M/S Koxan India Vs. Shri Ramesh Mardia and Another - Court Judgment

Honble Shri Z.S.Negi, Chairman:

The above appeal is filed by M/s Koxan India against the order dated 14.06.07 passed by the Deputy Registrar of Trade Marks, Chennai on Form TM-23 dated 31.05.05 relating to registration of trade mark No. 568306 in Class 09. As the appellant has also filed the present miscellaneous application, for the sake of convenience, the applicant shall hereinafter be referred to as the appellant.

2. According to the averment made by the appellant in the miscellaneous application, the appeal ought to have been filed on or before 07.12.2007 but the same has been filed before this Appellate Board on 14.01.2008 i.e. with a delay of 38 days. It is also averred that on 17.08.2007 the respondent No. 1/plaintiff in the suit No. 1352/06 supplied the appellant a copy of legal proceedings certificate dated 11.07.2007 wherein it was disclosed that the request on Form TM-23 dated 31.05.2005 was allowed by the Registrar but in the said legal proceedings certificate there was no mention as to on which date the impugned order was passed by the Registrar. Thereafter, the appellant, being aggrieved by the said order, wrote a letter dated 18.08.2007 to the Controller General with a copy to the Registrar of Trade Marks, Chennai requesting for fixing another hearing in the aforesaid Form 23. Consequent to the said letter, the Registrar of Trade Marks, Chennai by letter dated 03.09.2007, which was received by the appellant on or about 07.09.12007, informed the appellant that the request of respondent No. 1 on Form TM-23 dated 31.05.2005 was allowed ex parte. Thus, it is only on 07.09.2007 when the appellant became aware with the impugned order on Form TM-23 and as per the provisions of the Trade Marks Act, 1999, the appeal ought to have been filed on 07.12.2007.

3. It is also averred that the appellant has already filed the request on Form TM-24 and Form TM-33, both dated 02.09.2005, in relation to the trade mark No. 568308 in class 09 before the Registrar of Trade Marks, Mumbai. All these while the appellant was pursuing its aforesaid request on Form TM-24 and was verifying from the office of the Registrar of Trade Marks, Mumbai regarding the status of the same. There has been a delay of one month and few days in filing the appeal as the appellant was taking advise and seeking the legal opinion on the instant matter from different people. The appellant by way of abundant precaution is seeking the extension of two months time in filing the above mentioned appeal after condoning the delay of two months. The appellant has also averred that the delay in filing the instant appeal is unintentional and due to bonafide reasons mentioned in the application. There is well settled proposition of law that the substantive right of the parties should not be allowed to be thwarted on account of procedural technicalities. Moreover, no prejudice would be caused to the respondent No.1 in case the instant application is allowed.

4. The respondent No.1 in its reply has submitted that the grievance of appellant regarding the assignment effected in favour of the respondent No. 1 has been concocted as a mere afterthought to frustrate the rights of respondent No. 1 over the trade mark in question. The respondent No. 1 has further submitted that the appellant has not been diligent enough to pursue their Form TM-24 and Form TM-33 which were filed way back in September 2005. It is also submitted by the respondent No. 1 that a copy of legal proceeding certificate which was accompanied by an extract from the Register of Trade Marks clearly stating that the Form-23 dated 31.05.2005 had been allowed by an order of the Registrar clearly shows the fact that the effect of adjudication on Form 23 and it is within the knowledge of the appellant that the impugned order has been passed by the Registrar. Therefore, the fact of adjudication on From-23 and that the impugned order had been passed was well within the knowledge of the appellant from 17.08.2007 and for reasons best known to the appellant instead of taking steps to obtain copy of the same and pursue its appellate remedy, the appellant through its advocate issued a legal notice to the office of Registrar of Trade Marks threatening legal action that in the event of its demand was not met. The respondent No. 1 further submitted that the suits filed by both the parties have been clubbed and the same is pending before the High Court of Delhi; the High Court has framed the issues in the said proceedings and the High Court has appointed a Commissioner to record evidence pertaining to the very same issue of re-assignment of the trade mark in question. As the issues framed in the said suit has a connection to the issues involved in the appeal, the appeal and application may be dismissed on the ground of belated filing.

5. We have heard both the learned counsel on 25.03.2009 and now we would consider the issue in the light of provisions of section 91 of the Trade Marks Act, 1999 and the legal proposition laid down by the Courts.

6. Section 91 of the Trade Marks Act, 1999 deals with appeals to the Appellate Board. Sub-section (1) of that section provides appeal to the Appellate Board may be preferred within three months from the date on which order or decision sought to be appealed against is communicated to the person preferring the appeal. Sub-section (2) of that section which prohibits admission of an appeal if it is filed after the expiry of the period specified under sub-section (1). However, an exception has been carved out to sub-section (2) providing that an appeal may be admitted after the expiry of the period specified therefore, if the appellant satisfies the Appellate Board that he had sufficient cause for not preferring the appeal within the specified period. The Courts have held that the expression “sufficient cause” occurring in statutes in connection with limitation should receive liberal construction to do substantial justice. In the case of Ramnath Sao @ Ramnath Sahu and Others vs. V. Gobardhan Sao and ors. (2002) 3 SCC 195, the Apex Court has laid the following principles at para 11:-

‘11. Thus it becomes plain that the expression “sufficient cause” within the meaning of section 5 of the Act or Order 22 rule 9 of the Code or any other similar provision should receive a liberal construction so as to advance substantial justice when no negligence or inaction or want of bona fide is imputable to a party. In a particular case whether explanation furnished would constitute “sufficient cause” or not will be dependent upon facts of each case. There can not be straightjacket formula for accepting or rejecting explanation furnished for the delay caused in taking steps. But one thing is clear that the courts should not proceed with the tendency of finding fault with the cause shown and reject the petition by a slipshod order in over jubilation of disposal drive. Acceptance of explanation, furnished should be the rule and refusal an exception more so when no negligence or inaction or want of bona fide can be imputed to the defaulting party. On the other hand, while considering the matter the court should not lose sight of the fact that by not taking steps within the time prescribed a valuable right has accrued to the other party which should not be lightly defeated by condoning delay in a routine like manner. However, by taking a pedantic and hypertechnical view of the matter the explanation furnished should not be rejected when stakes are high and/or arguable point and facts and law are involved in the case, causing enormous loss and irreparable injury to the party against whom the lis terminates either by default or inaction and defeating valuable right of such a party to have the decision on merit. While considering the matter, courts have to strike a balance between resultant effect of the order it is going to pass upon the parties either way.

This Appellate Board while considering an application for condonation of delay in the case of Koninklijke Philips Electronics NV vs. Kay kay Home Appliances Pvt. Ltd. and anr. 2004 (290 PTC 601 (IPAB) it was observed at para 8 as under:-

‘8. From the above principle laid down by the Apex court, the legal position is: (1) the word “sufficient cause” should receive liberal construction to do substantial justice; (2) What is the sufficient cause? is a question of fact in a given circumstance of the case; (3) it is axiomatic that condonation of delay is the discretion of the court; (4) length of delay is no matter, but, acceptability of the explanation is the only criterion; (5) the rules of limitation are not meant to destroy the rights of the parties, but, they are meant to see that the parties do not resort to dilatory tactics to seek their remedy promptly; (6) if the explanation does not smack of malafides or it is to put forth as part of the dilatory strategy, the court must show utmost consideration to the suitor; (7) if the delay was occasioned by the party deliberately to gain time, the court should not forget the opposite party altogether.

7. Having regard to the above principles, we have to consider the explanation given by the appellant in the application and see whether the delay can be condoned. It is explained in the application that the appellant though came to know on 17.08.2007 from the legal proceedings certificate that the Registrar has allowed the Form TM-23 of the respondent No.1 but no date of order was made known to the appellant until it received the letter dated 03.09.2007 of the Registrar on or about 07.09.2007. The appellant has further explained the belated filing of appeal was unintentional and due to the circumstance herein before mentioned. In so far as the averment of respondent No.1, that the issue of re-assignment is involved in the suit pending before the high Court of Delhi and hence this application and appeal may be dismissed, is concerned, it is suffice to say that the provisions of section 93 of the Trade Marks Act, 1999 makes the position very clear. On a careful consideration of the application for condonation of delay, we find that the delay is neither wanton nor deliberate and no mala fide motive is imputable to the appellant. We do not see that by belated filing of appeal, the appellant might have taken some undue benefit out of it. In essence we are of the view that no negligence or inaction or want of bona fide is found to be imputable to the appellant. We are, therefore, satisfied that the cause shown by the appellant constitute sufficient cause for not preferring the appeal within the time specified under sub-section (1) of section 91 of the Trade Marks Act, 1999.

8. In view of the above, the application for condonation of delay is allowed with the direction to the Registry to admit the appeal. However, there shall be no order as to costs.