Shri Satish Sharma S/O R.C.Sharma, Madhya Pradesh Vs. the Registrar of Trade Marks, Trade Marks Registry, Mumbai and Another - Court Judgment

(Circuit Bench at Mumbai)

Honble Shri Z.S. Negi, Vice-Chairman:

This appeal under section 91 of the Trade Marks Act, 1999 is directed against the letter dated 26.4.2005 of the Registrar though Examiner of Trade Marks issued in pursuance of section 21(3) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) by which a copy of counter-statement was sent to the appellant inviting his attention to the requirements of the provisions of rule 53 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as the Rules). The appellant has filed, along with the appeal, two Miscellaneous Petition Nos. 64/2005 and 65/2005, respectively, for stay of further proceeding in relation to registration of application No. 740382 during the pendency of the appeal and for listing of the appeal for hearing at Delhi. During the pendency of the appeal, the appellant has also filed Miscellaneous Petition Nos.44/2006 and 104/2006, respectively, for taking certain additional facts and documents on record and for deciding the matter early and to dismiss the pending application No.740382 of the respondent for registration of trade mark.

2. The facts in brief for our present purpose as gathered from the appeal records are that the appellant is the sole proprietor of Bharat Auto Products and has on 5.5.1993 applied for registration of trade mark BEW under application No.596305 in class-12 in respect of Hubs and Brake drums for trucks and buses, tractors and trailors and animal driven vehicles, clutch housing and gear housing for trucks, buses and tractors, chassis parts, helper bracket, hanger shackles, etc. and the said application is pending. Shri Prashant Sharma in the capacity of a partner of the B.E.W. AUTO PARTS has on 7.5.1997 filed application No. 740382 for registration of trade mark BEW in class-12 in respect of almost similar goods as that of the appellants but later on he, as the proprietor of the firm, filed Form TM-16 dated 2.11.2000 for conversion of the said application into proprietorship firms application. However, the trade mark BEW (label per se) was advertised, before acceptance under proviso to section 20(1) of the Act, in the Trade Marks Journal No. MEGA 4 dated 25.10.2003 in the names of S/Shri Prashant Sharma and Bharat Sharma but subsequently the said advertisement was cancelled and the cancellation notification published in the Trade Marks Journal No.1311 dated 16.1.2004. The appellant filed an application on 25.8.2003 under rules 38, 39, 41 and 44 of the Rules and his opposition dated 4.3.2005 to the application No.740382 and thereafter the respondent No.2 filed his counter-statement dated 18.9.2004. Thereafter, the Registrar of Trade Marks by his office letter No.TOP/150 dated 26.4.2005 has sent a copy of counter-statement to the opposition No.166554 to the appellant inviting his attention to the requirements of rule 53 of the Rules. This appeal is against the said letter of the Registrar.

3. The appeal and miscellaneous petitions came up before us for hearing on 18.9.2007 when Shri Prashant Sharma, Advocate appeared for the appellant and Shri H.L.Verma, Advocate appeared for the respondent No.2. After the arguments were concluded, the learned counsel for the appellant was permitted to file written submissions with a condition that a copy of written submission should be sent to the opposite side to enable them to submit reply, if any, thereto.

4. Shri Sharma, learned counsel for the appellant submitted that the application for registration was filed by Shri Prashant Sharma in the capacity of the partner of the firm and the application was advertised in the Trade Marks Journal dated 25. 10.2003; the said advertisement dated 25.10.2003 was cancelled and notification treating the advertisement cancelled was published in the Trade Marks Journal No.1311 dated 16.1.2004 but thereafter the application was never advertised again by the Registrar of Trade Marks. It is amply clear that the application has not been accepted. He contended that when there is no notification in existence, there can be no opposition to application for registration or counter statement to the opposition and even if it is there, the same will be without jurisdiction. There are prescribed procedures for every stage, from filing of application for registration to the stage of its finalization, and the same are required to be followed sequentially but the Registrar is hopping at every stage of the procedure. He further contended that the Registrar of Trade Marks, without following the mandate and procedure as provided by or under the Act, is proceeding in the application No.740382 and as such the whole action or proceeding in respect of the said application is void-ab-initio. Shri Sharma submitted that even after direction issued by the Gwalior Bench of the Honble High Court of Madhya Pradesh, the Registrar of Trade Marks is not deciding the application/ objection filed by the appellant under rules 38, 39, 41 and 44 of the Rules. The learned counsel has stated in the written submission that the claim over the trade mark BEW has been adjudicated in the civil suit No.46A/2005 and further in the FA No.436/2005 and in the light of this subsequent event having taken place the application No. 740382 deserves to be dismissed out rightly. Further submission made by him is that the respondent No.2 has filed application on Form TM-1 under the status of partnership firm, the civil suit has been filed under the status of proprietorship firm, another suit in 1999 has been filed under the status of partnership firm and again in 2005 a civil suit has been filed under the status of proprietorship firm but there exists nothing on record to show the existence of proprietorship firm BEW and that the very person as per his wishes changes the status in the judicial proceedings and that person claiming to be the proprietor of the firm is serving as Chartered Accountant in the Max New York Life Insurance Company but the Registrar is proceeding in the matter totally ignoring the procedure as prescribed under the Act.

5. Shri Verma, learned counsel for the respondent No.2 contended that the appeal is not maintainable and should be dismissed out rightly as the same has been filed challenging the well established legal procedure of opposition proceedings and procedure of the registration and this Appellate Board has no power and no writ jurisdiction for determining and deciding the legality of any legal provisions of the Act. He contended that the present appeal is filed without any cause of action as the Registrar had not passed any interim or final order on 26.4.2005 in the opposition No.166554 and any communication sent in the matter cannot be questioned in appeal especially when it is not an order which is prejudicial to the appellant. Learned counsel submitted that the letter dated 26.4.2005 of the Registrar is legally valid as without calling the opponents evidence in support of his opposition, the Registrar will not be able to decide the legality and genuineness of any opposition notice. He submitted that it is false and wrong statement and wrong impression of the appellant that the Honble High Court has given any direction for deciding the appeal under sections 38, 39, 41 and 44 because there was no appeal filed by the appellant and as such no appeal of the appellant is pending before the Registrar. It is also false that the Registrar has withdrawn the acceptance of application for registration of the respondent No.2 because no notice for withdrawing the application has been received by him from the Registrar and if the acceptance of application has been withdrawn by the Registrar why he would send a copy of counter-statement to the appellant.

6. After carefully hearing the counsel of both sides and going through the records, the central question arises, around which other issues revolve, is whether the present appeal falls under sub-section (1) of section 91 of the Trade Marks Act, 1999 which 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 the person preferring the appeal. It is clear that for preferring an appeal under section 91 of the Trade Marks Act, 1999, the person preferring an appeal must be a person aggrieved by an order or decision of the Registrar under that Act. We would in the followings paras discuss the law propounded by the various courts regarding order passed or decision made under the Act and whether in the light of those legal propositions the impugned order of the Registrar is an order under the Act.

7. The order or decision against which an appeal is preferred should be such which affects the rights or liabilities of the parties as has been held by the Supreme Court. The Supreme Court has, in the case of Central Bank of India Limited v. Gokal Chand, AIR 1965 SC 799, held that an order under the Act means that it is an order which affects the rights and liabilities of the parties. The Honble High Court of Delhi in Ratan and Company v. Assistant Registrar of Trade Marks, PTC (Suppl) (1) 635 (Del) had occasion to consider the meaning of the words “from any order or decision of the Registrar under this Act” which occurred in a similar appeal provision [section 109(2)] of the Trade and Merchandise Marks Act, 1958 which is repealed by the Trade Marks Act, 1999. In that case, Honble Avadh Behari Rohtagi, J, has observed at paras 19 and 24 as under:-

‘19. 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 as a ground of objection in his appeal from the final order in the main proceeding.

24. A decision means a concluded opinion. It is an authoritative answer to the question raised before a court. It is the settlement of controversy submitted to it. Decision implies the exercise of a judicial determination as the final and definite result of examination 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.

An order or decision would include an order, which does not finally decide the rights of parties and would thus cover an order in an interlocutory matter as has been held by the High Court of Rajasthan in the case of Gharib Ram Sharma v. Daulat Ram Kashyap, (1994) 80 Com. Cases 267 (Raj).

8. Sections 18 to 24 of the Act provide for procedure for registration of a trade mark. Any person who claims to be the proprietor of a trade mark may apply to register the mark. Sections 19 and 20 deal with withdrawal of acceptance and advertisement, respectively, and section 21deals with the opposition to registration. In the present case, the application was, before acceptance, advertised in the Trade Marks Journal and thus the window for receiving notice of opposition was opened. The said acceptance of application was treated as cancelled by publishing the notification in the Trade Marks Journal as “740382 (J/9999) (4) XII- As per Ld. JRs order dated 16/01/2004 the advertisement of this application appearing in Mega issue of the trade marks journal dated 25/10/2003 is treated as cancelled.” It is very clear from the foregoing extracted notification that the application had been treated as cancelled and, therefore, no application for registration exists now. After cancellation of the application advertised in the Trade Marks Journal, the notice of opposition and counter-statement thereto on the basis of which advertisement they were filed do not survive. By sending the impugned letter, the Registrar can not be said to have passed order which affects the rights or liabilities the parties. The bald denial of respondent No.2 in the counter-statement, about cancellation of acceptance of application cannot be acceptable on the face of the public document like Trade Mark Journal containing the cancellation notification. We are in agreement with the contention of the learned counsel for the respondent No.2 that the present appeal is filed without any cause of action as the Registrar had not passed any interim or final order on 26.4.2005 in the opposition No.166554 and any communication sent in the matter cannot be questioned in appeal especially when it is not an order which is prejudicial against the appellant. We are, therefore, of the opinion that this appeal is filed without any cause of action and is not maintainable under sub-section (1) of section 91 of the Act. In view of this opinion, we do not consider it necessary to go into the merits or otherwise of the appeal.

9. The appeal is dismissed as not maintainable. Since the appeal is dismissed, Miscellaneous Petition Nos. 64 and 65/2005 and 44 and 104/2006 do not survive. There shall be no order as to costs.