(Circuit Bench at Ahmedabad)
HON'BLE SHRI Z.S.NEGI, VICE- 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 27.9.2005 passed by the Assistant Registrar of Trade Marks, Ahmedabad in opposition proceedings No.AMD-63292.
2. It is stated that the appellant is an internationally reputed and well established company incorporated under the Companies Act, 1956 and is carrying on business of manufacturing and sale of wide variety of goods, namely, adhesives, adhesive materials, construction chemicals, synthetic resins, synthetic polymers, pigments, surfactants, auxiliary chemicals, artists materials, artists colours, drawing instruments, paints, water based stainers/universal stainers since several years. The goods of the appellant are sold in India and exported to various countries worldwide. The appellant in fact is one of the largest manufacturers of adhesives in India.
3. It is averred that owing to their superior quality/reliability and the extensive publicity/promotion, various goods manufactured and sold under distinctive brand names by the appellant have become extremely popular and are very well known amongst the members of the trade and/or the general public both in India and various countries world over. As a consequence such of the goods of the appellant also generate substantial sales/revenues for the appellant. The appellant is the registered proprietor/proprietor of the trade marks âFEVI and âFEVICOL. The appellant is also the registered proprietor / proprietor of several other trade marks which bear the prefix FEVI and that prefix FEVI as appearing in such of the trade marks is undoubtedly and/or undeniably the dominant and prominent feature of the various trade marks of the appellant. The appellant has also obtained copyright registration of the several artistic works containing the trade mark âFEVICOL, the prefix FEVI and the device of two Elephants under the relevant provisions of the Copyright Act, 1957.
4. On or around the year 1998, the predecessor in title Milmet Laboratories Pvt. Ltd. of the respondent company stated to had honestly invented/coined without any reference to others a fanciful, inherently distinctive and different trade mark âFEVIDIP for use upon and in relation to medicinal and pharmaceutical preparations and made application under No. 834758 on 31.12.1998 in class 5 for registration trade mark âFEVIDIP which was advertised in the Trade Marks Journal No.1272 dated 1.6.2002 at page No.784. The said Milmet Laboratories Pvt. Ltd. was merged with Sun Pharmaceutical Industries Limited by an order dated 12.2.1999 passed by the Honble High Court of Gujarat at Ahmedabad and the request of respondent No.2 for change of owners name is pending before the Registrar. The appellant herein filed notice of opposition dated 4.9.2002 stating that by virtue of long, extensive and uninterrupted use of its numerous trade marks since 1965, the wide sales promotional efforts and publicity carried out by it through the various media in respect of the said trade marks and the high quality controls set maintained in relation to the said goods bearing the said trade marks, the members of the trade and the general public extensively associated the same with the appellant and none else. It is further stated that the said trade marks are the assets and are of immense value to the business of the appellant. Its goods bearing the said trade marks are immensely popular and have become a household name in India. Thereupon the Sun Pharmaceutical Industries Limited filed the counter-statement on or around 30.6.2003 and a copy of which was served upon the appellants erstwhile attorneys on 29.9.2003.
5. After service of counter-statement, the appellants erstwhile attorneys by filing Form TM-56 dated 25.11.2003 sought extension of time till 1.1.2004 to file evidence and the extension was allowed up to 29.12.2003. Intimation regarding rejection by the Registrar of Trade Marks of Forms TM-56 dated 30.12. 2003 and 3.2.2003 filed by the erstwhile attorneys of the appellant for further extension of time and that the matter has proceeded to next stage was given to the said attorneys vide letter dated 15.3.2004 of the Registry of Trade Marks. The Respondent No.2 filed reply dated 7.5.2004 under rule 51 of the Trade Marks Rules, 2002 (hereinafter referred to as the Rules). The appellant again sought fourth and fifth time extension till 1.7.2004 and 1.8.2004 by filing Forms TM-56 dated 21.5.2004 and 25.6.2004, respectively. The appellant on 8.10.2004 filed an interlocutory petition for taking of the evidence on record under rule 53 of the Rules and a copy of interlocutory petition was served on the respondent No.2 on 28.2.2005, to which the respondent No.2 strongly opposed. The said interlocutory petition was set down for hearing on 1.5.2004. After hearing the parties, the respondent No.1 fixed the matter for final hearing on the ground that the opposition has already proceeded to next stage.
6. Aggrieved by the impugned order dated 27.9.2005, the appellant has preferred this appeal seeking this Appellate Board either to allow the interlocutory petition dated 8.10.2005 and take on record the affidavit of Mr. Sushilkumar K. Parekh as further evidence or alternatively remand the matter to the Trade Marks Registry, Ahmedabad with direction to the respondent No.1 to allow the said interlocutory petition and adjudicate the opposition proceedings after taking the said affidavit on record as further evidence. The respondent No.2 has filed the counter-statement on 3.4.2006 denying the material averments made in the appeal and the appellant filed reply on 29.5.2006 under rule 11 of the Intellectual Property Appellate Board (Procedure) Rules, 2003.
7. The matter came up before us for hearing on 19.2.2008 at the Circuit Bench at Ahmedabad wherein Shri R.R.Shah, senior Advocate instructed by Khaitan and Co. appeared on behalf of the appellant and Shri Jatin Y. Trivedi, Advocate appeared on behalf of the respondent No.2
8. Learned Senior counsel for the appellant submitted that if the evidence in support of notice of opposition is not taken on record, it would not be possible for the Registrar to determine whether the appellants trade marks are well-known under sub-section (6), (7) and (9) for the purpose of protecting against the identical or similar mark of the respondent No.1 under sub-section (10) of section 11 of the Act having regard to the fact that the respondent No. 1 has dishonestly adopted and used its trade mark. He further submitted that the evidence will also be necessary to determine the issues required to be determined under sub-section (2) of section 11 of the Act.
9. Learned counsel for the appellant also submitted that respondent No.1 has failed to appreciate the well settled proposition of law that any relevant evidence forthcoming should not be shut out as further evidence and more so when such evidence is significant bearing affecting the proprietary rights of distinctive trade marks of honest traders. Such evidence should all the more not be denied from being taken on record where the delay is not deliberate or willful. It is noteworthy that the Registrar has power to grant leave to file further evidence is purely discretionary which is required to be exercised in good faith especially where there is good cause shown in the case. By taking a technical view, any delay which results in positive injustice to a party, should under no circumstances be permitted to occur. It is also noteworthy that the Apex Court has held that the procedural law is not to be a tyrant but a servant, not an obstruction but in aid of justice. Further, where the non-compliance of the procedure would thwart a fair hearing or prejudice doing of justice to parties, the rule is mandatory. But, grammar apart, if the breach can be corrected or remedied without injury to the disposal of the case, what otherwise may be a regulatory requirement cannot be enthroned into a dominant desideratum. After all, Courts are to do justice, not to wreck the end product on technicalities. Viewed in this perspective, even what is regarded as mandatory traditionally may, perhaps have to be moderated into wholesome directions to be complied within time or extended time. Ultimately the rules of procedure before any tribunal are for advancement of cause of justice and not to close the doors preventing the parties to get determination on merits.
10. Lastly the learned Senior counsel for the appellant submitted that in view of the grounds specified in the appeal, the appellant will suffer grave, irreparable loss and injury if the relief prayed for in the appeal are not granted. Therefore, the appeal may be allowed with costs. The learned senior counsel relied upon the following case law in support of his submissions:-
(1) Asian Paints Limited v. Registrar of Trade Marks and Anr., 2005 (30)PTC 444 (IPAB);
(2) Sanyo Electric Co. Ltd. v. The Assistant Registrar of Trade Marks, 2007 (34) PTC 156 (IPAB);
(3) Tata Motors Limited v. Cavincare Pvt. Ltd. and Ors., 2006 (32) PTC 717 (IPAB);
(4) Wyeth Holdings Corpn. And Another v. Controller General of Patents, Designs and Trade Marks, 2007 (34) PTC 1 (Guj.);
(5) Sunrider Corporation, U.S.A. v. Hindustan Lever Ltd. and Another, 2007 (35) PTC 388 (Del.);
(6) UCB v. Torent Pharmaceuticals Limite and Ors., 2007 (35) PTC 820 (IPAB) and
(7) Jagatjit Industries Limited v. The Registrar of Trade Marks, 2001 PTC 577 (Del).
11. Learned counsel for respondent No.2 on the other hand submitted that the appellant has miserably failed to file evidence in support of opposition despite extension of time granted up to 29.12.2003. The subsequent requests of the appellant for extension of time were filed after expiry of extendable time limit and the appellant in spite of making repeated and unreasonable requests for extension of time for filing evidence in support of opposition had grossly failed to file its evidence even till expiry of the last requested time limit i.e. 1.8.2004. The evidence which is the subject matter of interlocutory petition was filed only after 8.10.2004. It is pertinent to point out that the appellant opposed the application of respondent No.2 for registration which implies that the appellant was well aware that was required to file evidence in support of opposition within the statutory time limit. Despite this knowledge the appellant has taken more than two years from the date of opposition to retrieve its evidence whereas the same might or should have been well within the reach and control of the appellant. The appellant, by not filing its evidence have attracted the deeming fiction of rule 50(2) of the Rules. When the appellant has failed to file evidence under rule 50(1) no question of taking the further evidence under rule 53 of the Rules arises. Apart from this, the Registrar has limited power to extend the time for filing evidence not exceeding one month in aggregate after the stipulated limit of two months under rule 50(1) of the Rules. On face of these facts and circumstances, the respondent No.1 has rightly not allowed the interlocutory petition.
12. Learned counsel for the respondent No.2 submitted that the marks and goods of the appellant are dissimilar with the mark of the respondent No.2 and the trade channels are also dissimilar in respect of the goods of the rival mark. He asserted that in determining confusion or deception, the court has to have regard and consider certain factors which various courts have over the years laid down or recognised in deciding the issue of confusion or deceptive similarity of competing marks. Lastly, the learned counsel strenuously contended that the impugned order does not require to be interfered by this Appellate Board as the same has been passed in exercise of discretionary powers of the Registrar. The leaned counsel is support of his submissions relied upon the decisions in Surinder Corporation v. Hindustan Lever Limited and Anr., 2007 (2) CTMR 191 (Delhi) and Wander Ltd. and Another v. Antox India (P) Ltd., 1991 (11) PTC 1 (SC).
13. Learned counsel for respondent No.2 submitted by pointing out that the statement of the appellant made in paragraph 4 (i) and (ii) of the appeal are contradictory to its own statements in paragraph 2 of the Interlocutory Petition and as such the appellant has not come before this Appellate Board with clean hands and is confusing this Appellate Board. In the paragraph in appeal referred to above, the appellant has stated that the counter-statement dated 30.6.2003 was served on or about 30.9.2003 whereas in paragraph 2 of the Interlocutory Petition it is stated that the counter-statement was served on 1.5.2004 which contradiction is materially related with respect to date of filing the extension of time to file the evidence in support of notice of opposition and the appellant is required to be put to strict proof thereof.
14. After having heard both the counsel, the short issue required to be decided is as to whether Registrar has power to grant extension of time to the opponent for filing evidence beyond three months prescribed under rule 50 (1) of the Rules and where extension of such time is refused can the evidence be taken on record under rule 53 of the Rules?
15. Section 21 of the Act provides that the Registrar shall serve a copy of counter-statement to the opponent and any evidence upon which the opponent and the applicant may rely shall be submitted to the Registrar in the prescribed manner and within the prescribed time. The manner and time have, accordingly, been prescribed under rule 50 of the Rules.
16. Rule 50 of the Rules deals with evidence in support of opposition. Sub-rule (1) provides that the evidence in support of opposition is to be filed within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, (emphasis supplied)In other words the Registrar has discretionary power to grant extension of time not exceeding one month in aggregate and not beyond thereafter. Sub-rule (2) provides that if the opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition. Sub-rule(3) provides that an application for the extension shall be made in Form TM-56 with the prescribed fee before expiry of the period of two months mentioned in the sub-rule (1). In the appeal on hand extension of time was allowed upto 29.12.2003 and extension applications dated 30.12.2003 (application 30.12.2003 was filed after expiry of extended time) and dated 3.2.2004 both were rejected and order therefore along with intimation that the matter has proceeded to next stage was communicated to the attorneys of the appellant by letter dated 15.3.2004. The appellant neither challenged the said order nor filed evidence under sub-rule (1) of rule 50 of the Rules. When an application for extension is once rejected, the appellant could have sought legal remedy against the rejection order instead of applying extension thereafter also. The appellant did not file evidence in reply under rule 52 of the Rules. When the appellant has not filed any evidence or reply evidence under rule 50 or rule 52 of the Rules, no question of taking additional evidence on record arise. Additional evidence presupposes that there is evidence already available on record. Rule 53 is not in lieu of rule 50 of the Rules. The interlocutory petition does not contain any request for extension of time / condonation of delay as the evidence is evidently filed much after the extended time. In the decisions in the cases relied upon by the learned counsel for the appellant, the thrust have been that the Registrar has discretionary power to grant extension of time for filing evidence in support of opposition. In Asian Paints Limited (supra) it was held by this Appellate Board as under:-
âIt is true that Rule 50 in its new incarnation has undergone changes of fundamental character. However, the settled proposition of law is that the provisions in the subordinate legislation have to be in conformity with the provisions of the principle legislation. Section 131 as interpreted by the Courts by virtue of its parallel provision in section 101 under the Trade and Merchandise Marks Act, 1958 is very much in place in its old form which unambiguously confers a discretionary power to the Registrar to grant extension. It is a settled proposition in law that the discretion of the Registrar under section 131 of the Act extends to the grant of extension in matters of filing of evidence in opposition. In view of the above, the Registrar was very well competent to grant extension to the appellant in filing their evidence in opposition. Registrar also did not wait for the filing of evidence by the respondent. The society has a vital interest in the purity of the Register and for that matter to get to know the grounds for claiming the registration of the mark. The Registrar should have insisted on the filing of the evidence by the respondent. So that by putting his reliance thereupon he could discuss and give his reasons in the impugned order. The impugned order has been drawn up in a very sketchy manner. Quasi-judicial orders affecting the vital interest of the society should be put down in a more serious manner.â
The Honble High Court of Gujarat in Wyeth Holdings Corpn. and Another (supra) has held as under:-
âIn view of the aforesaid discussion, in view of the settled legal position that subordinate legislation cannot travel beyond the scope of main legislation and having regard to the provisions of Section 131 which provides for extension of time, this Court has only two options, either to declare sub-rule (2) of Rule 50 as ultra vires the Act or by employing principle of âharmonious construction, to read sub-rule (2) of Rule 50 to be a âdirectory one.
In the considered opinion of this Court, there is no reason much less a compelling reason for which the first option should be exercised and the âRule be struck down by holding it to be âmandatory. As against that, it is a well settled position of law that principle of âharmonious construction should be pressed into service and sub-rule (2) of Rule 50 be read as âdirectory. This Court is of the opinion that by declaring sub-rule (2) of Rule 50, âdirectory, no injustice or prejudice is going to be caused to any party. On the contrary, it will be serving the interest of justice. Hence, second option is exercised. Sub-rule (2) of Rule 50 is held to be âdirectory in nature.
However, it is clarified that holding sub-rule (2) of Rule 50 to be âdirectory does not take away the powers of the Assistant Registrar 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. As against that, to hold sub-rule (2) of Rule 50 as âmandatory, will devoid the Assistant Registrar of his power to exercise discretion in appropriate cases. This Court is of the opinion that the first option, empowering the Assistant Registrar to exercise the discretion in appropriate cases on the merits of the grounds put forward for extension of time, is the one to be preferred.
With these observations, the petition is allowed. Sub-rule (2) of Rule 50 is declared to be âdirectory. It is also held that the Assistant Registrar does have power to grant extension of time in light of the merits contained in the grounds on which the extension is sought for.â
17. In all the cases relied upon by the appellants counsel [except in Sunrider Corpn. (supra)] it was consistently viewed that the Registrar can extend the time for filing evidence in support of opposition. In the appeal on hand, it is true that the appellant has not filed evidence under sub-rule (1) of rule 50 of the Rules and the Registrar has not dismissed the opposition by invoking the deeming provision of sub-rule (2) but directed to proceed the matter to next stage and the Sr. Examiner of Trade Marks directed to issue fresh notice for final hearing. There can be no dispute that for proper adjudication of the matter evidence will be necessary without which the Registrar may not be able decide the issues involved in the matter. We are, therefore, of the opinion that the evidence at first stage should not have been shut out in the interest of justice but the appellant has not acted in accordance with the provisions of the Rules. We have already said that there is no question of filing additional evidence without there being filed evidence under 50(1) and reply evidence, if any, under rule 52 of the rules. There is no request made for extension of time. The interlocutory petiton which is subsequent to filing of extension application in Form TM-56 dated 25-06-2004 does not make any mention about the TM-56 dated 25.6.2004. The Sr. Examiner of Trade Marks has admitted in her order that the whole arguments of the counsel was surrounding the delay in collection of old evidence but it appears that the appellant has not given any details to the Sr.Examiner regarding action taken or attempts made by the appellants to retrieve the evidence. The main reason for not allowing the interlocutory petition was that since the Rules are very specific about the time limit and limit for extension of time. Thus the present interlocutory petition cannot be allowed. In the above discussion we have noticed that the reason recorded in the impugned order does not require to be interfered by this Appellate Board. Since Honble High Court of Gujarat is the jurisdictional High Court for the purpose of cases arising under the Act which are put up before the Bench of this Appellate Board sitting at Ahmedabad, the decision in Wyeth Holdings Corpn. and Another (supra) shall be binding on this Appellate Board. The appellant has though tried to set up the case heavily on and around rule 50 of the Rules but we are of the opinion that the application of rule 50 is relevant till the application for extension of time was not refused. Once such an application is refused by the Registrar and the appellant has not challenged the rejection order, the question as to whether the Registrar has power to grant extension of time beyond three months prescribed under rule 50(1) of the Rules ceases to be an issue in this case. Without complying the requirements of rule 50 and ignoring its application in TM-54 FILED ON 25.4.2004, the appellant cannot be allowed to file additional evidence. In such circumstances the interlocutory petition of the appellant amounts to abuse of legal process .
18. In view of the above, we see no merit in the appeal and accordingly the appeal is dismissed. There shall be no order as to costs.