(Circuit Bench Ahmedabad)
HON'BLE SHRI Z.S.NEGI, VICE- CHAIRMAN:
These appeals under section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) are directed against the three orders all dated 9.5.2005 passed by the Assistant Registrar of Trade Marks, Ahmedabad, whereby he treated the opposition Nos. AMD-190624, AMD-190625 and AMD-190626 as time barred and disposed them of as rejected and, accepted for registration the application Nos. 630740,630742 and 630743B.
2. The appellant is stated to be a company, engaged in the business of manufacturing and marketing consumer and industrial products and services for the last few decades which had adopted various trade marks such as NIRMA, SUPER NIRMA and NILAM for different goods covered under different classes and obtained registration of about 85 trade marks which are renewed, valid and subsisting till today. The appellant has also made about 179 applications for registration of trade marks NIRMA, SUPER NIRMA and NILAM under various classes and the same are pending registration. Similarly, the applications for registration of trade marks in about 17 other countries of the world are pending. The appellant has got the numerous label marks NIRMA registered under the Copyright Act, 1957. It is the contention of the appellant that the respondent No.1 had made three applications No. 630740, 630742 and 630743B for registration of trade mark NIRMAN under classes 24, 7 and 23, respectively. The said applications were advertised before acceptance in the Trade Marks Journal No.1326 Suppl. (1), dated 27.12.2004. The said Trade Marks Journal was made available to the public on 14.1.2005 which fact is certified by the Controller-General of Patents, Designs and Trade Marks. After receipt of the said Journal on 25.01.2005, the appellant filed oppositions on 23.4.2005 which were numbered as AMD-190624, AMD-190625 and AMD-190626. It is averred that the Assistant Registrar of Trade Marks without affording any opportunity of being heard to the appellant rejected all the three oppositions which rejections are illegal and also amount to miscarriage of justice. Aggrieved by the impugned order dated 9.5.2005, the appellant filed the present appeals raising same or similar objections under sections 9, 11, 12, 18 and 29 of the Act which were raised in the notice of oppositions.
3. Though the notice in Form-C under rule 10 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 has been served on the respondent No.1 on 21.9.2006, the respondent No.1 has not chosen to file Counter-statement either directly or through its agent. The appeals came up for hearing before us at the Circuit Bench sitting at Ahmedabad on 19.2.2008 when Shri Y.J. Trivedi, Advocate appeared on behalf of the appellant but none represented the respondents. As the facts and the issues involved in all the three appeals were similar and parties were also same, it was decided that OA/46/2005/TM/AMD be taken up for arguments and the decision arrived at in that original appeal 46/2005/TM/AMD shall be applied to the other two OA/47 and 48/2005/TM/AMD.
4. Shri Y. J. Trivedi, learned counsel for the appellant contended that though the application for registration of the trade mark of respondent NO.1 was advertised before acceptance in the Trade Marks Journal dated 27.12.2004 but on the date of the said advertisement, the Office of the Assistant Registrar of Trade Marks, Ahmedabad was not having the copy of the said Journal. As the trade marks applied for registration by the respondent No.1 were deceptively similar, structurally as well as phonetically, to the well accepted and well known in the domestic market and also internationally reputed trade marks of the appellant, therefore, the appellant was required to file the oppositions to the applications for registration of the respondent No.1. The said publication dated 27.12.2004 was received by the attorney of the appellant very late only on 25.01.2005 and accordingly, the opposition was posted in Ahmedabad by speed post on 23.04.2005 and the same was received by the Registry of Trade Marks on 25.4.2005. Learned counsel submitted that the opposition is as such within the period of three months. The learned counsel in support of his submission relied upon the decisions in Anup Engineering Ltd. v. Controller of Patents, New Delhi and Ors., Gujrat Law Reporter Vol. XXIII (2) 1982 (2) and Gokul Spices Private Limited v. Ramdev Food Products Private Limited, 1998 (0) GLHEL 203724. The learned counsel submitted that though the opposition (Form-5) was within the period of three months, still the Assistant Registrar of Trade Marks, Ahmedabad, who has given the number to Opposition as AMD/190624, has not given any opportunity of being heard to the appellant and passed the impugned order on the ground that the opposition filed by the appellant is beyond the prescribed time limit under rule 47(6) of the Trade Marks Rules, 2002 (hereinafter referred to as the Rules). The learned counsel submitted that the respondent No.2 has passed the impugned order without applying the proper procedure or rules and has committed a gross error in passing the same without giving any reasons and without considering the merit, and as such, the impugned order is nothing but miscarriage of justice.
5. After carefully hearing the learned counsel and perusal of the records, the central issue that emerged for our decision is whether the impugned order of the respondent No.2 rejecting the opposition on the ground of barred by limitation/time is illegal and liable to be quashed?
6. Section 21 (1) of the Act and rule 47 (1) and (6) of the Rules are relevant for deciding the issue before us. Sub-section (1) of section 21 of the Act provides that an opposition may be filed by any person within three months from the date of advertisement or re-advertisement of an application for registration or within such further period not exceeding one month in aggregate as the Registrar, on application made to him in the prescribed manner and on payment of prescribed fee allow. From the plain reading it is clear that any person may, either give notice of opposition to the registration in writing in the prescribed manner and on payment of prescribed fee, to the Registrar within three months from the date of the advertisement or re-advertisement of an application for registration, or such notice can be given to the Registrar within such further period not exceeding one month in aggregate as the Registrar may, on application made to him in the prescribed manner and on payment of prescribed fee, allow. On conditions specified in the above referred sub-section being fulfilled, the Legislature has thought fit to leave it to the Registrar to extend the time not exceeding one month in aggregate. Similarly, rule 47(1) of the Rules provide as under:-
â47. (1) A notice of opposition to the registration of a trade mark under sub-section (1) of section 21 shall be given in triplicate on Form TM-5 within three months or within such further period not exceeding one month in the aggregate from the date the Journal is made available to the public (which date shall be certified by the Registrar as such). The notice shall include a statement of the grounds upon which the opponent objects to the registration. If the registration is opposed on the ground that the trade marks in question resembles marks already on the register, the registration numbers of such trade marks and the dates of the Journals in which they have been advertised shall be set out.â
A plain reading of the aforementioned sub-rule explicitly provide that a notice of opposition may be filed within three months or definitely within four months, subject to other conditions of the rule being fulfilled, from the date of Journal was made available to the public and the date on which Journal was made available to the public is required to be certified by the Registrar. Rule 47(1) of the Rules read with section 21(1) of the Act clearly establishes that a notice of opposition filed after three months has to be accompanied by the prescribed application and prescribed fee for seeking an extension of time, beyond three months to file the notice of opposition. Sub-rule (6) of rule 47 of the Rules which prescribe the form of application and the fee to be paid reads as under:-
â 47. (6) An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given under sub-section (1) of section 21, shall be made on Form TM-44 accompanied by the fee prescribed in First Schedule before the expiry of the period of three months under sub-section (1) of section 21.â
The above extracted sub-rule provides that an application for an extension of the period within which a notice of opposition to the registration be given under sub-section (1) of section 21 of the Act should be made, before expiry of the period of three months as specified in sub-section (1) of section 21 of the Act, in Form TM-44 accompanied by the fee prescribed in First Schedule. The implication of the aforementioned sub-rule is that the extension application to the Registrar should be made before expiry of three months period specified in sub-section (1) of section 21 of the Act. If such interpretation is given to the said sub-rule, it would be contrary to the legislative intent and would defeat the purpose for which the Legislature has conferred the discretionary power on the Registrar to allow extension of time not exceeding one month in aggregate. We have already stated that while enacting section 21(1) of the Act, Legislature has in its wisdom thought fit to leave it to the discretion of the Registrar to allow extension of time to give notice of opposition to registration not exceeding one month in aggregate and such discretionary power conferred on the Registrar cannot be taken away by making rules contrary thereto. It is the settled law that rules cannot override the provisions of the Act. By resorting to the principle of harmonious construction, the aforementioned sub-rule should be interpreted that an application for extension of time to file an opposition to registration can be made to the Registrar at any time before the expiry of four months of the date of the Trade Mark Journal containing the relevant advertisement was made available to the public.
7. Now coming to the appeal on hand, it is undisputed that the Controller-General of Patents, Designs and Trade Marks has certified that the Trade Marks Journal No.1326 Suppl. (1), December 27, 2004 was made available to the public on 14.01.2005 and it is also undisputed that the Central Government has appointed the Controller- General of Patents, Designs and Trade Marks to be the Registrar of Trade Marks for the purposes of the Act. Accordingly, the computation of period of three months would begin from the date as certified by the Registrar and the date within which notice of opposition could be filed was 13.4.2005, whereas the appellant has posted its notice of opposition on 23.4.2005 without accompanying any application for extension of time. There is no whisper in the appeal as to what prevented the appellant to make application in Form TM-44 and when the appellant was aware of the date of making journal available to the public was certified as 14.01.2005 by the Registrar. We are of the view that the purpose for which the provision is made in the rule 47(1) requiring the Registrar to certify the date of journal made available to public is to notify the exact date to be reckoned with by all the persons concerned in computing the period of three months for giving notice of opposition to registration and thus to obviate any confusion in relation thereto amongst the proposed opponents. The contention of the appellant that it has filed the opposition on 23.4.2005, after its attorney received the journal on 25.1.2005, is not acceptable as that would be defeating the purpose with which provision for certifying by the Registrar the date of journal made available to the public is made in rule 47(1) of the Rules. There is no evidence available on record to prove the exact date on which the attorney received the trade mark journal. It is evident that the appellant posted the notice of opposition on 23.4.2005 that is to say much beyond the three months. Even after the notice of opposition was posted, the appellant was not diligent or vigilant enough to enquire from the Registry of Trade Marks, Ahmedabad about the status of its notice of opposition. Suffice to say that the appellant failed to act diligently, even the appellant could have filed the opposition before 13.5.2005 and the appellant has failed to make out any cogent ground on which the impugned order could be quashed. We do not agree with the submission of the learned counsel that the respondent No.2 has passed the impugned order without applying the proper procedure or rules and without giving reasons. The respondent No.2 has applied the proper rules and found the opposition barred by time limit provided in sub-rule (6) of rule 47 of the Rules and that fact itself is a reason for rejection of the opposition. The prayer made in the appeal that by quashing the impugned order this Appellate Board may remand the matter back to the Assistant Registrar of Trade Marks, Ahmedabad cannot be acceded to as no cogent ground has been made out requiring to quash the impugned order and also the Registrar has no power to allow extension of time for filing opposition after 13.5.2005. However, the appellant has other remedy available under the Act which the appellant can resort to other remedy if it is so advised. The case law relied upon by the learned counsel for the appellant will not be of any help to the appellant as the facts therein are different from the facts of the present appeal.
8. In view of the above, the appeal has no merit and deserves to be dismissed. We accordingly, dismiss the appeal without any order as to costs. By applying the conclusion arrived at by us in this paragraph, we dismiss the OA/47 and 48/2005/TM/AMD also without any order as to costs.