K. Dhamodaraswamy Naidu and Bros Vs. the Registrar of Trademarks - Court Judgment

Honble Shri Z. S. Negi, Chairman:

The appellant, a registered partnership firm, through its partner Mr. K. Rangasamy has filed this appeal, under section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act), against the decision dated 22.10.2007 of the Assistant Registrar of Trade Marks, Trade Marks Registry, Mumbai rejecting/returning the TM-44 and TM-5.

2. The appellant has stated that it is the proprietor of the well known mark ‘Sree Annapoorna which is continuously being used from 1968 for various goods falling under class 30. It is averred that the appellant noticed the advertisement of application No. 1376103 dated 8.8.2005 of M/s. Hindustan Lever Limited (now changed as Hindustan Unilever Limited) for registration of trade mark ‘Annapurna published in the Trade Marks Journal No. 1356, Regular, dated 16.11.2006 and the said publication was made available to the public on 29.3.2007. The appellant filed notice of opposition (TM-5) on 22.10.2007 and also on 22.10.2007 filed an application on Form TM-44 for extension of time for giving notice of opposition but the Assistant Registrar of Trade Marks, by making endorsements, on the body of each of the letters forwarding the TM-5 and TM-44, that the TM-5 is time barred and cannot be considered / TM 44 is time barred and cannot be considered, returned both the letters. Thereupon, the appellant filed the present appeal.

3. Upon scrutiny, the Registry found that the impugned order appealed against is neither an order nor a decision within the meaning of section 91(1) of the Act and accordingly the counsel for the appellant was directed to clarify as to how the appeal is admissible under section 91 of the Act. The counsel for the appellant in his letter dated 5.3.2008 has made the following submissions:-

a.Section 91(1) of the Trade Marks Act, 1999 provides that “any person aggrieved by an order or decision of the Registrar under this Act or the rules made thereunder may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring appeal”. Further, 91(3) provide that an appeal to the Appellate Board shall be in a prescribed form and shall be verified in the prescribed manner and shall be accompanied by a copy of the order or decision appealed against and by such fee as may be prescribed.”

b. A close analysis of the provisions contemplated under Section 91(1) and 91(3) of the Trade Marks Act, 1999 read with Rules 3(2) and 8(2) of the Intellectual Property Appellate Board (Procedure) Rules, 2003, it can be understood that what can be appealed against is an order or decision of the Registrar under the Trade Marks Act, 1999 and the said appeal shall be prepared and filed in the manner prescribed therein.

c. The said terms “Order” and “decision” have not been defined either in the Trade Marks Act, 1999 or the Intellectual Property Appellate Board (Procedure) Rules, 2003 in which the said terms are referred to.

d. According to Oxford Advanced Learners Dictionary, order means something that somebody is told to do by somebody in authority. Thus, the term ‘order would indicate some expression of opinion which is to be carried out or enforced. It is the conclusion of a body (Courts, Authority or Tribunal) upon any motion. State of Andhra Vs. Ballam Konda Venkata Subbaiah AIR 1957 AP 462, 463.

e. The term “order” in legal parlance would always indicate some expression of opinion which is to be carried out or enforced. In other words, an order is a conclusion of a court or an authority or a tribunal upon any motion. Divnl. Forest Officer, Eluru Vs. Distt. Judge, West Godavari, AIR 2002 AP 224 Para 7.

f. Thus the term “order” would indicate some expression of opinion which is to be carried out or enforced and it is the conclusion of the authority in that matter placed before him. The term order is general and comprehensive enough to include all kinds or orders including a formal order. It includes every decision or award or order made under the Trade Marks Act, 1999.

g. According to Advance Law Lexicon, R Ramanatha Aiyar, “decision” is a word which has been used for signifying the judgment of a court; a judgment given by a competent Tribunal. The term “decision” is one which signifies the conclusion made by the authority and arrived at by him taking into account all attendant factors within his domine. It implies the exercise of a judicial determination as the final result and definite result of his examination of the questions before him.

4. The issue of maintainability of the appeal was placed before us for decision when Dr. K. S. Ravichandran, Advocate appeared on behalf of the appellant but the respondent was unrepresented. Learned counsel for the appellant mainly relied on and reiterated the contents of the letter dated 5.3 2008 which he authored.

5. After having heard the learned counsel, the issue before us to be considered is whether the endorsement made by the Assistant Registrar of Trade Marks, on the forwarding letters of the opponent, that TM 5 is time barred, cannot be considered and TM 44 is time barred, cannot be considered can constitute an order or a decision for preferring appeal there against. Before discussing the clarification given by the learned counsel we would discuss the law propounded by courts regarding the order passed or decision by the court, tribunal or authority under a statute. In the case of Central Bank of India Limited v. Gokal Chand, AIR 1965 SC 799, the Supreme Court held that an order under the Act means that it is an order which affects the rights and liabilities of the parties. The High Court of Delhi in Ratan and Co. v. P. Narayanan, AIR 1977 Delhi 93 had occasion to consider the meaning of the words “from any order or decision of the Registrar under this Act” which occurred in section 109(2) of the repealed Trade and Merchandise Marks Act, 1958. In that case Honble Avadh Behari Rohtagi, J has observed in paras 18,22 and 23 as under:-

‘18. To my mind the object of section 109(2) of the Act is to give a right of appeal to a party aggrieved by some order which affects his right or liability. The words “from any Order or decision of the registrar under this Act” though very wide do not include interlocutory Orders, which are merely procedural or processual and do not affect the rights and liabilities of the parties. The Legislature could not have intended that the parties should be harassed with endless expense and delay by appeals from such procedural orders. It is open to a party to set forth the error, defect or irregularity, if any, in such an order in as a ground of objection in his appeal from the final order.

22. When the Assistant Registrar extended the time he was not making a decision in the sense in which that word is used in Section 97 (c). He was merely extending the time by one month under Section 21(1). It can hardly be called a decision. It does not affect the rights and liabilities of the parties.

23. A decision means a concluded opinion. It is an authoritative answer to the question raised before a court. It is the settlement of a controversy submitted to it. Decision implies the exercise of a judicial determination as the final and definite result of examining a question. An order granting extension of time is not of such a nature. It is not such a decision as to give the aggrieved person a right to appeal. It is just a procedural order in aid of proceedings.

6. The Assistant Registrar, on placing of the TM 5 and TM 44 before him has recorded his remarks and returned them to the opponent without recording the statement of grounds of his decision or order. The order or decision should be reasoned one not a cryptic one giving no reasons for arriving at a particular conclusion. It is obvious that the Assistant Registrar has not accepted the TM 5 and TM 44 because they were prima facie time barred at the time of production thereof before him and he has recorded his cryptic remarks that TM 5/TM 44 is time barred and cannot be considered. The remark recorded by the Assistant Registrar has nothing but statement of the factual position of the procedure not adhered to within the limitation period by the opponent/appellant in the opposition proceedings before the Registrar of Trade Marks. Such a remark cannot constitute an order or decision of the Registrar under the Act. The term ‘order as propounded by the Courts in the cases relied upon by learned counsel (see at sub paras d and e above) is that order is a conclusion of a body (Courts, Authority or Tribunal). Decision is an authoritative answer to the controversy submitted to the tribunal. Here in this case by forwarding TM 5 and TM 44 no controversy was submitted to the tribunal (Registrar) for decision. Even if we assume that the controversy required to be decided was whether the filing of TM 5 and TM 44 was to be allowed at that stage, the Registrar has to give reason therefor and if no reason has been given, the appellant should have followed the procedure laid down under rule 40 of the Trade Marks Rules, 2002 (in short the Rules). Rule 40 of the Rules which deals with ‘Decision of Registrar empowers the Registrar to communicate his observations in writing to the applicant and if the applicant intends to appeal from such decision he may within thirty days from the date receipt of such communication apply in Form TM-15 to the Registrar requiring him to state in writing the grounds of, and the material used by him in arriving at, his decision. It is obvious that the appellant has not made any attempt to comply with the procedure laid down by rule 40 of the Rules.

7.In view of the above, we are in agreement with the objection raised by the Registry and hold that the remarks recorded by the Assistant Registrar of Trade Marks on the letter of appellant is neither an order nor a decision of the Registrar under the Act and, therefore, the appeal is not maintainable under section 91 of the Act.