1. This will dispose of an Interlocutory Petition dtd. 21.6.2004 filed by the petitioner/opponent alongwith evidence in support of opposition inter alia praying for taking the said evidence on record under Rule 50(1) of the Trade Mark Rules, 2002.
On filing of the counter-statement by the applicant, a copy of the same was served on the opponent vide official letter dated 13.2.2003 inviting their attention to the erstwhile Rule 53(1) to file evidence in support of opposition within the prescribed period of two months from the date of service on them, but, the opponent neither filed evidence, nor relied on the facts stated in the Notice of Opposition as required under the erstwhile Rule 53(1). After more than 6 and half months from the date of receipt of the counter-statement by them, the opponent abruptly, filed a request on Form TM-56 on 5.9.2003 for extension of time for an accumulated period of six months under the erstwhile rules, which was allowed and the extension of time granted from 14.4.2003 to 14.10.2003 vide official letter dated 4.3.2004, simultaneously inviting the applicant's attention to Rule 51 to lead evidence in support of application. Further, the opponents did not file any evidence in support of opposition within the extended period i.e. on or before 14.10.2003. Since, the new trade mark law came in to force on 15.9.2003 and it was a transitional period of replacement of the new Trade Marks Law in place of the erstwhile Trade and Merchandise Marks Act, 1958 and Rules framed thereunder and the office staff was still getting acquainted with the procedure in terms of the new Trade Mark Rules, 2002, instead of taking an appropriate action under Rule 50(2), the applicants' attention was inadvertently, invited to Rule 51 to file evidence in support of application vide official letter dated 4.3.2004 and accordingly, the applicant filed evidence in support of application as per Rule 51 on 17.5.2004. Even the evidence filed by the applicant was also beyond the prescribed limit of two months in terms of Rule 51. After 8 months from the expiry of extended period, the opponents filed the Interlocutory petition alongwith the evidence in support of opposition as well as the evidence in reply, inter alia praying for taking the same on record and for any other relief.
3. The Interlocutory petition came up for final hearing before the undersigned on 5.4.2005, when Mr. Utkarsh Tewari, Advocate of International Trade Marks Bureau for the opponents and Mrs. Meghasi Adharayu, Advocate of Jatin Y. Trivedi & Co. appeared for the applicants and argued in respect of the said Interlocutory petition.
4. Mr. Utkarsh Tewari argued at length submitting that the rules are handmaid and are framed to implement the Act effectively and cannot be substituted in place of the statute. He emphasized that the Rules being procedural law should be in-confirmity with the principal law and in any case cannot override the statute and rather can be relaxed to meet the end of justice and in the interest of the public and purity of the Register in genuine cases. He referred to the preamble of the Act and vehemently argued that the purpose of the Trade Marks Act, 1999 is to provide for registration and better protection of Trade Marks for goods and services and prevent the use of fraudulent marks. He submitted that the impugned Trade Mark being deceptively similar to the opponents' registered trade mark would amount to negation under the preamble of the Act. He contended that the Registrar had power to extend the time under Section 131(1) of the Act, even after the expiry of the prescribed time and the evidence led by the opponents in support of opposition which is vital and barely required for fair adjudication of the case may be taken on record in the interest of natural justice and conscience. Also the written submissions filed by the petitioner were also duly considered. He relied on various judgments including.
Kantilal Tulsidas Jobanputra v. The Registrar of Trade Marks and Anr. of High Court of Bombay 1982 PTC 127.
Torrent Pharmaceuticals Ltd. v. Union of India and Ors.
Hastimal Jain v. Registrar of Trade Marks and Anr. 2000 PTC (24) DEL, Asian Paints Ltd. v. Registrar of Trade Marks and Anr. 2005 (30) PTC IPAB 444 5. Mrs. Adharayu, Advocate for the applicants present at hearing submitted that in the present case, the opponents had already been granted extension of six months, but they had failed to file evidence in support of opposition even in the time of eight months from the date of receipt of counter-statement by them and after the lapse of further 8 months from the expiry of the extended time, they tendered the evidence on 21.6.2004 alongwith the I.P. How such evidence be taken on record at this belated stage? Are the opponents not required to follow the provisions of Rule 50(1)? Are they not aware of the law or are they not making the mockery of the law?, she said. Mrs. Adharayu vehemently, argued that the opportunity given to the opponents by granting extension from 14.4.2003 to 14.10.2003 to file evidence had not been availed by them and they had by their own inaction abandoned the opposition under Rule 50(2); they could no longer be favoured now, and the Registrar was also not equipped with such power to grant any further extension of time in terms of Section 21(4) read with Rule 50(1). She refers to Rule 50(1) and submits that there is no provision for extension of time beyond one month in aggregate after the expiry of statutory time limit of two months. She emphasized that, if the opponents had not adduced the evidence within the prescribed period of two months or within further period of one month in aggregate thereafter or had not informed to the Registrar and to the applicant in writing that they did not intend to adduce the evidence in support of opposition, but desire to rely upon the facts stated in the notice of opposition, they shall be deemed to have abandoned their opposition under Rule 50(2). Mrs. Adharayu has submitted that it is not the case of the opponents that they don't know the law, which does not permit the evidence to be filed or to be taken on record, if it is tendered beyond the time limits prescribed under Rule 50(1) and that they have not willfully disobeyed the law of land; It is not the case of the opponents that he has come up with the I.P. with any justifiable ground for delay occurred in tendering the evidence or he has specified any justifiable reason for delay even before the Tribunal at the hearing and it is not the case of the opponent, that he has justified the delay or negligence in tendering the evidence at the belated stage and that the flimsy grounds taken in the I.P. under the shadow of the natural justice, preamble of the Act, purity of the Registrar etc. are not dilatory tactics and ought not to prejudice the applicant's rights of registration of the trade mark in question for last 8 years and that the applicant has not suffered mentally, physically, economically and commercially due to such dilatory tactics adopted by the opponent. She argued that since the opponents had disobeyed the law, they are not entitled to any equitable relief. Therefore, the Interlocutory petition filed by them be dismissed and the evidence tendered with the I.P. may not be taken on record and the opponents be penalized by awarding an exemplary cost, sue prayed.
6. I have gone through the official record and the proceedings of the case and have duly considered the arguments advanced by advocates of the both sides. In view of the arguments and the contentions took by the parties as above, the question emerged herein is- 1. Whether the Registrar is empowered to extend the time beyond one month in aggregate to file evidence in support of opposition, 2. When the opponent fails to take any action within the time limits prescribed under Rule 50(1), then, whether the provisions of Rule 50(2) come into operation, automatically, 3. Whether the Trade Marks Rules, 2002 set under the statute are merely procedural and not meant for orderly compliance, 4. Whether by virtue of the provisions of Section 131(1) of the Act, the Registrar is empowered to enlarge the aggregate of time limit of three months prescribed in Rule 50(1) of the Trade Marks Rules, 2002 more particularly in view of the provisions of Section 21(4) of the Act.
7. The question whether the Registrar is empowered to extend the time beyond one month in aggregate as enshrined in Rule 50(1) has already been discussed at length in earlier decision on the Interlocutory petition in the case of Torrent Pharmaceuticals Ltd. v. UCB 2005 (31) PTC 14 wherein the decision of Hon'ble High Court of Delhi (2000 PTC - 24 DEL FB) has already been dealt with.
Before the above stated issue proceeds further, it is incumbent to refer to the erstwhile Rule 53(2)- if an opponent takes no action under Sub-rule (1) within the time therein prescribed, he shall, 'unless the Registrar otherwise directs', be deemed to have abandoned his opposition.
8. Evidence in support of opposition under Rule 53(1) of the Trade and Merchandise Marks Rules, 1959. Though, the Act of 1958 does not lay down any time limit for the evidence to be submitted by either of the parties. The words "unless the Registrar otherwise directs" appearing in Rule 53(2) indicates that the Registrar has a discretion to treat the opposition as subsisting by extending the time limit to file the evidence in an appropriate case, but, that does not mean that in each and every case, the Registrar is required to extend the time irrespective of the conduct of the opponent in its failure to comply the rules and that also to the detriment to the rights of the applicants. The Ld. Joint Registrar of Trade Marks in his decision in Brooke Bond India Ltd. v. Shah Shantilal & Co. 1991 PTC 302 held "though Rule 53(2) is not mandatory, but directory, even then the Rule 53 is intended for the orderly conduct of proceedings and the time limit prescribed therein is meant to be adhered to and not violated with impunity on the assumption that the Registrar was bound to grant extension of time whenever applied and whatever the laches on the part of the opponents." 9. In has been held by the Hon'ble Delhi High Court "that if the exponent does not take any action prescribed under Rule 53(1) and the Registrar does not otherwise direct, the operation of the rule deeming the opposition to be abandoned becomes automatic. No further order by the Registrar is necessary before it comes into play. Hence, as soon as the two months' period expires without any action being taken by the opponent, the opposition is deemed to be abandoned." as held in the case of Indian Medicines Industries v. Pharma Labs 1988 PTC 241.
10. In the decision reported in (1995 (15) PTC 81 Del), the Ld. DY.Registrar of Trade Marks, Delhi held "Rule 53(2) is mandatory, the application for extension of time for filing evidence is required to be filed before the expiry of statutory period of two months as indicated in the rules itself. Since Rule 53(2) is a deeming provision and automatically comes into operation for treating the opposition as to have been abandoned by the opponents themselves, the Registrar had no power to call for evidence under. Rule 54, since this action amounts to procedural ultra vires and suffers from jurisdictional error. In the circumstances, the interlocutory petition is disallowed and the opposition is deemed to have been abandoned." 11. Even if, the opponent does not comply with the requirements of Rule 53(1), the Registrar in view of the expression "unless the Registrar otherwise directs" in Rule 53(2) can proceed with the opposition and direct the applicant to file evidence in support of the application.
Since the rule does not stipulate any time limit for the Registrar to exercise this power to direct otherwise, he can "otherwise direct" even after the expiry of the period prescribed under the rule. No doubt this should be done within a reasonable time, but what is reasonable time in this context will depend upon the administrative environment like work load, staff position, arrears of work and so on. Griffin Laboratories v. Clover Pharmaceuticals (1991) PTC 89 at 92.
12. Before implementation of the Trade Marks Act, 1999 through the Rules framed thereunder, despite the legal fiction being not absolute and the same being limited and controlled by the discretion of the Registrar by words "unless the Registrar otherwise directs", the erstwhile Rule 53(2) was held mandatory by different forums including the High Court. Now, let me see the intention of the Legislature and the drastic change of fundamental characters undergone in Rule 50 as well in other rules of 2002.
(1) Within two months from service on him of a copy of the counter statement or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, the opponent shall adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition, but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
(2) If an opponents takes no action under Sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.
(3) 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.
14. Rule 50 consists of three parts. Sub-rule (1) provides that within 2 months from service on him a copy of the counter statement or within such further period of one month in aggregate thereafter the opponent, has either to adduce the evidence in support of opposition or to intimate to the Registrar and to the applicant that he does not desire to adduce evidence in support of opposition, but intends to rely on the facts stated in the notice of opposition. Sub-rule (3) is supplement to Sub-rule (1) and talks about the manner and time for filing the extension of one month as referred to in Sub-rule (1). The request for extension of one month time shall have to be filed by the opponent on Form TM-56 before the expiry of statutory period of two months from the date of receipt of a copy of the counter statement by him. If the said request for extension under Sub-rule (3) is made after the prescribed time of two months even then, Rule 50(1) is violated and Rule 50(2) comes into operation automatically. Sub-rule (2) of Rule denotes as follows: (1) An opposition must be deemed to have been abandoned if the opponent fails to file evidence in support of opposition or intimate to the Registrar and to the applicant as to his reliance on the facts stated in the notice of opposition, within the time prescribed under Sub-rule (1) (4) The legal fiction, which was ascertained as not absolute and was limited by words "unless the Registrar otherwise direct" in the erstwhile Rule 53(2) has become now absolute, and (5) After the opposition is deemed to have been abandoned by the opponent, the Registrar is not empowered either to call upon the opponent to file evidence or take the evidence filed beyond the time prescribed in Sub-rule (1) on record or invite the attention of the applicant calling upon him to file evidence in support of application.
15. Similarly, to confirm the trend of the same vigour and spirit of the Rules, it is incumbent to have look on other relevant Rules also.
(1) Within two months or within such further period not exceeding one month in 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 counter-statement 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 the 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.
Within one month from the receipt by the opponent of the copies of the applicant's affidavit or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request in Form TM-56 allow, the opponent may leave with the Registrar evidence by affidavit in reply and shall deliver to the applicant copies thereof. This evidence shall be confined to matters strictly in reply.
(1) "Upon completion of the evidence if any, the Registrar shall give notice to the parties of the first date of hearing. Such notice shall be ordinarily given within three months of completion of the evidence. The date of hearing shall be for a date at least one month after the date of the first notice. Within fourteen days from the receipt of the first notice, any party who intends to appear shall so notify the Registrar in Form TM-7. Any party who does not so notify the Registrar within the time as aforesaid may be treated as not desiring to be heard and the Registrar may act accordingly in the matter." (2) If sufficient cause for adjournment is not shown by either of the parties, the Registrar may proceed with the matter forthwith.
(3) If the applicant is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the application may be treated as abandoned.
(4) If the opponent is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the opposition may be dismissed for want of prosecution and the application may proceed to registration subject to Section 19.
(5) In every case of adjournment, the Registrar shall fix a day for further hearing of the case and shall make such order as to cost occasioned by the adjournment or such higher costs as the Registrar deems fit.
(6) The fact that the agent or advocate on record of a party is engaged in another Court shall not be a ground for adjournment.
(7) Where illness of legal practitioner or an agent or his inability to conduct the case for any reason is put forward as a ground for adjournment, the Registrar may refuse to grant the adjournment unless he is satisfied that the legal practitioner or an agent, as the case may be, could not have engaged another agent or legal practitioner in time.
(8) The Registrar shall take on record written arguments if submitted by a party to the proceeding.
(9) The decision of the Registrar shall be notified to the parties in writing.
19. It is clear that the provision of Rule 51 and 52 in filing "evidence in support of application" and "evidence in reply", are to be applied with the same vigour and spirit as in case of Rule 50(1) and, therefore, the applicant or the opponent, as the case may be, cannot urge for the extension of time for more than one month as prescribed in Rule 51(1) and 52 on the same footing as in Rule 50(1).
20. It is found from Rules 56 that despite fixing the time limits for taking different steps one after another, the Legislature has provided the consequential subsequent provisions for non-compliance of the earlier one. On the same footing of Rule 50, if either the parties, who does not notify the Registrar within fourteen days from the receipt of the first notice of hearing may be treated as not desiring to be heard and the Registrar may act accordingly in the matter. Further, if the applicant is not present at the adjourned date of hearing and has not notified his intention to attend the hearing on Form TM-7, the application may be treated as abandoned under Rule 56(3). Similarly, if the opponent is not present at the adjourned date of hearing and has not notified his intention to attend the hearing on Form TM-7, the opposition may be dismissed for want of prosecution under Rule 56(4).
Apart from this, the Legislature has taken a sever view against the party, who is not attending the hearing by awarding cost or higher cost for such adjournment. Even the adjournment may not be granted if the Registrar is not satisfied with the grounds urged for such adjournment, he can refuse the adjournment under Rule 56(7). The ground that the agent or advocate on record is engaged in another Court shall be no ground for adjournment. In Rule 56(1), the Legislature has also clarified that it is only upon the completion of the evidence, if, any, the hearing shall be fixed within three months from the completion of evidence so as to decide the case on merit.
21. As regards fixing of time limits to file opposition with an extension not exceeding one month in aggregate and the manner in which the extension and opposition is to be filed under Rule 47, also does not loose the sight.
(1) A notice of opposition to the registration of a trade mark under Sub-section (1) of Section 21 shall be given in triplicate in 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.
(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 in 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.
(7) A copy of notice of opposition shall be ordinarily served by the Registrar to the applicants within three months of the receipt of the same by the appropriate office.
23. Rule 47 has also fixed the time limits of three months with such further period not exceeding one month in aggregate to file opposition.
However, the extension of one month time as referred to in Rule 47(1) shall be filed as per Rule 47(6) on Form TM-56 within three months from the date of Trade Marks Journal made available to the public by the Registrar. This is in confirmity with the provision of Section 21(1) read with Rule 47(1) of the Act.
24. Sub-section (1) of Section 21 read with Rule 47(6) says that a person may file an opposition within three months from the date of advertisement or re-advertisement of the application in Trade Marks Journal or within such further period not exceeding one month in aggregate and if he has not filed the opposition within three months for any reason, he can file the same within the maximum period of four months provided a request for extension of time for one month under Rule 47(6) is filed within three months and is allowed by the Registrar. For adverse effect, if the said request for extension is not allowed by the Registrar, the opponent is not entitled to file opposition on Form TM-5 after the expiry of three months. If the opponent files a Notice of opposition within the maximum period of four months and he fails to file the extension under Rule 47(6) before the expiry of three months, the Legislature would not permit the Registrar to act upon the said notice of opposition under Rule 47(1) filed in violation of Rule 47(6). Therefore, Sub-rule (6) of Rule 47 is supplement to Rule 47(1) and cannot be read independently in isolation, but in consonance with Rule 47(6).
25. This specific, clear, express and imperative language of the Legislature shows that the intention of the Legislature is not only to make the Rule 50(2) as mandatory, but the whole Rules, 2002 is of a mandatory nature, which must be regarded by all concerned.
26. In the same way, the Rule 49 also fixes the time limit to file the counter-statement by the applicant.
(1) The counter-statement required by Sub-section (2) of Section 21 shall be sent in triplicate in Form TM-6 within two months from the receipt by the applicant of the copy of the notice of opposition from the Registrar and shall set out what facts, if any, alleged in the notice of opposition, are admitted by the applicant. A copy of the counter-statement shall be ordinarily served by the Registrar to the opponent within two months from the date of receipt of the same.
(2) The counter-statement shall be verified in the same manner as the notice of opposition as stated in Clause (e) of Sub-rule (1) of Rule 48.
28. It is clear from the rules referred to above, that despite of fulfilling the other criterias so as to ascertain whether the rules are of mandatory in nature as contemplated above, the Legislature has fixed the time limits invariably at different steps in the proceedings wherever, the time is referred to and the time so fixed is not extendable and the request for extension is also to be filed within the time frame. Thus, the implication drawn by the Hon'ble High Court in its decision under the Rules of 1959 that in all other cases the time was not to be fixed, but one which would be within the power of the Registrar to extend, is not applicable in the present case, as the Legislature has intentionally fixed the time limits in the Rules up to the stage of final hearing under Rule 56, and therefore, the Registrar is left with no discretion to extend the time prescribed in such Rules.
29. During the course of argument, Ld. Advocate for the opponent placed a heavy reliance on IPAB decision in the case of Asian Paints Ltd. v.Registrar of Trade Marks and Anr., wherein the Hon'ble Board held the provisions of Rule 50(2) as directory by relying on the decision of the Hon'ble High Court of Delhi (2000 PTC 24 Del.). Before I deal with the said decision rendered by the Hon'ble Board, while exercising appellate jurisdiction, it is incumbent to refer the said decision of the Hon'ble High Court first. The Hon'ble High Court in its decision has held the erstwhile Rule 53(2) as directory stating that mere word 'shall' is not sufficient to treat the Rule 53(2) as mandatory and the legal fiction is not absolute, as it is limited and controlled by the discretion of the Registrar by words "unless the Registrar otherwise direct" and that wherever the Legislature intended to prescribe a fixed time, which could not be extended it has specifically so done, therefore, the Court must ascertain the real intention of the Legislature by looking the statute as a whole.
30. The drastic change of the fundamental characters has undergone in Rule 50 making the legal fiction absolute, which no longer is limited by words "unless the Registrar otherwise directs", which finds no place in Rule 50(2) as it was in the erstwhile Rule 53(2). Further, the use of word 'shall' prima facie, denotes the gravity of the same and emphasizes that Rule 50(2) is mandatory specially, in the circumstances when the operation of Rule 50(2) is automatic if the opponent takes no action in accordance with Rule 50(1). Now, it is not the case of the opponent (1) where the Registrar wishes is direct to the contrary i.e.
to say to treat the opposition subsisting with a view to pass an order on merit, and (2) where the legal fiction is not absolute and is controlled by the discretion of the Registrar, and (3) where, otherwise, the provisions of Rule 50(2) are ambiguous and are not clear. Accordingly, the Legislature in the opposition proceedings, has not only intended to make the Rule 50(2) as mandatory, but also worked out for the speedy expedition of opposition proceedings by curtailing the time and fixing the time limits at every stage including that to file evidence in support of opposition within two months with an extension not exceeding one month in aggregate, which is not extendable; No sooner, the opponent fails to take action in accordance with Rule 50(1) within the time prescribed therein, Rule 50(2) operates automatically deeming the opposition to have been abandoned by the opponent himself. Thereafter, the Registrar is not empowered to grant any more extension under Rule 50(1) or empowered to take evidence on record filed belatedly with Interlocutory petition or direct the applicant to lead his evidence in support of application.
31. It is, thus, necessary to find out the intention of the Legislature. Further, the consequences which may follow and whether the same were intended by the Legislature has also to be kept in view. The legal proposition is that generally all the rules of procedure are the handmaid of justice, unless the language of the statute is express and specific and the provisions of the procedural enactment are construed in a manner which would leave the Court/Tribunal helpless to grant any relief to the party concerned.
32. The following basic principles of law emerging from the binding precedents enunciated by the Apex Court and the High Courts, which ought to be taken into consideration..In Raza Buland Sugar Co. Ltd. v. Municipal Board, Rampur a Constitution Bench of the Supreme Court held that the question whether a particular provision is mandatory or directory cannot be resolved by laying down any general rule and it would depend upon the facts of each case and for that purpose the object of the statute in making out the provision is the determining factor. The purpose for which the provision has been made and its nature, the intention of the Legislature in making the provision, the serious general inconvenience or injustice to persons resulting from whether the provision is read one way or the other, the relation of the particular provision to other provisions dealing with the same subject and other considerations which may arise on the facts of a particular case including the language of the provision, have all to be taken into account in arriving at the conclusion whether a particular provision is mandatory or directory.In Paradise Printers v. Union of Territory of Chandigarh , the Supreme Court had the occasion to examine the meaning and import of word 'shall' and observed that generally the use of the word 'shall' prime facie indicates that the particular provision is imperative. But that is not always so. The meaning to the given to a word depends upon the context in which it is used. The word takes the colour depending upon the context. We must ask what does the word mean in its context? We must examine why the rule making authority has chosen that word. After examining the purpose and scope of the rule, we must give such meaning as to render the rule workable in a fair manner.
We must give that meaning which would promote the purpose and the object of the rule.
35. In its Judgment delivered by the Constitution Bench of the Supreme Court in Pratap Singh v. Shri Krishna Gupta AIR 1956 SC 140, the Supreme Court deprecated the tendency of the Courts to interpret the words in a manner in which importance is given to the form and not to substance. The Court observed that it is the substance that counts and must take precedence over mere form. Some rules are vital and go to the root of the matter; they cannot be broken; others are only directory and a breach of them can be overlooked provided there is a substantial compliance with the rules read as whole and provided no prejudice ensues; and when the Legislature does not itself state which is which Judges must determine the matter and, exercising a nice discrimination, sort out one class from the other long broad based, commonsense lines.
36. In a mother judgment of Privy Council (1861) 30 LJ Ch. 379 referred to in the judgment of Supreme Court , Lord Campbell said No universal rule can be laid down as to whether mandatory enactments shall be considered directory only or obligatory with an implied nullification for disobedience. 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 provisions 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". (1861) 30 LJ Ch. 379 Grains on Statute of Law.
...Thus, the imperative language, the beneficent purpose and importance of these provisions for efficacious implementation of the general scheme of the Act, all unerringly lead to the conclusion that they were intended to be mandatory. Neglect of any of these statutory requisites would be fatal. Disobedience of even one of these mandates would render the surrender invalid and ineffectual.
...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. This rule has stood the test of time. It was applied by the Privy Council, in Nazir Ahmed v. Emperor 63 Ind App 372 AIR 1936 PC 253 (2) and later by this Court in several cases, Shiv Bahadur Singh v. State of V.P. , Deep Chand v. State of Rajasthan ...This rule squarely applies where indeed, the whole aim and object of the Legislature would be plainly defeate if the command to do the thing in a particular manner did not imply a prohibition to do it in any other. Maxwell's Interpretation of Statutes, 11th Exn. pp.
362-363. The rule will be attracted will full force in the present case, because non-verification of the surrender in the requisite manner would frustrate the very purpose of this provision. Intention of the Legislature to prohibit the verification of the surrender in a manner other than the one prescribed, is implied in these provisions. Failure to comply with these mandatory provisions, therefore, had vitiated the surrender and rendered it non est for the purpose of Section 5(3)(b). .
37. In view of the aforesaid basic principles of law as laid down by the Hon'ble Apex Court the intention of the Legislature within the premises of review of the language, subject matter and the importance of the relevant provision, infers that the Rule 50(2) is mandatory.
Accordingly, the Trade Mark Rules, 2002, is an exception in view of the vigour, spirit, intention and language of the Legislature and in view of the consequential provisions for the breach or non-compliance of earlier provisions provided by the Legislature. When the language of the Legislature is clear, plain and imperative and otherwise is not ambiguous, then no other meaning or interpretation of the law is permissible. Accordingly, neglect of any of these statutory requisites would be fetal and disobedience of even one of these mandates would render the evidence tendered to be invalid and ineffectual. In furtherance the Rules specifically 50 & 51 & 52 are found place in the Rules as per the powers to make rules made available to the Central Govt. as per Section 157 of the Act and these rules are made to be followed by the parties to the proceedings in submitting their respective evidences and these rule are in confirmity with the Principal Law. Sub-section (4) of Section 21 provides that any evidence relied by the opponent and applicant shall be submitted in the 'prescribed' manner and within the 'prescribed' time to the Registrar, infers as prescribed in Rule 50 & 51 and 52, as per definition of word 'prescribed' given in Section 2(1)(s) of the Act, therefore, these rules are as per the provision of Section 21(4) and are not said as merely the rules of procedure, but a substantive law which is mandatory in nature and has the force of the statute. Therefore, the said judgments of different High Courts including that of the High Court of Delhi heavily relied upon by the opponent at hearing are not helpful in the facts and circumstances of the instant cat .
38. Since the opponent has neither filed an evidence in support of opposition, nor has intimated the Registrar and the applicant that he does not intend to lead evidence, but relies on the facts stated in the notice of opposition within the extended period i.e. on or before 14.10.2003 and as such he has failed to take action in accordance with Rule 50(1), the opposition is deemed to have been abandoned by the inaction of the opponent himself under Rule 50(2). Thereafter, the Registrar is not equipped with any power either to call the opponent to adduce evidence or allow the evidence tendered in violation of Rule 50(1) to be taken on record or invite the attention of the applicant to file evidence in support of application. If the Registrar does so against the intent of the legislation, it would amount to gross violation of law and such action would suffer from jurisdictional error as held in VIP Industries Ltd. v. Hind Cultery House, Moradabad 1995 PTC 81.
39. Therefore, the Tribunal being a quasi-judicial authority cannot create the law, but can interpret the law, if requires, therefore, he has to follow the rules strictly and for the sake of reiteration, if the language of the Legislature is amply clear, plain and imperative then, there is no requirement to give a new colour to the Legislature and say something, which the Legislature has specifically in clear terms, said otherwise, 40. The Trade Marks Rules, 2002 is part of the statute as the same has been enacted under Section 157 of the Trade Marks Act, 1999 itself.
Sub-section (2)(vii) of Section 157 specifically, says that rules may provide the manner of making an application and fee payable for such application for giving notice under Sub-section (1) and sending counter statement under Sub-section (2) and submissions of evidence and the time therefor under Sub-section (4) of Section 21 of the Act. It denotes that the opposition proceedings from the stage of filing notice of opposition, to fixation of hearing and the time therefor are to be exclusively governed by the Rules. In other words, the opposition proceedings in the prescribed manner, within the prescribed time and with the prescribed fee are to be governed by the relevant rules and by the Rules only under the mandate of Sub-sections (1), (2) & (4) of the Section 21 and not by any other provisions of the Act & Rules. The provision of Section 21 (4) are abundantly clear and reproduce as follows: Any evidence upon which the opponents and 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.
41. As stated above, the term 'prescribed manner' and 'prescribed time' referred to in Section 21(4) has been defined in Section 2(1)(s) of the Act as prescribed by Rules made under the Act. It is, therefore, amply clear that the rules generally and specifically in relation to opposition proceedings have the mandate and force of Section 21(4) and 156-157 (2) VII of the Act and are in confirmity with the statute: therefore, the issue as to granting extension in opposition proceedings is to be governed by Rule 50(1) inconsonance with Rule 50(3) and cannot be stretched to Section 131(1) of the Act. Though the time prescribed in the Rules is at par with what has been provided in the Act, however, validity of rules cannot be challenged. "It would appear that a hearing officer acting for the Registrar has no power to question the validity of rules framed under the Act or to declare any rule ultra vires. This is the function of the Court" - Dirk's Appln. (1968) RFC 1 at 13.
42. However, the rules are part of the statute. Paras 30.18 of law of Trade Marks and Passing Off by P. Narayanan, 5th edition provides as follows :- Instruments made under an Act which prescribes that they shall be laid before Parliament for a prescribed number of days, during which period they may be annulled by a resolution of either House, but that if not so annulled, they are to be of the same effect as if contained in the Act, and are to be judicially noticed, must be treated for all purposes of construction or obligation or otherwise exactly as if they were in the Act. Maxwell's Interpretation of Statutes, 10th Ed. PP. 50-51, quoted in Seervai's Constitutional Law, 1st Ed. p. 1054 f.n. 16.In State of U.P. v. Babu Ram Subba Rao, J. (in the majority Judgment) held the rules made under a statute were to be treated as part of the statute, See also Seervali's 44. Thus, the present Trade Mark Rules are not merely procedural, but, substantive law, which means the part of the law that deals with the rights, duties and all other matters that are not matters purely of practice and procedure, and the same is mandatory in nature and have the statutory force, therefore, a single variation if permitted, would derail the intent and the object of the Legislature; Therefore, the petitioner's contentions that trade mark rules are not in confirmity with the principal law and that the rules are handmaid and merely procedural and can be relaxed in genuine cases, cannot be accepted. In view of the Judgment in Pratap Singh v. Shri Krishna Gupta (supra) as observed that "it is the substance that counts and must take precedence over mere form. Some rules are vital and go to the root of the matter; they cannot be broken; others are only directory and a breach of them can be overlooked provided there is substantial compliance with the rules read as whole and provided no prejudice ensues; and when the Legislature does not itself state which is, which Judges must determine the matter and, exercising a nice discrimination, sort out one class from the other long broad based, common sense lines." 45. In the present case, the opponent has neither filed any evidence in support of opposition, nor sought any extension of time within the statutory period of two months even under the erstwhile Rule 53 (1).
After more than 8 months from service of a copy of the counter-statement on him, the opponent filed a request for extension of time for an accumulated period of six month, which itself was against the provisions of the said Rule 53(1). But, even thereafter, he filed no evidence within the extended period which expired on 14.10.2003.
After more than 16 months from service of the counter statement on him, he comes with I.P. on 21.6.2004 without assigning any reason, at all, for delay. This tribunal has taken a strong view on the conduct of the opponents/petitioners against their willful disgrace of the law.
Despite the fact that the petitioners knew that they had failed to lead their evidence within the extended period and that new law, which came into force w.e.f. 15.9.2003 would not at all allow them any longer to file the evidence, even then by defying the law they deliberately came up with the I.P., tendering the evidence on 21.6.2004 i.e. after more than 8 months from the expiry of the extended time against the vigor and spirit of the Legislature as well depriving the applicants from their rights of registration of the trade mark in question pending for about last 8 years by applying dilatory tactics to linger on the registration. This conduct of the opponents would amount to gross violation and sheer abuse of the process of law and entail a heavy penalty by awarding an exemplary cost against them. Since the opponent by such dilatory tactics causes much harm to the applicant's vested proprietary rights of registration in the trade mark for a long time of 18 months, such opponent cannot be left unpunished.
In all actions, suits and other proceedings in law and equity the diligence and careful plaintiff is favoured to the prejudice of the careless, the High Court of Madras has said". Before quashing proceedings initiated by Dr. Sarah Mathew on November 27, 1996 against a Chennai based Private Hospital pending before XVII Metropolitan Magistrate, Saidapet, the Hon'ble Single Judge, Justice A. Packiaraj said "The vigilant, and not the sleepy, are assisted by the laws. (Hindu: July 21,2002) 46. The law provides that the parties are required to act diligently within time frame to meet the ends of justice; therefore, the opponent ought to have filed the evidence within the time frame. Since the opponent has not come up with the clean hands and he himself has not followed the equity, he is not entitled to any equitable relief.
Further, it is not the case of natural calamity or it is not a case of national policy of Govt. of India or it is not a case of the fatal accident of the petitioner, wherein he was not able to lead his evidence within the time limits prescribed by the law.
47. The intention of the Government of India is to see that the Rules framed under the Act, are to be followed at each stage of the proceedings with all vigour and spirit, as the Rules are framed by the Central Government under Sections 156 & 157 of the Act, which are being approved by both the Houses of the Parliament and as such the Legislative intention reflects in the Rules. Furthermore, the Controller General of Patents, Designs & Trade Marks, who is the Registrar for the purpose of the Act and who is responsible for implementation of the Act and the Rules has issued the directions to all the Hearing Officers of the Trade Marks Registry, Mumbai and of the Branch Offices to follow the provisions of the Act and Rules strictly- All the hearing officers in the Trade Marks Registry and Branch Offices are advised strictly to follow the provisions of the Trade Marks Act, 1999 and the Trade Marks Rules, 2002 and ensure complete uniformity of practice.
48. Therefore, all the Registrars of the Trade Marks performing their duties under delegation of powers under Section 3(2) of the Trade Marks Act, 1999 are duty bound to follow the directions of the Controller General in its true spirit and scope in furtherance of carrying out the provisions of the Act.
It is well settled in law that once a particular situation is deemed, one cannot boggle down in the middle. This is the dictum laid down by Lord Act on which has been approved by the Supreme Court. Therefore, once it is deemed to be abandoned, there is no question of extending something which has been abandoned. In other words, when the application is dead by then it cannot be revived by extending limitation. "Medley Laboratories v. Progro Pharmaceuticals, Writ Appeal No. 1151 of 1985 (Mad HC), Reversing Progro v. Dy. Registrar .
49. In the instant case, although the opponent has taken no action under Rules 50(1) within the prescribed time, however, the applicant's attention has been inadvertently invited to Rule 51 calling upon him to file evidence in support of application. This would amount a jurisdictional error and requires to be rectified by withdrawal of the same "Where an opponent has not complied with the requirements of Rule 53, calling the applicant to file evidence under Rule 54 is ultra vires VIP Industries v. Registrar (supra).
50. Next, I would say that the provisions of Section 131 are general, which obviously, deal with the extension of time in general. At the same time Section 21 deals with the opposition proceedings. Both the Sections 21 and 131 are independent and different in nature, purpose and scope from each other. The provisions of each section are carried out under the respective rules thereunder. Further, under the mandate of Section 21 of the Act, the Legislature has fixed the time limits at different stages invariably right from filing an extension to file a notice of opposition to the final hearing the proceedings inter alia, making the simultaneous provisions for one month extension in aggregate to file a notice of opposition, evidence in support of opposition, evidence in support of application and evidence in reply, which is not extendable and even to allow the extension of one month, the request is to be filed before the expiry of statutory period, which is also not extendable; Whereas Section 131 and Rule 105 thereto, being general to powers to extend the time for which the provisions are made expressly in the rules. Thus, Section 131 cannot be invoked for extension of time beyond one month in aggregate contrary to the time expressly prescribed in Rule 50(1) of the Trade Marks Rules, 2002.
51. In the present case, the opponent has ever failed to show any ground much less the sufficient ground to justify the prayer for the extension. Moreover, the conduct of the opponent in tendering the evidence by way of IP without any grounds or with the incorrect grounds, would not be entitled to any equitable relief. Even, otherwise the decision of not granting the extension under Sub-section (1) cannot be challenged under Sub-section (2) of Section 131 the Act.
52. Rule 105 has been formulated under the mandate of the statute and it carries out the provisions of Section 131. In accordance with Rule 105, an extension under Section 131(1) can be granted (not being a time expressly provided in the Act) Or prescribed by Rule 79 OR Rule 80(4) Or a time for the extension of which provision is made in the Rules. In other words, the Registrar is not empowered to grant an extension under Section 131(1) in the following cases: (3) a time for the extension of which provision is made in the Rules.
This is confirmed by reference to the provisions made on the formal of TM-56 itself, which reproduces- Application for extension of time [not being a time expressly provided in the Act or prescribed by Rule 79 or by Rule 80(4) or a time for the extension of which provision is made in the rules] I/We...being the...in the above matter hereby apply for an extension of time of...for on the following grounds: All communications relating to this application may be sent to the following address in India: 53. The extension of time in opposition proceedings have since been made in Rules 47(1), 50(1), 52 and 56(1) and as such looking to the provisions of Rule 105, the extension of time either for filing a notice of opposition or evidence in support of opposition or in support of application or evidence in reply or for adjournment of hearing cannot be granted under Section 131(1) of the Act, therefore, Section 131(1) read with Rule 105, is a bar for the grant of extension in the opposition proceedings particularly, when the extension of one month in aggregate is specifically and expressly provided in the aforesaid rules. Hence, the opponent's contention that the extension of time beyond one month in opposition proceedings can be granted under Section 131(1) and Rule 105 cannot be accepted. However, the provisions of Section 131(1) read with Rule 105 may be available for the grant of extension in general with exception in aforesaid all three case in the preceding paragraph.
54. Mr. Tewari, Advocate for the opponents further submitted that the intention of the Legislature in enacting the Trade Marks Act is to protect the public from being deceived and/or confused as to the source of the goods, which is the paramount object of the Act and that to prevent the use of the fraudulent marks. He said that the basic principle of interpretation of the statute is that the intention of the Legislature must prevail as has been laid down by the Hon'ble Supreme Court in numerous case. He stated that in a land mark Judgment in Kantilal Tulsidas Jovanputra v. The Registrar of Trade Marks and Ors.
1982 PTC 127, the Hon'ble Bombay High Court has interpreted the Rule 53(2) of the Trade & Merchandise Marks Rules, 1959 a directory which is parallel to the Rule 50(2) of the Trade Marks Rules, 2002. He said that the above judgment of Bombay High Court was referred to and relied in the Full Bench judgment of Delhi High Court in Hastinamal Jain trading as Oswal Industries v. The Registrar of Trade Marks and Ors. 2000 PTC 24 Del. The Ld. Advocate argued that the use of the word 'shall' in Rule 50(2) does not indicate that the rule is mandatory; but it is directory as held by different High Courts. He placed also heavy reliance on the decision of Hon'ble IPAB.55. In view of the express, specific and imperative language of the provision and in view of providing the consequence on failure of compliance under Section 51(1), the law shall not permit the evidence in question to be taken on record as the opposition is already deemed to have been abandoned by the opponent on 14.10.2003 as a consequence of non-filing of the same in accordance with Rule 50(1). Thus, to my mind, the intention of the Legislature is amply clear to make/declare the Rule 50(2) as mandatory by affecting the drastic change of fundamental characters in Rule 50 in three folds.
(1) The provisions for extension of time to file evidence, which was not taken care in the erstwhile Rule 53 of the Trade and Merchandise Marks Rules, 1959 and as such was cause of concern to the affected parties, have been employed in Rule 50(1) of the Trade Mark Rule, 2002 for providing extension of one month in the interest of justice but not exceeding one month in aggregate.
(2) The provisions for filing a request on Form TM-56 for the said extension of one month before expiration of the statutory period of two months prescribed in Rule 50(1) have been provided in Rule 50(3).
(3) The legal fiction, which was not absolute and was controlled by the discretion of the Registrar by expression "unless the Registrar otherwise directs" in the erstwhile Rule 53(2) is made absolute by omitting the same in Rule 50(2) of the Trade Marks Rules, 2002.
56. When the Legislature has brought out the drastic change of the fundamental characters in Rule 50. The Registrar is also not empowered either to call the opponent to leave evidence in support of opposition or to take the evidence filed after the prescribed time, on record or invite the applicant's attention to file the evidence in support of application, the contention of the opponent that Rule 50(2) of the Trade Marks Rules, 2002, is parallel to or part materia within the erstwhile Rule 53 (2) cannot be accepted more particularly when Section 21(4) read with Rule 50 is amply clear, plain and imperative within the premises of review of the language, by the Legislature, the question of otherwise interpretation of the statute and rules thereunder which is also a substantive law and mandatory in nature and has the force of the statue, does not arise. Therefore, the observations of Hon'ble IPAB in the case of Asian Paints Ltd. with immense respect would not be applicable in the facts of the case in hand.
57. If the erstwhile Rule 53(2) and the existing Rules 50(2) are compared, the violation of the first was not so fetal as that of the latter. In Rule 53(2), the violation was not considered to be fetal for the reason that the legal fiction was not absolute as the provision for the extension of time was provided by the Legislature. But the violation of Rule 50 is not permissible specially in the circumstances, where the provisions for providing extension of only one month time to file the evidence has been embodied in Sub-rule (1) and thereby the legal fiction is made absolute by omitting the said words "unless the Registrar otherwise directs" and where the penal provisions as to the consequence of the failure of provisions of Sub-rule (1) is provided which infers that the Rule 50(2) as mandatory. Therefore, before the Trade Marks Act, 1999 through its Rules came into force, the observations of the different Hon'ble High Courts as to the Rule 53(2) to be directory, with immense respect, would not help the petitioner after the Act of 1999. Therefore, the submissions made and the interpretation law urged by Ld. Advocate for the opponent accordingly cannot be accepted.
Hon'ble Supreme Court (N Santosh Hegde and S.B. Sinha, JJ.) Constitution of India Articles 136, 142 & 141 - Equity jurisdiction - Binding effect of precedents of Supreme Court - Conduct of party.
Held, Supreme Court despite sympathy cannot hold in favour of a party ignoring binding precedents-moreover, on facts, the conduct of the party concerned was such as not to merit sympathy, it having taken inconsistent and contradictory stands in the litigation.
59. In Central Board of Dawoodi Bohra Community and Ors. v. State of Maharashtra and Ors. Hon'ble Supreme Court R.C.Lahoti, CJ., and Shivraj V. Patil, (K.G. Balakrishnan, B.N. Srikrishna and G.P. Mathur, JJ.).
Per incuriam means: a decision rendered by ignorance of a previous binding decision such as a decision of its own or of a Court of coordinate or higher-jurisdiction or in ignorance of the terms of a statute or of a rule having the force of law.
60. D. Constitution of India - Article 141 - Doctrine of stare decisis - Binding effect of law declared by Supreme Court - Supreme Court vis-a-vis Held, "question is not whether Supreme Court is bound by is own previous decisions-Rather question is under what circumstances and within what limits and in what manner should be highest Court overturn its own pronouncements." 61. In Parappa Ningappa Khanded v. Mallapa Kallappa Kore, the Hon'ble High Court of Bombay (Full Bench comprising of Mr. M.C. Chagla, Chief Justice, Mr. Justice Gajendragadkar and Mr. Justice Dixit) Held: "A decision of a Full Bench, or of any Court, is binding provided it is a considered decision. But when a decision has been given without the pros and cons of the question being considered, it cannot be urged that such a decision acquires a finality".In Prakash Chandra Pathak v. State of Uttar Pradesh (V 47 C 33) Hon'ble Supreme Court (three Judge Bench) Precedents - Decision on question of fact - Decisions cannot serve as Precedents.
Held "Decisions even of the highest Court on questions which are essentially questions of fact, cannot be cited as precedents governing the decision of other cases which must rest in the ultimate analysis upon their own particular facts. The general principles governing appreciation of circumstantial evidence are well established and beyond doubt or controversy. The more difficult question in one of applying those principles to the facts and circumstances of a particular case coming before the Court. That question has to be determined by the Court as and when it arises with reference to the particular facts and circumstance of that individual case, it is no use, therefore, appealing to precedents in such matters. No case of fact can be on all fours with those of another." 63. The said decision of the Hon'ble IPAB was based on what was argued before it on flimsy ground without taking into consideration the drastic change of fundamental characters in the Rules, and clear, specific and imperative language and intent of the Legislature, and the basic principles of law/binding precedent laid down by the Hon'ble Apex Court and the conduct of the opponent. Therefore, with immense respect, the said decision being the decision in personam is applicable to the parties involved therein.
64. In Yeshbai and Anr. v. Ganpat Irappa Jangam and Anr.
the Hon'ble Court of Bombay Held: "Where the case was decided on the position of law which was assumed by the Court, the decision is not an authority for what assumed. Therefore, decisions given subsihnto that is no assumed position of law and not on arguments will not be binding presidents".In Mamleshwar Prasad and Anr. v. Kanahaiya Lal (Dead) the Hon'ble Supreme Court (Five Judge Bench) 66. On precedents-principle of Judgment per incuriam - Applicability; Held: "In exceptional instances, where by obvious inadvertence or oversight a Judgment fails to notice a plain statutory provision or obligatory authority running counter to the reasoning and result reached, it may not have the sway of binding precedents. It should be a glaring case, an obtrusive omission".
67. I do agree with the observations of the Hon'ble IPAB that the society has a vital interest in the purity of the Register and for that matter to get know the grounds for claiming the registration of the mark. However, Section 19 of the Act has taken sufficient care to meet such situation. But, in any case, the Trade Mark Act is a merchandise law, which provides registration of trade mark in respect of goods and services of a manufacturer/trader or a service provider to promote their goods or services in the market and protection to their registration at diligence. When the parties are vigilant and diligent in complying with the provisions of law, then only the law and equity come to their rescue; therefore, the parties to the proceedings are duty bound to act to in accordance with law. The conduct of the opponent in the present proceedings as observed above is nothing, but the sheer abuse of the process of law and utter disregard with law and, therefore, he is not entitled to any equitable relief.
68. As far the reliance placed on the decision of Hon'ble IPAB by the Ld. Advocate for the petitioner/opponent, I am of the view that the facts and circumstances in the case before the Hon'ble Board are entirely different from the facts of the case on hand and as such as per ratio laid down by the Hon'ble Apex Court in the case (Supra) and other cases referred to herein above, the decision of the Hon'ble IPAB would not help the petitioner.
(1) The operation of Rule 50(2) is automatic. If the opponent takes no action in accordance with Rule 50(1) within the time prescribed therein, he shall be deemed to have abandoned his opposition by operation of law and thereafter the Registrar rests with no power to do any thing except communicating the order of abandonment, being the consequence of the non-compliance of the provisions of Rule 50(1) to the opponent.
(2) The words "unless the Registrar otherwise directs" in terms of which the legal fiction in the erstwhile Rule 53 was held not absolute by the Hon'ble High Court of Delhi in its aforesaid Judgment and as such the intention of the Legislature was ascertained by having look on the statute as a whole have been omitted in Rule 50(2) and the legal fiction is made absolute and, therefore, the said Rule 50(2) is found to be mandatory.
(3) The word 'shall' prima facie emphasis that Rule 50(2) is mandatory. Nevertheless, in view of the basic principles of law laid down by the Apex Court and the High Court as referred to above, Rule 50(2) is mandatory.
(4) Trade Marks Rules, 2002 are not merely a procedural law, but a substantive one and mandatory in nature which have statutory force and as such are in conformity with the principal law and is a part of the statute.
(5) The opposition proceedings taken under Section 21 of the Act are exclusively and specifically governed by the relevant rules made thereunder. However, the scope of Section 131 and Rule 105 is different and has no role except to the extent of granting extension of one month in aggregate for which the provisions are made in Rule 50(1) empowering the Registrar to extend the time.
(6) When the intention and the language of the statute (Section 21(4) read with Rule 50(1) is clear, plain and imperative, otherwise interpretation or meaning of the same would amount the mockery and / or disgrace of the law.
(7) The relevant Rules framed under the provisions of law are neither challenged nor the said rules are declared as ultra vires by Hon'ble Supreme Court or any of the Hon'ble High Court of the State and its sanctity is remained intact, thus the said rules having force of the statute cannot be disturbed by giving different meaning completely opposite to its intent and spirit of the Act.
(8) Non-filing of extension upto 8 months and leading of his evidence after more than 16 months alongwith I.P. not entitled to have any discretion merely on the basis of the purity of the Register, Preamble of the Act, natural justice and conscience and public interest more particularly is not found vigilant and diligent in performing his duties towards filing the same within the prescribed time and that to what extent he can infract and derogate the substantive law has gone doing so. This conduct of the opponent of willful disobeying the law should be discouraged. The law aids to the vigilant and not to the slumber.
(9) If the Rule 50(2) is to be considered as mandatory as submitted by the opponent, it would derail the intent and purpose of the Legislature and substitution of the old trade mark laws with the existing one and would be against the Government policy and the public interest for which the Registrar is not empowered.
(10) The opponent has not been able to show any justifiable and convincing reason as to allow his said petition, the same deserves to be dismissed with exemplary cost.
70. It is hereby ordered that Interlocutory petition dated 21.6.2004 is dismissed and evidence tendered in support of opposition at belated stage is refused to be taken on record.
71. It is hereby further ordered that opposition bearing No. AMD-61110 is deemed to have been abandoned by the opponent under Rule 50(2).
72. It is hereby still further ordered that the applicant's invitation to Rule 51 calling upon him to file evidence in support application vide official letter bearing No. TLA/GEN-9034 dtd. 4.3.2004, is treated as withdrawn.
73. It is hereby still further ordered that petitioner/opponent shall forthwith pay to the respondent/applicant a sum of Rs. 25,100 (Rupees Five Thousand One Hundred Only) as costs of these proceedings.