the counter- statement filed by Vikram K. Iyer of the Ajanta India Ltd. has no locus standi to make and file the same and neither he nor Ajanta India Ltd. is the registered proprietor of the registered trade mark in question. The Assistant Registrar of Trade Marks fixed the hearing of the rectification application on 1st April, 2005 which was adjourned twice, upon request dated 1.4.2005 by the appellant/applicants and upon request dated 15.4.2005 by the said Ajanta India Ltd.
6. The respondent No.2 filed an Interlocutory Petition dated 5.8.2005 with an affidavit dated 11.7.2005 of Vikram K. Iyer with Exh.-A to O in the matter mainly praying that Registrar of Trade Marks being custodian of registered trade mark, allow the Interlocutory Petition and the evidence in support of registered trade mark be taken on record. The appellant filed the reply/comments dated 14.10.2005 to the said Interlocutory Petition of the respondent No.2. It is pointed out by the appellant that the prayers in the interlocutory petition and affidavit of Mr. Iyer are not uniform as in the petition the major prayers are to allow the petition and take the evidence in support of registered trade mark on record, whereas the affidavit, which is for further evidence in support of registered trade mark, the major prayers therein are to dismiss the application and allow the trade mark to remain on the register. The Assistant Registrar heard the matter on 24.11.2005 and passed the impugned order on 3.5.2006. Aggrieved by the impugned order, the appellant/applicant to the rectification application challenged the impugned order by raising various legal issues, inter alia, that whether the respondent No.2 is entitled to file the counter-statement for and on behalf of original registered proprietor/respondent No.1, when the name of respondent No.2 was not recorded as the registered proprietor and when a copy of Form TM-26 was served on the respondent No.1 calling upon them to file counter-statement; that whether the Registrar was justified in serving another copy of Form TM-26 on the respondent No.2 when the respondent No.1 did not file the counter-statement at all; that whether it is lawful for the Registrar to take the counter-statement of the respondent No.2 without any request being made on Form TM-27 by the respondent No.2; that whether the Registrar is justified to treat the respondent No.2 as registered proprietor within the meaning of section 2(1)(v) of the Act r/w rule 92 of the Rules, pursuant to which the counter-statement was filed on 6.4.2004; that whether the Registrar is justified in taking the evidence tendered by respondent No.2 as the evidence filed by the respondent No., while the factual position was not so; that whether the Registrar is justified in entertaining the Interlocutory Petition for taking on record the evidence in support of the trade mark registered in the name of respondent No.1, against which the rectification application is filed by the appellant; that whether the Registrar is empowered to grant the Interlocutory Petition on the ground of clerical error especially when there is admission of the respondent No.2 that those documents were within their power and possession and when the respondent No.2 has already filed the affidavit under rule 51 of the Rules; that whether the provisions of rule 53 are alternative to or extension of rule 51 and whether it is appropriate for the Registrar to take the affidavit dated 11.7.2005 of Mr. Vikram. K. Iyer as evidence by exercising powers under rule 53 and that whether the Registrar is justified to consider such affidavit as further evidence in exercise of its powers under rule 53 of the Rules. The respondent No.2 filed counter-statement on 29.1.2007 denying the material allegations and legal issues raised in the appeal.
7. The respondent No.2 in the counter-statement dated 24.1.2007 has denied the material averments made in the appeal and stated that the respondent No.1, which is the partnership firm and predecessors in title of the respondent No.2, are engaged in the business of manufacturing and marketing of wall clocks, wrist watches and hierological instruments under the honestly adopted AJANTA as part of trading style as well as trade mark since 1971. The respondent No.1 assigned all their registered trade marks AJANTA in various classes, pending applications for registration of trade marks, copyrights of artistic work AJANTA and registered designs to the respondent No.2 by deed of assignment dated 19.9.2002 and with the recordal of assignment, the respondent No.2 has become the subsequent registered proprietor and as such the Assistant Registrar has after satisfying himself served a copy of application on the respondent No.2 as it is entitled to file the counter-statement. It is submitted in para 28 of the counter-statement that the present appeal is not maintainable as the impugned order is not an order but merely a leave granted by the Registrar accepting or taking documents on record.
8. Learned counsel Shri Y.J. Jasani, appearing for the appellant, vehemently contended that the impugned order passed by the Assistant Registrar of Trade Marks is illegal, erroneous, contrary to the facts, circumstances and evidence on record and against the express provisions of the Act and rules framed there under and as such, the order is perverse and the same is required to be quashed and set aside at the threshold. He contended that as per definition contained in section 2(1)(v) of the Act, Manubhai Ukabhai Patel and others trading as Ajanta Transistor Clock Mfg. Co. were the registered proprietors of the trade mark AJANTA on the date of filing of the rectification application and accordingly the said application was filed against the registered proprietors seeking removal of their impugned trade mark from the register of trade marks and the receipt of the application was acknowledged by the Trade Marks Registry by its letter dated 5.8.2002. The counsel for the applicant/applicant vide letter dated 16.11.2002 requested the Registrar to take further proceedings at the earliest and, thereafter, the Registrar served a copy of Form TM-26 on the registered proprietors/respondent N0.1 vide its letter dated 25.9.2003. However, without any justification and authority and without affording any opportunity to hear the appellant/applicant, the Assistant Registrar, purported to be in pursuance of rule 92 of the Rules sent a copy of Form TM-26 to Ajanta India Ltd. for filing counter statement. Such act of the Registrar has made Ajanta India Ltd., without any locus standi, a party to the legal proceedings and the party has filed the counter statement which amounts to amendment of the application without knowledge to the applicant. As a general principle of law, an amendment to application for adding or substituting a respondent can be made by the applicant with the permission/direction of the court/tribunal and not otherwise. Without carrying out any physical amendment in the application, the amendment cannot be deemed to be carried out and also the tribunal has no inherent power or discretion to admit the counter statement filed by the respondent No.2 without making it a party to the rectification proceedings. Learned counsel contended that the principles of natural justice and procedure for formally amending an application have been given go bye completely by the Assistant Registrar of Trade Marks. In view of this factual position, the service of copy of Form TM-26 on the Trade Marks Attorneys of respondent No.2 is without any basis and illegal and the respondent No.2 cannot be permitted to file counter-statement, evidence in support of registration or the impugned interlocutory petition.
9. Shri Jasani contended that the Assistant Registrar has failed to consider and appreciate the true purpose and scope of rule 94 of the Rules. Rule 94 deals with the procedure to be followed in case of third party intervention, other than the registered proprietor, in the rectification proceedings. As per requirement of the rule mentioned here before, a third party seeking leave to intervene in the rectification proceedings may apply on Form TM-27, stating the nature of his interest, and the Registrar may, after hearing or otherwise, refuse or grant the leave prayed for. In the present case, neither the respondent No.2 filed Form TM-27 nor the Assistant Registrar, in response to request from Trade Marks Attorneys to the respondent No.2 to serve a copy of Form TM-26 on it on behalf of respondent No.2, drew the attention of the said Attorneys the requirements of the provisions of rule 94 of the Rules. The counsel contended that not only the counter-statement was admitted and additional evidence taken on record by passing the impugned order by the Assistant Registrar in the impugned interlocutory application but the Assistant Registrar exercised such power in this behalf which is not authorized by the Act or the Rules. Learned counsel placing reliance upon the judgment of the Division Bench of Gujarat High Court in Chimanlal Chheldas Patel v. Lilachand Veniram Panchal, 272 Gujarat Law Reporter Vol. XII submitted that the inherent power cannot be exercised in a manner which would be contrary or different from the procedure expressly provided in the statute. He submitted that the Court has further observed in that case it requires to be noted that under the rule of law, the Courts are as much bound by law as any other organ or agency of the State and no order affecting the rights of any person, including a party litigant, can be made by the Court unless it is authorised by the Civil Procedure Code or by any other enactment applicable to the facts and circumstances of the case.
10. Shri Jasani contended that the counter-statement filed by the respondent No.2 ought not to have been taken on record without first deciding the issue of locus standi of the respondent No.2 especially when the respondent No.1 even after service of copy of Form TM-26 in September, 2003 remained silent. Respondent No.1 has neither filed counter-statement nor informed the Assistant Registrar till now that it has assigned the impugned trade mark to respondent No.2. Respondent No.2 has no locus standi at the time when its Trade Mark Attorney by letter requested the Assistant Registrar to serve a copy of Form TM-26 on it on behalf of respondent No.2 nor when a copy of Form TM-26 was sent to it on 2.4.2004 by the Assistant Registrar or even when it filed counter-statement dated 6.4.2004 as the request for recording of assignment made on Form TM-24 dated 4.10.2002 was ordered by Registrar of Trade Marks, Mumbai on 6.12.2004, in other words, respondent No.2 became subsequent registered proprietor with effect from 6.12.2004 only. It was further contended, that from the records, it transpires, that the respondent No.2 has filed the request for registration assubsequent proprietor of the trade mark on Form TM-24 and not on Form TM-23 and that too without disclosing the factum as to pendency of the instant rectification application and thereby played fraud upon the Trade Marks Registry. The Registrar of Trade Marks, Mumbai also before passing order for recordal did not issue any notice to the appellant whereas it is the mandatory duty of the Registrar not to transfer the rights of mark in the name of the assignee when the application for rectification is already pending that too without issuing any notice/without hearing the applicant. The conclusion arrived at by the Assistant Registrar that the respondent No.1 ceased to be registered proprietor of the impugned trade mark on the date of service of the copy of Form TM-26 and that the respondent No.2 has come up with the justification of the circumstances that the respondent No.1 has ceased to be the registered proprietor and it has become the registered proprietor is patently and highly erroneous on the facts of the case.
11. Learned counsel for the applicant contended that the finding of the Assistant Registrar that the assignment of the impugned trade mark was not after thought as it was not aware of the fact that the appellant had instituted the rectification proceedings against its registered trade mark, which it came to know only when copy of Form TM-26, was served in September, 2003 but the assignment was made earlier by deed of assignment dated 19.9.2002, is dehors the fact on record. The Assistant Registrar has failed to verify the records of the proceedings in the Trade Marks Registry, Ahmedabad, which contained proof that the Registry had by its letter No. TOP/ GEN-2416 dated 5.8.2002 addressed to the appellant and copy thereof endorsed to the respondent No.1 acknowledging the receipt of Form TM-26 dated 15.4.2002 and numbered as Rect. No. AMD-60931 and the respondent No.1 has not denied that it has not received the aforesaid copy of letter endorsed to it. Besides this, the Assistant Registrar has while coming to such finding failed to consider the true purport and object of the enquiry to be conducted by the Registrar in the proceedings in Form TM-24 (section 45 of the Act r/w rule 68 of the Rules) and recorded its finding that the respondent No.2 has, at the time of filing counter-statement, become the registered proprietor by merely filing Form TM-24 before the Registrar which was pending recordal. Learned counsel emphasizing his submission made in relation to the definition of the term registered proprietor submitted that the finding which is extracted thus: âHowever, the Ajanta India Ltd. Is the registered proprietor of the mark in the eyes of law by virtue of assignment deed itself, which has been subsequently accepted by the Registrar of Trade Marks and put his seal and recorded the same accordingly and as such, the Ajanta India Ltd. has the exclusive rights of registration under Section -28 of the Act.â, is contrary to the express provisions of section 2(1) (v) r/w section 28(1) of the Act and is also unwarranted in deciding the impugned interlocutory petition. He urged that in view of these facts, such finding by the Assistant Registrar is highly erroneous and contrary to the records and, therefore, the impugned order deserves to be set aside.
12. Learned counsel contended that the finding of the Assistant Registrar that âAt the same time, the registered proprietor has also submitted that these documents have already been filed before the City Civil Court at Ahmedabad in a suit between the parties, which has not been denied by the applicant for rectification even before the Honble Tribunal at hearing.â, on the pleading of the appellant/applicant that the documents filed along with the interlocutory petition had been within the power and possession of the registered proprietor, is erroneous and contrary to the objections and reply dated 14.10.2005 submitted at length at para 10 of the said objection and reply by the appellant/applicant. Even if that be so, no explanation has come from the respondent No.2 as to why it chose not to file them while tendering evidence under rule 51 of the Rules. In the absence of any such explanation forthcoming from the respondent No.2, the above quoted finding of the Assistant Registrar is highly erroneous; hence, the same should be quashed.
13. Learned counsel for the appellant contended that the respondent No.3 though recorded in the impugned order that â What the facts remains is that the Registrar vested with the blanket power to give leave, but it does not mean that the Registrar would grant leave in all cases irrespective of merit of the case. He has to exercise the discretion judiciously by taking into consideration of merit of the grounds taken and the facts and circumstances of the case and the natural justice while granting leave.â but has in fact failed, while coming to the self contradictory conclusion, to consider the true spirit, scope and meaning of rule 53 of the Rules which conferred the discretionary powers on the Registrar.
14. Learned counsel for the appellant during the course of his detailed arguments, relied upon the following judgments in support of his contentions:-
(a) Chimanlal Chheldas Patel v. Lilchands Veniram Panchal (supra), (b) Hampakbhai Parsottambhai Patel v. State of Gujrat and Ors, 2001 (2) GLR 1814, (c) Ajanta Manufacturing Ltd. and Ors. V. Ajanta India Ltd., MIPR 2008 (3) 0007, (d) Wander Limited Versus Antox India Private Limited, 1990 (0) GLHEL-SC 34537, (e) Arjun Singh Versus Kartar Singh, 1951 (0) GLHEL-SC 1557, (f) Hotel Hilton International versus Hotel Hilltone Private Limited and Anr., 2005 (31) PTC 625 (IPAB), (g) Madanlal v. Shyamlal, AIR 2002 Supreme Court 100, (h) Chotesha and others v. Mt.Maktum Bi and others, A.I.R.1928 Nagpur 223, (i) Melappa and another v. Guramma and others, AIR 1956 Bombay 129, (j) State of Gujrat andAnr v. Mahendrakumar Parshottambhai Desai andOrs., 2002 (3)GLR 2249, (k) State of Gujrat andAnr. v. Mahendrakumar Parshottambhai Desai (Decd.) By L.Rs., 2006 (3) (S.C.) 1821, (l) Tarak Nath Sha v. Bhutoria Brothers Pvt. Ltd., AIR 1998 Calcutta 31, (m) New India Insurance Co. Ltd, Cochin V. V.N. Thankappan and others, AIR 1995 Kerala 40, (n) Videocon Narmada Electronics ltd. versus Navbharat Ferro Alloys Ltd., 2005 (0) GLHEL 215835, (o) Natha Singh and others v. The Financial Commissioner, Taxation, Punjab and others, AIR 1976 Supreme Court 1053 and P.M.Diesels Pvt. Ltd versus Thukral Mechanical Works and Anr, 2006(32) PTC 269 (Del.).
15. On the other hand Shri U.D.Shukla, learned counsel for respondent No.2, submitted that the appeal is not maintainable because the order against which this appeal is preferred is not an order which affects the rights or liabilities of the parties. It is not against the order which is made by the Assistant Registrar to decide the rights and liabilities of the parties but made merely to regulate to procedure. The order appealed against is made in an interlocutory petition seeking permission to file certain documents and ordered to be taken them on record. The impugned order is not an authoritative answer to the question raised before the Assistant Registrar/tribunal. Placing reliance upon the judgment of High Court of Delhi in the case of Rattan and Company versus Assistant Registrar of Trade Marks, PTC (Suppl) (1) 635 (Del), the learned counsel submitted that the order granting leave to file additional evidence and taking them on record passed in an interlocutory petition is not an order against which appeal can lie under section 91 of the Act. He further submitted that the final and definite result of the rectification application is yet to be determined by the Registrar and if after final determination of the controversy between the parties the appellant is aggrieved it open for it to raise the error, defect or irregularity, if any, in such an order as a ground of objection in its appeal from the final order.
16. Learned counsel submitted that the respondent No.2 being the registered proprietor of the impugned trade mark is entitled to file the counter-statement. The Assistant Registrar has after being satisfied, with the documents submitted, has served a copy of the rectification application and required the respondent No.2 to file counterstatement of the grounds on which the application is contested and the respondent No.2 accordingly filed the requisite counter statement. Therefore, the Assistant Registrar has followed the rule 93 of the Rules in its true spirit. Further, the Assistant Registrar has rightly served the copy of application on the respondent No.2 and correctly invited it to file counter statement. He would also submit that it is a proven fact that the impugned trade mark has been assigned on 19.9.2002 and for which the request was made on 4.10.2002 to register the subsequent proprietor.
17. Learned counsel, while denying the contention of the appellant that the Assistant Registrar has not used its discretion judicially, submitted that the Assistant Registrar has rightly rejected the submissions made before it in view of the fact that rule 53 of the Rules empower the Registrar to take documents on record in any proceedings at any time. He further submitted that it is wrong to say that in allowing the interlocutory petition the Assistant Registrar has ignored the settled principles of law much less the principle enshrined in the provisions of Order 13 Rule 2 of the C.P.C. Relying upon the decision in the matter of Billa Jagan Mohan Reddy and Another versus Billa Sanjeeva Reddy and Others (1994) 4 Supreme Court Cases 659, the learned counsel submitted that the evidence produced at the stage of arguments before the trial court can be taken on record.
18. Learned Counsel raised an objection to the averment made in the application and plea taken by the learned counsel for the appellant that the Assistant Registrar has given go bye to the provisions contained in rule 94 of the Rules that the appellant has not objected to this when the Assistant Registrar served the copy of Form TM-26 on the respondent No.2 and even when the respondent No.2 filed evidence in support of registration of the impugned mark. He submitted that the appellant by its own conduct waived its right to raise such contention and the appellant is estopped from making this contention/averment.
19. Learned counsel for the appellant in reply to the objection raised by the counsel for the respondent No.2 objected that such objection cannot legally be allowed to be raised by the counsel for the respondent No.2 for the first time at this stage as the respondent No.2 had not raised this objection in the counter-statement or there is not a whisper to such an objection in the pleadings and as such the same is outside the pleadings of the respondent No.2.
20. After having heard the learned counsel on either side and perusal of the records, the first issue before us is whether the impugned order is an order or decision within the meaning of sub-section (1) of section 91 of the Act which reads thus: â(1) Any person aggrieved by an order or decision of the Registrar under this Act, or the rules made there under may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal.â A plain reading of this sub-section clearly envisages three conditions to be there for filing an appeal, that firstly, the person should be a person aggrieved by an order or decision of the Registrar, secondly, the appeal may be filed within 3 months and thirdly, the period of 3 months be computed from the date on which such order or decision is communicated to the person preferring the appeal. We are for our present purpose concerned with the first condition as we are required to consider whether the appellant is aggrieved by the impugned order.
21. Before discussing the case on hand in the light of contention of the respondent No.2, we would discuss the dictionary meaning of the term and the law propounded by courts regarding the order passed or decision made by the court, tribunal or authority under a statute. The term âorder or âdecision has not been defined either in the Trade Marks Act. 1999 or in the Intellectual Property Appellate Board (Procedure) Rules, 2003 in which the term occur. According to Oxford Advanced Learners Dictionary, order means something that somebody is told to do by somebody in authority. Thus, the term âorder would indicate some expression of opinion which is to be carried out or enforced. It is the conclusion of a body (Courts, Authority or Tribunal) upon any motion (see State of Andhra Vs. Ballam Konda Venkata Subbaiah AIR 1957 AP 462, 463). According to Advance Law Lexicon, R Ramanatha Aiyar, âdecisionâ is a word which has been used for signifying the judgment of a court; a judgment given by a competent Tribunal. The term âdecisionâ is one which signifies the conclusion made by the authority and arrived at by him taking into account all attendant factors within his domine. It implies the exercise of a judicial determination as the final result and definite result of his examination of the questions before him. In the matter of Adi Pherozshah Gandhi v. H. M. Seervai, AIR 1971 Supreme Court 385, the Apex Court held that a person who feels disappointed with the result of a case is not a person aggrieved; the order must cause him a legal grievance by wrongfully depriving him of something. The Court at para 47 of its judgment quoted the observation of James, L. J. made in re Sidebotham (1880) 14 Ch D 458 thus: â But the words âperson aggrievedâ do not really mean a person who is disappointed of a benefit which he might have received if some other order had been made. A âperson aggrievedâ must be a man who has suffered a legal grievance, a man against whom a decision has been pronounced which has wrongfully deprived him of something or wrongfully refused him of something, or wrongfully affected his title to something. Further, in the same case at page 399, the Apex Court has observed that generally speaking, a person can be said to be aggrieved by an order which is to his detriment, pecuniary or otherwise or causes him some prejudice in some form or other. The High Court of Andhra Pradesh in the case of Divnl. Forest Officer, Eluru Vs. Distt. Judge, West Godavari, AIR 2002 AP 224 at para 7, the same High Court held that the term âorder' in legal parlance would always indicate some expression of opinion which is to be carried out or enforced; in other words, an order is a conclusion of a court or an authority or a tribunal upon any motion. In the case of Central Bank of India Limited v. Gokal Chand, AIR 1965 SC 799, the Supreme Court held that an order under the Act means that it is an order which affects the rights and liabilities of the parties. The High Court of Delhi in Ratan and Co. v. P. Narayanan, AIR 1977 Delhi 93 had occasion to consider the meaning of the words âfrom any order or decision of the Registrar under this Actâ which occurred in section 109(2) of the repealed Trade and Merchandise Marks Act, 1958. In that case Honble Avadh Behari Rohtagi, J has observed in paras 18 and 23 as under:-
"18. To my mind the object of section 109(2) of the Act is to give a right of appeal to a party aggrieved by some order which affects his right or liability. The words âfrom any Order or decision of the registrar under this Actâ though very wide do not include interlocutory Orders, which are merely procedural or processual and do not affect the rights and liabilities of the parties. The Legislature could not have intended that the parties should be harassed with endless expense and delay by appeals from such procedural orders. It is open to a party to set forth the error, defect or irregularity, if any, in such an order in as a ground of objection in his appeal from the final order.
23. A decision means a concluded opinion. It is an authoritative answer to the question raised before a court. It is the settlement of a controversy submitted to it. Decision implies the exercise of a judicial determination as the final and definite result of examining a question. An order granting extension of time is not of such a nature. It is not such a decision as to give the aggrieved person a right to appeal. It is just a procedural order in aid of proceedings.
22. In the appeal on hand, the order of the Assistant Registrar, though passed in an interlocutory petition, is not a merely procedural but it affects the rights and liabilities of the parties. Besides this, we cannot afford to ignore the brazen violation of rule 94 of the Rules as discussed hereunder. In the present case, as rightly contended by counsel for the appellant, the compliance of statutory requirement contained in rule 94 of the Rules (corresponding to rule 96 of the repealed Rules) has been given go bye by the respondent No.3. The rectification application on Form TM-26 is filed by the appellant/applicant before the Registrar of Trade Marks against the registered proprietor of the impugned trade mark AJANTA. Clause (v) of sub-section (1) of section 2 of the Act provides that âregistered proprietorâ, in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark. When the appellant/applicant filed the rectification application on 15.4.2002, the persons entered in the register were Manubhai Ukabhai Patel and others trading as M/s. Ajanta Transistor Mfg. Co. and accordingly rectification application lies against M/s. Ajanta Transistor Mfg. Co. (respondent No.1 herein). Even after service of copy of Form TM-26, respondent No.1 did not respond but the Trade Marks Attorneys of Ajanta India Ltd. requested respondent No.3 to serve a copy of Form TM-26 on it as its client has become the registered proprietor of the impugned trade mark. The Assistant Registrar, instead of serving copy of Form TM-26 on the Trade Marks Attorneys of respondent No 2, ought to have invited the attention of requirement of rule 94 of the Rules which provide that any person other than the registered proprietor, alleging interest in a registered trade mark in respect of which an application under rule 92 may apply on Form TM-27 for leave to intervene, stating the nature of his interest, and the Registrar may refuse or grant such leave after hearing (if so required) the parties concerned, upon such conditions and terms including undertakings or conditions as to security for cost as may be deemed fit to impose. Obviously, the Assistant Registrar totally overlooking rule 94 of the Rules, served a copy of Form TM-26 in an arbitrary manner and thus impliedly added the Ajanta India Ltd. as respondent No.2. The Assistant Registrar has the discretion to refuse or grant leave to intervene by a third party in the legal proceedings but he has no discretion to add a respondent without getting application amended by the applicant. It is also obvious from the records that the entry of Ajanta India Ltd., as the registered proprietor, was made in the register with effect from 6.12.2004. It is also evident from the impugned order that the Assistant Registrar has recognized or made the Ajanta India Limited as respondent No.2 to the rectification proceedings. It is beyond our comprehension as to how and under what authority the respondent No.2 was allowed to file counter statement, evidence and additional evidence through interlocutory petition by over looking the procedure prescribed therefore or without adding or impleading Ajanta India Ltd. as the respondent in the rectification proceedings. The Assistant Registrar, while considering the locus standi of Ajanta India Ltd., has recorded that as under:-
âIt is correct that as on the date of filing of the rectification proceedings, the registered proprietor of the mark was âAjanta Transister Clock Mfg. Co. and there was no Assignment of the mark in existence as on that date. But, at the same time, it is also correct that the said assignment of the mark is not after thought as the original registered proprietor i.e. âAjanta Transistor Clock Mfg. Co. was not aware of the fact that the applicant for rectification had instituted the present rectification proceedings against his registered Trade mark No. 535953 in Class â 3, the original registered proprietor came to know about the fact only when he was served with a copy of TM-26 vide official letter dated 25/9/2003; but before he received the copy, he had since assigned the said registered Trade Mark with other 37 in all 1 to 34 classes in favour of âAjanta India Limited vide Assignment Deed dated 19/9/2002. Purportedly, the said âAjanta Transistor Clock Mfg. Co. could have shown least interest in filing of the counter-statement because it was no longer remained as the registered proprietor of the mark in question by that time.
Further, in default of rule 93 for not filing of the counter-statement, the Registrar shall not however, rectify the register or remove the mark from the Register merely because the registered proprietor has not filed the counter-statement unless he is satisfied that the delay in filing the counter-statement is willful and is not justified by the circumstances of the case. Accordingly, the Registrar has to follow the rationale and scope of rule 93, because as on the date of service of a copy of TM-26 on it âAjanta Transistor Clock Mfg. Co., ceased to be the registered proprietor of the mark, and âAjanta India Ltd had come up with the justification of the circumstances that the said âAjanta Transistor Clock Manufacturing Co. had ceased to be registered proprietor of the mark and it had become the registered proprietor of the mark in question in the instant case by virtue of Assignment Deed dated 19/9/2002, so it has filed the counter-statement.â (Emphasis supplied).
In the above extracted finding, the Assistant Registrar admits that on the date of filing Form TM-26, the impugned trade mark was not assigned. The underlined portion of the above extracted finding of respondent No.3 is contrary to the facts on record. The Trade Marks Registry while acknowledging the receipt of application to the appellant vide letter dated 5.8.2002 has endorsed a copy thereof to respondent No.1 and there is no denial from the respondent No. 1 that it has not received the said endorsed copy, then on what basis the Assistant Registrar has arrived at such a finding. On the face of the facts mentioned above, we are unable to agree with the finding that respondent No.2 has locus standi to receive the copy of rectification application, file counter-statement, etc. The objection raised by the learned counsel for respondent No.2 that the appellant has not objected to the supply of copy of application and even when the respondent filed counter and evidence is not sustainable as the appellant has averred in he appeal that it came to know about the service of copy of application when a copy of counter-statement was served on it and, an objection to this effect has been raised in para 31 of the affidavit (see para 4). The impugned order in which respondent No.2 has been added as a party without having received Form TM-27 or even formally substituting it as respondent even after 6.12. 2004, when order for recordal of subsequent registered proprietor was passed by the Registrar, in place of the original registered proprietor cannot be sustained. We are afraid if the subsequent registered proprietor has been formally made a respondent in the rectification proceedings uptil now. Having found that the impugned order is not sustainable on account of non compliance of requirements of rule 94 of the Rules, we do not consider it necessary to go into the merits of the appeal and advert on the cited cases.
23. The result is that, we set aside the impugned order dated 3.5.2006 and remand the matter back to the Registrar for de novo proceeding, after formally making respondent No.2 a party to the rectification proceedings, in accordance with law. The Registrar may dispose of the matter as expeditiously as possible. There shall be no order as to costs.