Bda Private Limited Vs. Paul P. John and ors. - Court Judgment

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intellectual property rights - trademark - stay - validity of registration - section 124 of the trade marks act, 1999 - defendants had applied for registration of their trade mark 'original choice' - plaintiff filed a notice of opposition in form tm-5 - deputy registrar passed an order that as the notice of opposition was beyond the prescribed time limit of four months, the opposition could not be taken on record and the defendants' trade mark was subsequently registered - plaintiff filed a review application, which was dismissed - further appeal was pending before intellectual property appellate board (ipab) - present suit has been filed on the basis of the alleged infringement of the plaintiff's registered trade mark 'officer's choice' - application filed praying for an order that the present suit be stayed pending final disposal of proceedings before the ipab - plaintiff contended that the appeal pending before ipab was nothing but a proceeding for rectification of the register in relation to the defendants' trade mark - defendant contended that the appeal which is pending before the ipab cannot be regarded as a proceeding for rectification of the register - whether the appeal pending before the ipab could be construed as a proceeding for rectification of the register in relation to the defendants' trade mark in terms of section 124(1)(i) of the act - held, an application for rectification has to be made in form tm-26 - however, the plaintiff has not filed any application in form tm-26 for the rectification of the register, although the act itself gives a definitive meaning to rectification and a procedure is prescribed under the rules, that has to be followed - hence, appeal pending before the ipab is not a proceeding for rectification of the register, although such an appeal may ultimately lead to the rectification of the register - section 124(1)(i) of the act would not be attracted - application allowed intellectual property rights - trade mark - section 21 of the trade marks act, 1999 - whether the provisions of section 21 of the act are mandatory or directory - held, provisions of section 21(1) with regard to the filing of a notice of opposition would be mandatory insofar as the actual filing of the notice in form tm-5 is concerned but would be directory in respect of the fee to be paid thereon accompanying the notice - - (ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the appellate board for rectification of the register. (2) if not, whether this court is satisfied that the plea regarding the invalidity of the registration of the defendants' trademark is, prima facie, tenable in the backdrop of the provisions of section 124 (1) (ii) of the said act question no. if the object of a law is to be defeated by non-compliance with it, it has to be regarded as mandatory. it is also relevant to note that the supreme court held that whenever a statute prescribes that a particular act is to be done in a particular manner and also lays down that failure to comply with the said requirement leads to a specific consequence, it would be difficult to hold that the requirement is not mandatory and the specified consequence should not follow. it was contended that there is identity and/ or similarity of the goods or services covered by the plaintiff's mark as well as the defendants' mark. dalpatram 1974 sc 471 wherein the supreme court held that admissions, if true and clear, are by far the best proof of the facts admitted. it was contended that the similarity between the marks had been admitted by the defendants and, thereforee, the plaintiff had clearly raised a prima facie tenable issue with regard to the invalidity of the registration of the defendants' trademark. since the fees were paid only on 15.04.2004, the notice of opposition in form tm-5 would be deemed not to have been filed on 31.03.2004 but only on 15.04.2004 consequently, the notice of opposition was clearly beyond time and was ex facie liable to be rejected on this ground alone. consequently, the said decision cited by mr jain is clearly inapplicable insofar as the argument under section 124(1)(ii) of the said act is concerned. (1970) 2 del 246. in the said decision it was observed with reference to section 111 of the 1958 act (which is similar to section 124 of the said act) that the statutory provisions have taken good care to see that the claim for rectification, which necessitates stay of the suit, must be prima facie tenable and that it is not the object of the law that in every action for infringement of trademark, stay should be granted, as soon as the defendant raises a howsoever false plea of the invalidity of the trade mark and rectification of the register. it was held that any other construction would lead to the bad result that every defendant would be entitled to obtain stay of action for infringement by simply raising the plea or by in fact subsequently instituting proceedings for rectification, however, frivolous they may be. in that case, it would be well within the powers of the registrar to reject the notice of opposition as being incompetent but not in the present case. however, that decision has been rendered in respect of the patents act, 1970 and the specific provisions contained therein as well as under the patent rules, 2003. in the present case we are not concerned with that act or rules and the same has to be decided within the four corners of the said act and the said rules. 22. mr sudhir chandra then referred to the amended replication and stated that while the plea with regard to invalidity of the registration had been taken both on account of the wrongful rejection of the plaintiff's opposition as well as on merits, it is true that the plea of wrongful rejection was dealt with in detail whereas the plea on merits was not elaborated upon. bishun narain inter college begin of the skype highlighting 0043/1987 end of the skype highlighting :[1987]2scr805 wherein it was observed in paragraph 6 that it is well settled that in the absence of pleading, evidence, if any, produced by the parties cannot be considered. but that it was equally well settled that no party should be permitted to travel beyond its pleading and that all necessary and material facts should be pleaded by the party in support of the case set up by it. in this backdrop, mr sudhir chandra submitted that the substance of the pleadings clearly indicate that the validity of the registration of the defendants' trademark has also been challenged on merits. however, the extension has to be applied for 'in the prescribed manner and on payment of the prescribed fee'.what is interesting is that section 21(1) refers to the application for extension of time as also to the notice of opposition. such an interpretation would clearly mean that the provisions of section 21(1) with regard to the filing of a notice of opposition would be mandatory insofar as the actual filing of the notice in form tm-5 is concerned but would be directory in respect of the fee to be paid thereon accompanying the notice. the plaintiff has clearly and categorically challenged the validity of the defendants' registration. consequently, i am satisfied that the plea regarding the invalidity of the registration of the defendants' trademark is, prima facie, tenable on both counts -the alleged improper rejection of the plaintiff's notice of opposition and the alleged non-registerability of the defendants' mark in view of section 11(1)(b) of the said act.badar durrez ahmed, j.1. the plaintiff has filed this application under section 124 of the trademarks act, 1999 (hereinafter referred to as the 'said act') praying for an order that the present suit be stayed pending final disposal of proceedings before the intellectual property appellate board (ipab). it is contended by the plaintiff that the defendants filed an amended written statement on 15.01.2008 wherein they have pleaded that their trademark 'original choice' and the device in class 33 for 'wines, spirits and liqueurs' has been registered under no. 722161. it is further contended that the defendants, on the strength of the said registration, have raised the plea that in view of the provisions of section 28(3) read with section 30(2)(e) of the said act, the plaintiff's relief for infringement of trademark as, inter alia, prayed in this suit, would not be maintainable against the defendants. it is further stated by the plaintiff that on 29.01.2008, an amended replication to the defendants' amended written statement was filed on its behalf. in the amended replication, the plaintiff has challenged the validity of the defendants' said registration of the trademark 'original choice'. it is also stated that the plaintiff has filed an appeal on 31.12.2007 before the ipab challenging the order passed by the deputy registrar. it is the contention of the plaintiff that during the pendency of the said appeal before the ipab this suit cannot be proceeded with in view of the provisions of section 124 of the said act.2. the present suit has been filed on the basis of the alleged infringement of the plaintiff's registered trademark 'officer's choice'. the defendants had applied for registration of their trademark 'original choice'. the plaintiff had filed a notice of opposition in form tm-5 on 31.03.2004 accompanied by a cheque for the prescribed fee. however, the cheque was not signed and, thereforee, it was returned to the plaintiff on 01.04.2004 it is material to note that on 02.04.2004 the period of four months (which included the extension that could be granted under section 21) from the date of advertisement in the trademark journal (02.12.2003) expired. on 13.04.2004, the plaintiff allegedly submitted the cheque after signatures, which was received at the trademark registry on 15.04.2004 thereafter, hearing was held on 10.11.2005 and ultimately the deputy registrar at the trademark registry, chennai passed an order dated 17.07.2007 to the effect that the notice of opposition to the defendants' application for registration filed on behalf of the plaintiff in form tm-5 was beyond the prescribed time limit of four months inasmuch as it was received in its completed form only on 15.04.2004 consequently, the said opposition was not taken on record and the defendants' trademark was subsequently registered. the plaintiff filed a review application which was also dismissed. the plaintiff then preferred an appeal against the order dated 17.07.2007 and the said appeal is pending before the ipab.3. section 124 of the said act reads as under:124. stay of proceedings where the validity of registration of the trade mark is questioned, etc.-(1) where in any suit for infringement of a trade mark- (a) the defendant pleads that registration of the plaintiff's trade mark is invalid ; or(b) the defendant raises a defense under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,- (i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark are pending before the registrar or the appellate board, stay the suit pending the final disposal of such proceedings;(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the appellate board for rectification of the register.(2) if the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.(3) if no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.(4) the final order made in any rectification proceedings referred to in subsection (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.(5) the stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit.in the context of the provisions of section 124 (1) (i) and (ii), the following questions arise for consideration:(1) whether the appeal pending before the ipab could be construed as a proceeding for rectification of the register in relation to the defendants' trademark in terms of section 124 (1) (i) of the said act?(2) if not, whether this court is satisfied that the plea regarding the invalidity of the registration of the defendants' trademark is, prima facie, tenable in the backdrop of the provisions of section 124 (1) (ii) of the said actquestion no. 14. mr sudhir chandra, the learned senior counsel appearing on behalf of the plaintiff, urged before this court that the appeal pending before the ipab was a proceeding for rectification of the register in relation to the defendants' trademark. he submitted that if the ipab were to allow the plaintiff's appeal then the impugned order dated 17.07.2007 would be set aside and consequently the registration of the defendants' trademark 'original choice' would also have to be cancelled. it was, thereforee, contended by him that the appeal pending before ipab was nothing but a proceeding for rectification of the register in relation to the defendants' trademark. to further substantiate his plea, mr sudhir chandra referred to an order dated 07.03.2008 passed by the ipab wherein it was observed:6. as regards the prayer as to recalling the certificate of registration is concerned, we are of the opinion that granting such a prayer would literally amount to rectifying the trademark on the register, a relief which is not available at this stage of appeal. such relief, if at all, can be granted after hearing of the appeal and not on a prima facie.5. on the other hand, mr sanjay jain, the learned senior counsel appearing on behalf of the defendants, submitted that the appeal pending before the ipab could not be regarded as a proceeding for rectification of the register. he submitted that section 57 was the specific provision which provided for an application being made for the purposes of, inter alia, rectification of the register. he further submitted that section 57 fell under chapter vii of the said act which specifically deals with the subject of 'rectification and correction of the register'. the said chapter included section 57 to 60. he submitted that section 57(1) stipulated that the person aggrieved could make an application 'in the prescribed manner' to the appellate board or to the registrar for the purposes of rectification of the register. such an application, in view of rule 92 of the trademark rules 2002 (hereinafter referred to as the 'said rules') would have to be made in form tm-26 in triplicate. the said form tm-26, inter alia, requires a declaration to be made that there is 'no action concerning the trademark in question pending in any court'. the said form is also to be accompanied by the prescribed fee.6. mr sanjay jain submitted that no such rectification application in form tm-26 has admittedly been filed by the plaintiff and, thereforee, the provisions of section 124 (1) (i) of the said act are not at all attracted. he submitted that the appeal which is pending before the ipab cannot be regarded as a proceeding for rectification of the register.7. considering the arguments advanced by the counsel for the parties, i am inclined to accept those of the counsel for the defendants. it is clear that an application for rectification has to be made in the prescribed manner as indicated in section 57 of the said act. the prescribed manner has been indicated in rule 92 which requires such an application to be in form tm-26. admittedly, the plaintiff has not filed any application in form tm-26 for the rectification of the register insofar as the defendants' registration is concerned. the appeal that has been filed by the plaintiff is against the order dated 17.07.2007 which merely disregards the purported opposition filed by the plaintiff on the ground of limitation. the original proceeding was one of opposition and not of rectification. the appeal from such a proceeding would also be in the nature of opposition and not in the nature of rectification. even the order dated 07.03.2008 passed by the ipab and on which reliance was placed by mr. sudhir chandra, only has reference to the prayer for recalling the certificate of registration during the pendency of the appeal. the ipab was of the view that if such a prayer was granted, it would literally amount to rectifying the register and such a relief was not available at that stage of the appeal. the ipab was of the view that such a relief, if at all, could be granted after hearing of the appeal and not on a prima facie view. without commenting further on the merits of the observations of the ipab, i am of the view that the appeal pending before the ipab is not a proceeding for rectification of the register, although such an appeal may ultimately lead to the rectification of the register.8. it is pertinent to note section 125 of the said act which also refers to an application for rectification of the register to be made to the appellate board in certain cases. this section provides that in the case of a suit for infringement of a registered trademark, where, inter alia, the defendant raises a defense under section 30(2)(e) and the plaintiff questions the validity of the registration of the defendant's trademark, the issue as to the validity of the registration of the trademark concerned (i.e. the defendant's trademark) shall be determined only on an application for the rectification of the register and, notwithstanding contained in section 47 or section 57, such an application shall be made to the appellate board and not to the registrar. the purpose of this provision is that when the validity of registration is in question in a suit for infringement, it can only be determined by the appellate board and not by the registrar. it has been noted earlier that section 57 gave liberty to an aggrieved party to apply either to the registrar or to the appellate board. that liberty has been curtailed and limited to applications before the appellate board in cases where suits for infringement are pending and where, inter alia, the defense under section 30(2)(e) has been raised by the defendants and the plaintiffs have questioned the validity of the defendants' trademark. this provision also indicates that the rectification proceeding in contemplation is one which is initiated on an application filed in terms of section 57 and consequently in form tm-26 in view of the provisions of rule 92 of the said rules.9. furthermore, when the act itself gives a definitive meaning to rectification and a procedure is prescribed under the rules, which procedure has to be followed in terms of the act, then any other proceeding which incidentally or ultimately may result in the rectification of the register, cannot be regarded as a proceeding for rectification of the register in the context of section 124(1)(i) of the said act. consequently, the appeal pending before the ipab would not be a proceeding for rectification and, thereforee, in the present case, section 124(1)(i) of the said act, would not be attracted. question no. 210. mr sudhir chandra submitted that the plea regarding invalidity of the registration of the defendants' trademark is prima facie tenable. he submitted that the opposition filed under section 21 was within time i.e before 02.04.2004 the fact that the cheque submitted along with the said opposition was inadvertently not signed was, according to him, merely a curable defect and the moment the cheque was signed and sent back to the registry on 15.04.2004, it would relate back to the date of the actual filing of the opposition, that is, on 31.03.2004 he submitted that the provision with regard to the payment of fee, as contained in section 21 of the said act, was directory and not mandatory. according to him it was merely a procedural provision and, thereforee, would have to be regarded as not being mandatory unless some prejudice was caused to the other side. it was also contended by him that this court ought to look at substantial compliance on the part of the plaintiff and not mere technical compliance or compliance in form.11. reliance was placed on pratap singh v. shri krishna gupta : [1955]2scr1029 wherein the supreme court observed in paragraph 3 that 'it is the substance that counts and must take precedence over mere form'. it was further observed that 'some rules are vital and go to be 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'. the supreme court further noted that when the legislature does not itself state which is which (i.e mandatory or directory) judges must determine the matter and, exercising a nice discrimination, sort out one class from the other along broad based, commonsense lines.12. mr sudhir chandra then referred to a decision of the supreme court in the case of sharif-ud-din v. abdul gani lone : [1980]1scr1177 where the supreme court held that the difference between a mandatory rule and a directory rule is that while the former must be strictly observed, in the case of the latter, substantial compliance may be sufficient to achieve the object regarding which the rule is enacted. the supreme court also held that in order to find out the true character of the legislation, that is, whether it is mandatory or directory, the court has to ascertain the object which the provision of law in question has to subserve and its design and the context in which it is enacted. if the object of a law is to be defeated by non-compliance with it, it has to be regarded as mandatory. it was also observed that a procedural rule ordinarily should not be construed as mandatory if the defect in the act done in pursuance of it can be cured by permitting appropriate rectification to be carried out at a subsequent stage unless by according such permission to rectify the error later on, another rule would be contravened. it is also relevant to note that the supreme court held that whenever a statute prescribes that a particular act is to be done in a particular manner and also lays down that failure to comply with the said requirement leads to a specific consequence, it would be difficult to hold that the requirement is not mandatory and the specified consequence should not follow. another decision relied upon by mr sudhir chandra was that of the supreme court in dove investments (p) ltd. v. gujarat industrial investment corpn. : air2006sc1454 wherein the supreme court held that whether a statute would be directory or mandatory will depend upon the scheme thereof and that ordinarily a procedural provision would not be mandatory even if the word 'shall' is employed therein unless a prejudice is caused.13. it was then contended by mr sudhir chandra that the expression prima facie tenable used in section 124(1)(ii) simply meant a substantial triable issue. for this proposition he placed reliance on the supreme court decision in dalpat kumar v. prahlad singh : air1993sc276b (para 5). on the basis of the aforesaid decision it was contended by mr sudhir chandra that the provision with regard to filing the notice of opposition accompanied by the payment of the prescribed fee was merely procedural and, thereforee, it would ordinarily have to be construed as being directory unless some prejudice was caused to the other side. he submitted that the application was filed on 31.03.2004 the unsigned cheque was filed along with it. it was returned on 01.04.2004 and again filed, after being signed, on 15.04.2004, only two weeks later. thereforee, no prejudice whatsoever was caused to the other side as no decision had been taken by the registry in the meanwhile. in fact, the impugned order was filed much later on 17.07.2007. mr sudhir chandra, thereforee, submitted that the rejection of the opposition application, as being time barred, was thereforee not proper and even if it was not ex facie illegal, the plaintiff has been able to raise a substantial triable issue with regard to the rejection of the opposition application on the ground of limitation. since the defendants' registration was a consequence of the rejection of the opposition application, thereforee, the validity of the defendants' registration is also implicitly in question when the rejection of the opposition application is challenged. on the basis of these submissions mr sudhir chandra submitted that the plaintiff has raised a plea regarding the validity of registration of the defendants' trademark and since such plea is a substantial triable issue, it is prima facie tenable and, thereforee, the provisions of section 124(1)(ii) would be attracted. this would entail the court staying the proceedings in this suit and enabling the plaintiff to move an application for rectification before the ipab and await its decision.14. in the course of arguments, mr sudhir chandra also took up the point that the defendants' mark (original choice) could not have been registered in view of section 11(1)(b) of the said act. section 11(1)(b) specifically provides that, save as provided in section 12, a trademark shall not be registered if, because of its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trademark. it was contended that there is identity and/ or similarity of the goods or services covered by the plaintiff's mark as well as the defendants' mark. there is also similarity between the plaintiff's trademark 'officer's choice' and the defendants' trademark 'original choice'. and, thereforee, there exists a likelihood of confusion on the part of the public. in such a situation, in view of the provisions of section 11(1)(b), the defendants' trademark could not have been registered. it was contended by mr sudhir chandra that similarity of the marks cannot be denied by the defendants inasmuch as they themselves have admitted that 'officer's choice' and 'original choice' are deceptively similar. he also referred to the affidavit of the managing director of the defendants filed by way of evidence wherein it was stated that the two marks are deceptively similar. he submitted that there are nine such affidavits, all stating the same. he then referred to the decision of the supreme court in nagindas v. dalpatram 1974 sc 471 wherein the supreme court held that admissions, if true and clear, are by far the best proof of the facts admitted. it was held by the supreme court that admissions in pleadings or judicial admissions, admissible under section 58 of the evidence act, made by the parties or their agents at or before the hearing of the case, stand on a higher footing than evidentiary admissions. the former class of admissions are fully binding on the party that makes them and constitute a waiver of proof. they by themselves can be made the foundation of the rights of the parties. on the other hand, evidentiary admissions which are receivable at the trial as evidence, are by themselves, not conclusive. they can be shown to be wrong. mr sudhir chandra submitted that the admissions made by the defendants are judicial admissions and, thereforee cannot be retracted. he also referred to the decisions of the supreme court in the case of narayan v. gopal : [1960]1scr773 and modi spinning and weaving mills v. ladha ram and co. : [1977]1scr728 for the same propositions.15. from the above discussion, it is apparent that mr sudhir chandra has taken a two pronged approach insofar as the question of the prima facie tenability in respect of invalidity of the registration of the defendants' trademark is concerned. in the first instance he took the stand that the rejection of the plaintiff's opposition application by virtue of the order dated 17.07.2007 was wrong and consequently the registration of the defendants' trademark was not valid. secondly, he contended that the defendants' trademark could not at all have been registered in view of the provisions of section 11(1)(b) of the said act on account of the similarity between the plaintiff's earlier mark and the defendants' mark as also the similarity of the goods and services for which the said marks were employed by the plaintiff and the defendants and the likelihood of confusion on the part of the public. it was contended that the similarity between the marks had been admitted by the defendants and, thereforee, the plaintiff had clearly raised a prima facie tenable issue with regard to the invalidity of the registration of the defendants' trademark.16. mr sanjay jain, who appeared on behalf of the defendants, contended straightaway that the provisions of section 21 with regard to the filing of an application of opposition were mandatory and not directory as suggested by mr sudhir chandra. it was mandatory that the application should have been made in the prescribed manner and on payment of the prescribed fee. if the same was not done then the consequences thereof would flow as provided under the said act and rules. as regards the second issue that mr sudhir chandra raised relating to the provisions of section 11(1)(b) of the said act, mr sanjay jain submitted that such a plea has not been raised by the plaintiff in the amended replication and the invalidity of the defendants' registration has been sought only on the ground of rejection of the opposition application. there is no plea whatsoever with regard to the provisions of section 11(1)(b) of the said act and, thereforee, the second plea of mr sudhir chandra does not even deserve consideration.17. amplifying on his submissions with regard to the rejection of the plaintiff's opposition application as being beyond time, mr jain referred to a full bench decision of this court in hastimal jain v. registrar of trade marks 2000 ptc 24 (fb) to show that the legislature provided a fixed term for moving the application under section 21(1). it was contended that the initial period prescribed for an opposition application is three months from the date of advertisement or re-advertisement of an application for registration. section 21 (1) itself provides for a further period, not exceeding one month in the aggregate, which may be allowed by the registrar on an application made to him. in the present case, mr jain submitted that the extension for time was applied for on 01.03.2004 the same was found to be in order and time was, thereforee, extended up to 02.04.2004 the notice of opposition in form tm-5 was filed on 31.03.2004 but as the signed cheque was submitted only on 15.04.2004, the notice of opposition in form tm-5 would be construed as having been filed on 15.04.2004 and not on 31.03.2004 that being the case, it would be beyond time and, thereforee, the deputy registrar had correctly rejected the same on the ground of limitation by virtue of the order dated 17.07.2007.18. it was further contended by mr jain that the provision as to fees is given in rule 11 of the said rules. sub-rule (5) of rule 11 specifically provides, subject to the provisions of rule 25(19), that where a fee is payable in respect of filing of a document and where the document is filed without fee or with insufficient fee, such document shall be deemed not to have been filed for the purposes of any proceedings under these rules. it was contended by mr jain that the notice of opposition in form tm-5 requires a fee to be paid at the time of filing. since the fees were paid only on 15.04.2004, the notice of opposition in form tm-5 would be deemed not to have been filed on 31.03.2004 but only on 15.04.2004 consequently, the notice of opposition was clearly beyond time and was ex facie liable to be rejected on this ground alone. this is exactly what the deputy registrar did in passing the order dated 17.07.2007 and, thereforee, there is no question of the plaintiff's plea being prima facie tenable. mr jain relied upon the decision of a learned single judge of this court in hindustan pencils ltd. v. aptudat industries 1993 ptc 65 which was rendered in respect of section 111 of the trade and merchandise marks act, 1958, which is similar to the provisions of section 124 of the said act to contend that for invoking the provisions of section 111 of the 1958 act it would be necessary that rectification application ought to have been pending before institution of the suit. however, i am of the view that this decision is not relevant for the purposes of considering section 124(1)(ii) of the said act where the issue relates to the prima facie tenability of the plea regarding invalidity of the defendants' registration and the said provision operates where no proceedings for rectification are pending. consequently, the said decision cited by mr jain is clearly inapplicable insofar as the argument under section 124(1)(ii) of the said act is concerned. similarly the decision in the case of kedar nath v. monga perfumery and flour mills, delhi : air1974delhi12 would also be in applicable.19. mr jain next submitted that the plaintiff does not want to file an application for rectification under section 57 of the said act. it has insisted that the appeal pending before the ipab is a proceeding for rectification. mr jain submitted that in this backdrop the avenue under section 124 (1) (ii) is not available to the defendants. he further reiterated that no plea on merits has been taken with regard to the invalidity of the registration of the defendants' trademark. in this context, mr jain drew my attention to the amended replication filed on behalf of the plaintiff. the amended portion merely states that the defendants' registration for the trademark 'original choice' and device is not a valid registration under the said act. this is followed by the statement that the defendants' application proceeded to registration in the facts and circumstances narrated therein. these facts and circumstances, from paragraph (a) to (g), all relate to the filing and rejection of the plaintiff's opposition. this is followed by a reference to the appeal pending before the ipab and finally it is stated as under:it is, thereforee, denied that the subject registration gives the defendants the exclusive right to use the said trademark in registration to the above mentioned goods and that the plaintiff's relief for infringement of the trademark is not maintainable against the defendants.this is followed by the following sub-paragraph:however, without prejudice to the aforesaid, it is pertinent to note that the defendants by relying on the defense to section 28(3) of the trade marks act, 1999 has once again consented to the fact that the defendants' mark 'original choice' is identical with or nearly resembles the plaintiff's mark 'officer's choice'.it was, thereforee, contended by mr jain that the entire argument with regard to invalidity of the defendants' registration centres around the rejection of the plaintiff's opposition application. there is no mention of the ground under section 11(1)(b) of the said act as was sought to be raised by mr sudhir chandra in the course of arguments.20. mr jain placed reliance on the decision of a learned single judge of this court in the case of mohd. rafiq mohd. shafiq v. modi sugar mills ltd. (1970) 2 del 246. in the said decision it was observed with reference to section 111 of the 1958 act (which is similar to section 124 of the said act) that the statutory provisions have taken good care to see that the claim for rectification, which necessitates stay of the suit, must be prima facie tenable and that it is not the object of the law that in every action for infringement of trademark, stay should be granted, as soon as the defendant raises a howsoever false plea of the invalidity of the trade mark and rectification of the register. it was held that any other construction would lead to the bad result that every defendant would be entitled to obtain stay of action for infringement by simply raising the plea or by in fact subsequently instituting proceedings for rectification, however, frivolous they may be. mr jain also referred to the passing observation made in the said decision that the suit had not remained at the initial stage and considerable advance had been made in the matter of recording evidence and it would not be in the interests of justice to stop its further progress. similarly mr jain submitted that the present suit is also at the stage of final arguments and, thereforee, it would not be in the interest of justice to stay further proceedings in the suit.21. in rejoinder mr sudhir chandra submitted that there is no time prescribed under the act for the payment of the fee in respect of a notice of opposition. he reiterated that this is a case of a clerical error in that the attorney who filed the notice of opposition inadvertently did not sign the cheque for the fee covering the notice of opposition. he submitted that this was a curable error and, thereforee, once the signed cheque had been submitted on 15.04.2004, it would relate back to the date on which the notice of opposition in form tm-5 was filed, i.e., on 31.03.2004 he submitted that the present case was different from a case where no fee is paid at all. in that case, it would be well within the powers of the registrar to reject the notice of opposition as being incompetent but not in the present case. mr sudhir chandra referred to the decision of a learned single judge of this court in the case of aia engineering ltd. v. controller of patents and anr. wherein it was noted that the non-payment of the fee was a curable error. however, that decision has been rendered in respect of the patents act, 1970 and the specific provisions contained therein as well as under the patent rules, 2003. in the present case we are not concerned with that act or rules and the same has to be decided within the four corners of the said act and the said rules. thereforee, this decision would not be of much relevance in the present case.22. mr sudhir chandra then referred to the amended replication and stated that while the plea with regard to invalidity of the registration had been taken both on account of the wrongful rejection of the plaintiff's opposition as well as on merits, it is true that the plea of wrongful rejection was dealt with in detail whereas the plea on merits was not elaborated upon. he referred to the amended replication and submitted that the plaintiff had specifically taken the point of the two trademarks being identical or nearly resembling each other in the context of section 28(3) of the said act. this, in his view, was sufficient and although section 11(1)(b) of the said act was not mentioned, the plea concerning the said provision had been taken. and, the plaintiff could not be shut out from raising the plea on merits. mr sudhir chandra referred to the decision of the supreme court in the case of ram sarup gupta v. bishun narain inter college 0043/1987 : [1987]2scr805 wherein it was observed in paragraph 6 that it is well settled that in the absence of pleading, evidence, if any, produced by the parties cannot be considered. but that it was equally well settled that no party should be permitted to travel beyond its pleading and that all necessary and material facts should be pleaded by the party in support of the case set up by it. the supreme court held that the pleadings, however, should receive a liberal construction and a pedantic approach should not be adopted to defeat justice on hair splitting technicalities. it was observed in this context that sometimes pleadings are expressed in words which may not expressly make out a case in accordance with strict interpretation of law, in such a case, it is the duty of the court to ascertain the substance of the pleadings to determine the question. the supreme court cautioned that it is not desirable to place undue emphasis on form, instead the substance of the pleadings should be considered. in this backdrop, mr sudhir chandra submitted that the substance of the pleadings clearly indicate that the validity of the registration of the defendants' trademark has also been challenged on merits.23. the issue before this court is whether the plea regarding the invalidity of registration of the defendants' trademark is, prima facie, tenable. the first attack on validity of the registration of the defendants' trademark is based on the alleged wrongful rejection of the opposition application filed by the plaintiff. the contention being that had the opposition application not been rejected, the defendants' mark would not have been registered. it is necessary to examine the requirements of law in respect of a notice of opposition. as discussed above, the relevant question here would be to consider whether the provisions of section 21 of the said act are mandatory or directory. an examination of section 21(1) of the said act reveals that any person may give a notice in writing 'in the prescribed manner' to the registrar of his opposition in respect of an application for registration. such notice is required to be given within three months from the date of advertisement or re-advertisement of the application for registration. it may, however, be given during a further period, not exceeding one month in the aggregate, as the registrar allows. however, the extension has to be applied for 'in the prescribed manner and on payment of the prescribed fee'. what is interesting is that section 21(1) refers to the application for extension of time as also to the notice of opposition. insofar as the application for extension of time is concerned, the said provision uses the expression 'in the prescribed manner and on payment of the prescribed fee'. however, in respect of the notice of opposition the expression used is? 'in the prescribed manner.' it is important to note that the expression 'and on payment of the prescribed fee' is absent in respect of the notice of opposition. rule 47 deals with notice of opposition. sub-rule (1) prescribes that a notice of opposition to the registration of a trademark under section 21(1) shall be given in triplicate in form tm-5 within the stipulated period. sub-rule (6) pertains to the application for extension of the period within which a notice of opposition may be given. it stipulates that such an application 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 section 21(1). here, again, one notices the distinction between the requirement of the prescribed fee accompanying the application for extension of the period within which a notice of opposition may be given and the provision pertaining to the notice of opposition being filed in triplicate in form tm-5 without any reference to it being accompanied by the prescribed fee. however, rule 47(2) indicates that where a notice of opposition has been filed in respect of a single application for registration of a trademark, it shall bear the fee in respect of each class in relation to which the opposition is filed in form tm-5.24. another provision which needs consideration is section 150(1) of the said act. it deals with fees and surcharge. section 150(1) provides that there shall be paid in respect of applications and registration and other matters under the act such fees and surcharge as may be prescribed by the central government. sub-section (3) stipulates that where a fee is payable in respect of the filing of a document at the trade marks registry, the document shall be deemed not to have been filed at the registry until the fee has been paid. this provision is open to the interpretation that unless and until the prescribed fee is paid on the document, the document shall not be deemed to have been filed at the registry. in the context of the facts of the present case, it could be interpreted as meaning that on 31.03.2004 when the notice of opposition was filed in form tm-5 since the fee was paid only on 15.04.2004, it shall be deemed to have been filed on 15.04.2004 and not on 31.03.2004 thereby, implying that the notice of opposition was beyond time which expired on 02.04.2004 another interpretation could be that till the fee is paid, the document is deemed not to have been filed but once the fee is paid, the document would be considered to have been filed on the date on which it was physically presented to the registry. in the context of the facts of the present case this would mean that the receipt of the cheque duly signed on 15.04.2004 would relate back to the date on which the document i.e., the notice of opposition in form tm-5, was filed and that date would be 31.03.200425. rule 11 pertains to fees. sub-rule (1) provides that the fees that are to be paid in respect of applications, oppositions, registration, and renewal, expedited examination or reports or any other matters under the act and the rules shall be those specified in the first schedule and shall be referred to as the prescribed fees. entry no. 12 in the first schedule indicates that fee payable on a notice of opposition, inter alia, under section 21(1) for each class opposed would be rs 2,500.00. sub-rule (2) of rule 11 provides that where in respect of any matter, a fee is required to be paid under the rules, the form or the application or the request of the petition thereof, it shall be accompanied by the prescribed fee. sub-rule (3) provides that fees may be paid in cash or sent by money order addressed to the registrar or by a bank draft issued or by a cheque drawn on a scheduled bank at the place where the appropriate office of the trade marks registry is situated and if sent through post, shall be deemed to have been paid at the time when the money order or the properly addressed bank draft or cheque would be delivered in the ordinary course of post. sub-rule (4) stipulates that bank drafts and cheques shall be crossed and shall be paid at the appropriate office of the trade marks registry and they shall be drawn on a scheduled bank at the place where the appropriate office of the trade marks registry is situated. sub-rule (5) stipulates that subject to the provisions contained in sub-rule (19) of rule 25, where a fee is payable in respect of filing of a document and where the document is filed without fee or without insufficient fee, such document shall be deemed not to have been filed for the purposes of any proceedings under these rules.26. a survey of the above provisions indicates that while section 21(1) speaks of a prescribed manner and prescribed fee in relation to the application for extension of time, it does not mention the expression 'prescribed fee' insofar as the notice of opposition is concerned. this distinction is material because it occurs in the very same provision. similarly, rule 47, which deals with the notice of opposition, does not mention that the application must be accompanied by the fee prescribed. however, rule 47(6), which deals with the application for extension of the period within which a notice of opposition to the registration of a trademark may be given, stipulates that such an application is required to be made in form tm-44 'accompanied by the fee prescribed.' thus, it is apparent that both the legislature when it enacted the said act and the central government when it framed the said rules was mindful of the distinction that while an application for extension of time for filing of the notice of opposition must be accompanied by the prescribed fee, there was no such requirement in respect of the notice of opposition to be filed in form tm-5. it is true that the provisions of section 150 (3) and rule 11 do indicate that where fees are to be paid in respect of, inter alia, oppositions and other documents, they would be deemed not to have been filed if they are filed without fee or with insufficient fee. however, as would be apparent upon a reading of section 150(3) it is a possible interpretation that such a document will be deemed not to have been filed 'until the fee has been paid' in the sense that once the fees are paid, the document shall be taken as filed and shall relate back to the date on which it was physically filed. such an interpretation would clearly mean that the provisions of section 21(1) with regard to the filing of a notice of opposition would be mandatory insofar as the actual filing of the notice in form tm-5 is concerned but would be directory in respect of the fee to be paid thereon accompanying the notice.27. this discussion leads me to the conclusion that the interpretation that is sought to be put forth by the learned counsel for the plaintiff is not frivolous and definitely raises a substantial triable issue even in respect of the question of the rejection of the plaintiff's notice of opposition by virtue of the order dated 17.07.2007 on the ground of limitation. this, of course, is an issue which shall have to be determined by the ipab. even on merits, the plaintiff's arguments with regard to the invalidity of the defendants' registration on account of the provisions of section 11(1)(b) of the said act cannot be thrown out at the threshold. i do not agree with the learned counsel for the defendants that this plea was not taken by the plaintiff in the amended replication. the plaintiff has clearly and categorically challenged the validity of the defendants' registration. one ground elaborated upon was with regard to the alleged wrongful rejection of the plaintiff's notice of opposition. the other ground which was not elaborated upon was with regard to the deceptive similarity of the two marks and the defense taken by the defendants under section 28(3) which would consequently translate also to the defense under section 30(2)(e) of the said act. although the provisions of section 11(1)(b) have not been mentioned in the amended replication, the plaintiff has laid down the basis of challenge to the validity of the defendant's registration under that provision on account of similarity of the trademarks and identity or similarity of the goods. thereforee, to submit that the plaintiff has not raised the plea of invalidity of registration of the defendants' trademark on merits, would not be correct.28. it is also clear that the grounds raised on merits are not such which can be deemed as frivolous or vexatious. substantial triable issues arise with regard to the challenge to the validity of the registration of the defendant's trademark. consequently, i am satisfied that the plea regarding the invalidity of the registration of the defendants' trademark is, prima facie, tenable on both counts - the alleged improper rejection of the plaintiff's notice of opposition and the alleged non-registerability of the defendants' mark in view of section 11(1)(b) of the said act. accordingly, the issue regarding the same is raised and this case is adjourned for a period of three months in order to enable the plaintiff to apply to the ipab for rectification of the register in the prescribed manner.this application stands allowed accordingly.