Judgment:
1. This order will dispose of a proposed opposition dated 28th August, 2006 filed by M/s. Shree Rajmoti Industries, at Bhavnagar Road, Rajkot-3. Gujarat (hereinafter referred to as "the Opponents") in the above matter. The facts are briefly that the Applicant's trade mark inter alia consisting of the device of 'Open seed with pearl' label per se filed under Application No. 1279800 in class 16 was advertised in the Trade Marks Journal No. 1338 Supplementary (1) dated 15th January, 2006 at page 9323-9324, which made available to the public on 1st May, 2006. A notice of opposition alongwith a request on Form TM-44 for extension of time for filing the notice of opposition was filed to the aforesaid application on 28th August, 2006 under Section 21(1) of the Act. The question now arises as to whether the request on Form TM-44 alongwith the notice of opposition filed by the above named opponents on 28 August, 2006 is within the statutory period or not.
2. Pursuant to this office letter No. TOP/4685 dated 31st August, 2006 M/s. Union Trade Mark Company, Patent & Trade Mark Attorneys, New Delhi instructed by the above named Opponents submitted a reply under their letter dated 28th September, 2006 stating that under Section 21(1) of the Trade Marks Act, 1999 permits that a notice of opposition can be filed 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 the aggregate and that the notice of opposition along with the request on Form TM-44 filed on 28th August, 2006 to the aforesaid application is well within the prescribed time as provided under Section 21(1) of the Act, which may be taken on record and the matter be proceeded within accordance with the law.
3. Hearing to consider the proposed opposition took place before me on 29th November, 2006, when Mr. S.K. Bansal, Advocate instructed by M/s.
Union Trade Mark Company, Patent & Trade Mark Attorneys, New Delhi appeared on behalf of the Opponents in the above matter.
4. Mr. S.K. Bansal, Advocate, the learned Counsel for the Opponents submitted that the Trade Mark Journals have nowadays been made available to the public erratically. It is only in November and December, 2003 that the Registrar certified the days on which the Journals were made available to the public and very often the notification would appear on the notice board up to one month after their date of issue, which meant that there was uncertainty with regard to the deadlines. As a consequence of the late receipt of Journals the whole process of filing the opposition was delayed and, thus, there was a considerable delay in filing the request on Form TM-44 and its notice of opposition to the aforesaid application. The Counsel for the Opponents in this connection relied upon the case of Pavunny Ouseph v.Registrar of Trade Marks AIR 1952 Travancore 77 in support of his arguments and contention.
5. Mr. Bansal stated that Sub-section (1) of Section 21 of Trade Marks Act, 1999, permits the filing of an extension of an application beyond the three months period but within such further period not exceeding one month in the aggregate. It is evident from a plain reading of Section 21(1) that the Legislature has not intended to prescribe the time limit of only three months for filing of a notice of opposition and certainly not prescribed any time limit for filing the application for extension of time.
6. Mr. Bansal also stated on a plain reading of the Rule 47(1) of Trade Marks Rules, 2002 read with Section 21(1) of the Act clearly indicates that the notice of opposition filed after three months has to be accompanied by the prescribed application for seeking an extension of time beyond 3 months, to file the notice of opposition.
7. Mr. Bansal further submitted that Sub-rule (6) of Rule 47 of Trade Marks Rules prescribes a procedural requirements for seeking extension to file a notice of opposition and submission of an extension application under Rule 47(6) within three months has not specifically prescribed either in the Act or Rules. He also added that the word "shall" used in Sub-rule (6) of Rule 47 should be construed to be only directory provision and not mandatory. He accordingly requested that the Registrar may exercise his discretion in favour of the Opponents and the notice of opposition along with the request on Form TM-44 filed to the aforesaid application on 28th August, 2006 may be taken on record and the matter be proceeded with in accordance with the law.
8. Under Section 21(1) of the Trade Marks Act, 1999 provides that "Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration".
9. In other words, Section 21(1) permits the filing of an extension application beyond the three months period but within such further period not exceeding one month in aggregate. It is evident from the plain reading of Section 21(1) of the Act that the Legislature has not intended to prescribe the time limit of only three months for filing of a notice of opposition and certainly not prescribed any time limit for filing the application for extension of time. Moreover, it does not contemplate that a time period for seeking extension of time to file a notice of opposition, which merely prescribes the manner and fees thereof.
10. Similarly, Rule 47(1) of the Trade Marks Rules, 2002 reads as under: 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 trade 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.
11. It is amply clear that a notice of opposition may be filed within three months or definitely within four months of the date the Journal is made available to the public. Further, on a plain reading of the Rule 47(1) 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 for seeking an extension of time, beyond three months to file the notice of opposition.
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.
13. In other words, it prescribes a procedural requirements for seeking extension of time to file a notice of opposition and it would result that the Registrar has not power to grant extension in cases where the request on Form TM-44 has been filed after three months. Further, it would also result in barring an entire species of cases whereby a bona fide proprietor of a trade mark becomes aware of a conflicting mark after three months of publication but before the four months period, from fling a notice of opposition regardless of the bona fides or genuineness of the Opponents. Further, it would not only be contrary to the intention of the Legislature as expressed in Section 21(1) but also be contrary to an established principles of law that discretion conferred by the Act cannot be taken away by the Rules.
14. I have gone through the records of this case carefully in the presence of Mr. S.K. Bansal, who is present today at the hearing. From the facts of the instant case, it is obvious that the request on Form TM-44 along with a notice of opposition filed by the Opponents on 28th August, 2006 is time barred in terms of Rule 47(6) of the Trade Marks Rules, 2002. The matter is now to decide whether the notice of opposition alongwith a request on Form TM-44 to the aforesaid application on 28th August, 2006 is within the statutory period or not.
15. Firstly, the determination of the questions raised would depend on whether Rule 47(6) can be said to be mandatory or merely directory. It is a settled law that the procedural requirements must be construed as directory in nature and not mandatory, unless a statute prescribes otherwise. A Full Bench of the High Court of Delhi in the case of Hatimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Anr. 2000 PTC 24(FB), involving interpretation of the Trade and Merchandise Marks Rules, 1959 has held that the use of the word 'shall' is not sufficient to treat a Rule as mandatory. The Court further held that while determining the question of whether a Rule is mandatory, the intention of the Legislature must be ascertained from looking at the statute as a whole. Secondly, the use of the word 'shall' raises a presumption that the particular provision is imperative, but this prima facie presumption may be rebutted by other considerations such as object and scope of the enactment and the consequences flowing from such construction. Therefore, in certain cases the use of the word 'shall' has been construed to mean merely directory. The whole scope of the statute needs to be analysed before ascertaining the intention of the Legislature (see State of U.P. v. Babu Ram and Basavraj R. Patil v. State of Karnataka ). Further, it must also be remembered that a legal fiction cannot be stretched beyond the purpose for which it was enacted.
16. As seen above the legal fiction is not absolute, but it is being controlled by discretion of Registrar. Obviously, it is limited by the word "shall" and the time limit of three months for seeking extension of time to file a notice of opposition. It is important to say here that wherever the Legislature intended to prescribe a fixed time, which could not be extended, it has specifically so done. The necessary implication of this is 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. Obviously, the intention of the Legislature was to minimise delays, For that fixed time is laid down in the statute itself.
However, on a plain reading of Section 21(1) itself shows that the Legislature has not intended to prescribe the time limit of only three months for filing of a notice of opposition and certainly not prescribed any time limit for filing the application for extension of time. Besides, Section 21(1) of the Act specifically allows filing of a notice of opposition beyond the period of three months as long as it not exceeding one month in the aggregate. Therefore, a natural corollary is the Act would support all that is required to be done for filing of an opposition in such time period prescribed by the Legislature in the Act and the same is also clearly set out in Rule 47(1), which clearly establishes that a notice of opposition may be filed within three months or definitely within four months of the date the Journal is made available to the public.
17. The rule requiring the procedural requirements for seeking extension of time mentioned in Rule 47(6) of Trade Marks Rules, 2002 along with a notice of opposition in fact strikes a mandatory note is intended to prescribe the time limit of only three months for filing the application for extension of time. In this sense, the needs of the rule transcend the directory level and may perhaps be considered a mandatory need and hence the intention of the Legislature would not be served and, therefore, Rule 47(6) would be repugnant to the provisions of Sub-section (1) of Section 21 of the Trade Marks Act, 1999.
18. Further, it is also mentioned that it is not the intention of the Legislature to allow the Central Government to prescribe rules limiting the time period for filing of an extension of time period within which a notice of opposition may be filed. In other words, it would result in barring an entire species of cases whereby a bona fide proprietor of a trade mark becomes aware of a conflicting mark after three months of publication but before the four months period, from filing a notice of opposition regardless of the bona fides or genuineness of the Opponents. Besides, it would also result in fettering the discretionary power conferred on the Registrar by Section 21(1) of the Act in as much as it would result on the Registrar having no power to grant extension in cases where the request on Form TM-44 has been filed after three months and the same would go against an established principles of law that direction conferred by the Act cannot be taken away by the Rules.
Moreover, when a statute is passed for the purpose of enabling the doing something and prescribes the formalities which are to be attended for the purpose, those prescribed formalities which are essential to the validity of such thing, would be mandatory. However, if by holding them to be mandatory, serious general inconvenience is caused to innocent persons and or general public, without much furthering the object of the Act, the same would be construed directory (See State of Haryana v. Raghubir Dayal 19. Applying the well established rules of statutory interpretation especially the rule of harmonious construction to the Act and Rules would mean that an application for extension of time period for filing of an opposition is allowed beyond the three months period prescribed by Rule 47(6) since this is only a directory provision and not mandatory in order to fulfill the intention of the Legislature.
20. Having regard to provisions in Section 21(1) read with Section 131(1) of the Act enabling the Registrar to extend the time, whether the time so specified has expired or not and in the light of the decision of the Delhi High Court (Supra) and holding that the use of the word "shall" is not sufficient to treat the Rule as mandatory. Even though the word "shall" prima facie indicates that it is mandatory, still the Court must ascertain the real intention of the Legislature by looking to the statute as a whole". In my view, Section 21(1) of the Act read with Rule 47(1) of the Trade Marks Rules, 2002 permit the Registrar to extend time, even though the time has expired. To hold otherwise would be to negate the words to that effect used both in Section 21(1) of the Act as well as Rule 47(1) of the Rules. Therefore, I am of the view that the word "shall" used in Sub-rule (6) of Rule 47 should also be construed to be only directory, but not mandatory, 21. In view of the reasons mentioned above and having regard to the fact that the time of three months for filing of an application for extension request, being not prescribed by the Act and having regard to the provisions in Section 21(1) enabling the Registrar to permit the filing of an extension application beyond the three months period but within such further period not exceeding one month in the aggregate; I consider that this is a fit case where the Registrar ought to exercise his discretion in granting and/or condoning the delay for filing of an extension application as sought for.
22. From the foregoing, it is apparent that the delay in filing the notice of opposition in this case is merely on account of late receipt of journals as well as irregular notification issued under Section 47(1) of Trade Marks Rules, 2002, which is clearly a rule of procedure and cannot work to the hardship of the Applicant or the Opponent.
Moreover, an interpretation of statute cannot be to the detriment of the public and rather such narrow interpretation would shake judicial conscience and adversely affect the cause of justice.
23. On a careful consideration of the above matter and having regard to the submissions made by the Counsel for the Opponents, I take a view that the notice of opposition alongwith a request on Form TM-44 filed by the above named Opponents on 28th August, 2006 is within the prescribed time even though the period mentioned in Rule 47(6) has expired and even though an application for extension of time is made beyond that period. It is hereby further ordered that a request on Form TM-44 filed on 28th August, 2006 is allowed and the notice of opposition filed by the above named Opponents on 28th August, 2006 is taken on record. It is also ordered that the matter shall now be proceeded within accordance with the law.