Honble Shri Z. S. Negi, Chairman:
This Miscellaneous Petition has been filed in the above mentioned appeal for stay of operation of the impugned order dated 2.1.2007 passed by the Registrar of Trade Marks in opposition No. MAS-116932 to the application No. 714240 in class 30.
2. The case of the appellant is that it being a registered proprietor of the trade mark DUKE under No. 561528B in class 30 filed an opposition to application No. 714240 filed by the respondent No.1 for registration of trade mark DUKES in class 30. Eventually the respondent No. 2 treated the opposition No. MAS-116932 as deemed to have been abandoned in pursuance of rule 50(2) of the Trade Marks Rules, 2002 (hereinafter referred to as the Rules) and allowed the application No. 714240 of the respondent No.1 to proceed to registration. The appellant has preferred an appeal against the impugned order of respondent No. 2 along with the present application for staying the operation and effect of the impugned order dated 2.1. 2007 and restraining the respondent No. 2 from issuing registration certificate to the respondent No. 1 during the pendency of the appeal.
3. It is stated in the application for stay that the impugned order passed by the respondent No. 2 is bad in law as and cannot be sustained as the respondent No.2 has neither applied the correct principles of law nor appreciated the entire facts and circumstances of the case. It is further stated that prima facie case and balance of convenience lie in favour of the appellant as the appellants mark is being diluted by the impugned mark of the respondent No.1 and the appellant is suffering and shall continue to suffer and the entire purpose of filing the above appeal will become infructuous and the whole exercise will go in vain if operation of impugned order is not stayed and respondent No. 2 is not restrained from issuing the registration certificate.
4. The respondent has filed its reply stating that the appellant has not shown any balance of convenience and any prima facie case. It is further stated that there will not be any irreparable loss to the appellant as the respondent No.1 is in the business for the last several years using the trade mark DUKES (logo) and the volume of its business is crores of rupees; the respondent will be put to great loss if the certificate is not awarded to the genuine user of the trade mark.
5. Learned counsel for the appellant, by pointing out to an order dated 18.9.2007 passed by the respondent No. 2 directing to take the evidence of the appellant on record subject to payment of Rs.3000 as cost to the respondent No.1 and the appellant to file request for extension of time from 21.8.2004 till 3. 8.2007 on Form TM-56 within two weeks, submitted that from the said order it was not clear as to whether the evidence has been taken on record under rule 50 or rule 53 of the Rules. Since there was a lack of appreciation/mentioning of distinction and difference between the two rules, a review petition giving sufficient reason for the same was filed. The appellant also filed From TM-16 seeking amendment of its notice of opposition by inserting paragraph 4A therein. The respondent No. 2 treated the opposition as deemed to have been abandoned in pursuance of rule 50 (2) of the Rules and also did not pass any order on the review petition and Form TM-16 on the ground that since the opposition is already deemed to have been abandoned, the question of passing any order on the review petition or TM-16 does not arise and in any case the same is devoid any merits and deserves outright rejection.
6. On the other hand learned counsel for the respondent No.1 Vehemently opposed the stay application stating that the application has no merits and the appellant has come before this appellate Board with malafide intention by suppressing the facts. He submitted that the appellant is not a genuine user of the trade mark and has suppressed the fact that a suit for infringement is filed and pending before the District Court, Delhi. Learned counsel submitted that there will not be any irreparable loss to the appellant as alleged but the respondent No.1, who is the genuine user of the mark, will be put to a great loss in case certificate of registration is not issued to the respondent No.1.
7. After hearing the counsel on either sides and looking at the impugned order, we are of the view that a prima facie case has been made out by the appellant that the impugned order has not been passed on merits but on procedural technicalities. Generally speaking, procedure is to facilitate the justice not to mar the justice. The balance of convenience is in favour of the appellant as in the event of stay being granted against the issuance of registration certificate, the respondent can continue to carry on its business by using its trade mark under the common law right. However, in the light of submissions made by the learned counsel for the respondent No.1 in relation to use of trade mark and the volume of business the respondent No.1 is doing, it will be difficult to say that no prejudice or injury will be caused to the respondent No.1 by staying the operation of the effect of the impugned order dated 2.1. 2008. In our considered opinion, it will meet the ends of justice if the respondent No. 2 is restrained from issuing the registration certificate until the present appeal is disposed of by this Appellate Board. The decision in Anand Bansal v. Shiva Tobacco Company and Anr., 2006 (33) PTC (IPAB) and Sunrider Corporation, U.S.A. v. Hindustan Lever Ltd. and Another, 2007 (35) PTC 388 (Del.) relied upon by the respondent No.1 are distinguishable on facts and will be of no help to the respondent No.1 in this stay application.
8. In view of the above, the miscellaneous application is partly allowed in terms of prayer (2) of the application restraining the respondent No. 2 from issuing the certificate of registration. Accordingly, it is directed that the respondent No.2 shall not issue the certificate of registration under application No. 714240 in class 30 to the respondent No.1 till the disposal of the present appeal by the Appellate Board. The miscellaneous petition No. 44/2008 is ordered accordingly in terms as above. There shall be no order as to costs.