INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-l, 2nd floor, 443, Anna Salai, Teynampet, Chennai 600 018
(Circuit Bench sitting at Kolkata)
OA/59 and 60/2011/TM/KOL
MONDAY, THIS THE 16th DAY OF APRIL, 2012
HON'BLE Smt. JUSTICE PRABHA SRIDEVAN ... CHAIRMAN
HON’BLE Shri V. RAVI … TECHNICAL MEMBER
Pernod Ricard India Private Ltd.,
104, Ashoka Estate,
Barakhamba Road,
New Delhi – 110 001. … Appellant
(Represented by Advocates: Shri Hemant Singh and Ms. Mamta Jha)
Vs.
1. The Controller General of Patents,
Designs and Trade Marks,
101, Old CGO Building,
Maharishi Karve Road,
Mumbai – 400 020.
2. The Assistant Registrar,
Trade Marks Registry,
Boudhik Sampadha Bhawan,
CP-2, Sector –V, Salt Lake,
Kolkata – 700 091.
3. United Spirits Limited,
Unit No. F-127/128,
Ansa Industrial Estate,
Sakivihar Road, Sakinaka,
Andheri East, Mumbai – 400 072.
4. Shaw Wallace & Co. Ltd.,
4, Bankshell Street,
Kolkata – 700 001. … Respondent
(Represented by Advocates: Shri P.S. Raman, Senior Counsel with Shri T. Radhakrishnan, Shri Ramji, Shri Bharat Shah and Ms. Kajol Sinha)
ORDER (No.89/2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
This case raises a pure question of law and it depends on the construction of S.25(3) and 25(4) of the Trade Marks Act, 1999 . By a detailed judgement interim stay was granted in favour of the appellant and since both the counsel prayed for early hearing, we posted the matter in February 2012, when the matter was heard.
2. The appellant before us is the registered owner of the mark “MASTER BLEND” (MB in short). The respondent’s mark is “BAND MASTER BLEND” (BMB in short). According to the appellant, it has a world-wide reputation as a manufacturer of very popular alcoholic beverages. In several countries it adopted the mark MB and in India, it is the registered owner of the said mark No. 1456202. The appellant claimed user from 1995. The registration was granted with effect from the date of application i.e. 25.03.2006. It was advertised in the Journal No. 1441 on 01.06.2010. The appellant came to know of the mark ‘BMB’ only when the respondent objected to the Excise approval of the label “MB”. The respondent’s objection was over-ruled on 06.01.2011 as the mark ‘BMB’ had expired by then. According to the appellant, though then they came to know of the marks “BAND MASTER BLEND” registration Nos. 488802 and 488803, the marks had already been removed from the Register in 2010. The said removal had been notified in the Journal on 01.03.2010. The marks had in fact expired on 07.04.2009. One year after the date of expiry of the mark, the respondent filed Forms TM-12 and TM-13.
3. Before the Registrar the appellant raised the following grounds that 1) the applications for renewal and restoration cannot be entertained since they were beyond time 2) the respondent had not proved that Form O-3 was not served and 3)that the appellant would suffer substantial injury if the mark was restored. On the side of the respondent it was contended that many marks had been removed by the TM registry and there were some complaints that some of the removals were not in accordance with law. So a Public Notice had been issued by the Controller General calling for the aggrieved parties to make a representation. The respondent also submitted that since Form O-3 was not sent to the respondent, there could be no removal. Therefore, the restoration must be allowed. After hearing both sides, the Registrar restored the mark. Against that order this appeal has been filed.
4. The learned counsel Mr. Hemant Singh made his submissions on behalf of the appellant and the learned Senior counsel Mr. P.S. Raman appeared on behalf of the respondent. In addition to the oral submissions made by them, written submissions were also filed.
5. The learned counsel Mr. Hemant Singh submitted that the order suffered from several infirmities. The impugned order was passed on 29.07.2011, and from the records it is seen that it was sent on 02.08.2011. When the aggrieved party is allowed 90 days time to file an appeal, the restoration was effected within 30 days time. The learned counsel submitted that the haste with which the restoration and renewal was effected without giving an opportunity to the appellant to file the appeal and to obtain interim orders would show that there was a grave miscarriage of justice. The learned counsel submitted that even assuming without admitting that Form 03 notice was not issued, that would not nullify the non-renewal for failure to pay the fees and in any event, no restoration can be ordered beyond the time stipulated by the Act. The learned counsel submitted that many of the decisions cited related to non-renewed mark but not removed marks. The learned counsel submitted that the provision relating to removal of the mark should be seen in the perspective of the legal history relating to restoration of removed marks. Under the Trade Marks Act, 1940 (1940 Act) no time frame was provided for restoration of the mark. It was in the Trade & Merchandise Marks Act, 1958 (1958 Act) that the time frame was stipulated. According to the learned counsel it was evident that the Parliament intended that restoration cannot be done without any time limit.
6. The learned counsel submitted that the grievance of the respondent that since Form O-3 had been issued, the mark could not be allowed to expire is unacceptable. The learned counsel submitted that the consequence of non-renewal results in expiry of the mark. The expiry is not a determination of the rights of the proprietor. The expiry follows non-renewal. Form 03 notice is not a show cause notice. It is merely procedural and not a substantive provision. Form 03 notice has nothing to do with removal, it merely informs the proprietor that the mark is due to expire. The trademark right is not terminated by the removal, it merely removes from the register what has already expired. We cannot read into the Statute what is not there and to construe S.25(4) to mean that unless Form O-3 notice is issued, the mark shall not be removed. The learned counsel submitted that the intention of the law makers is further clear by the introduction of proviso to S.25(3) which shows that the Parliament did intend to make the law, time-frame-specific. The learned counsel submitted that there are sufficient safeguards inbuilt in the Act to protect the Intellectual Property Rights and the Act does not say that non-issuance of Form O-3 notice means that the mark can be renewed at anytime and can never be removed. The learned counsel submitted that there is no conflict between S.25(3) and 25(4) and each should be read so as to give meaning to both provisions and not to render any one of them otiose or redundant. S.25 must be interpreted as a whole and the sub-sections cannot be read in a disjointed manner. The learned counsel submitted that if the law had not provided for a procedure for restoration, after the mark is removed, then the non-issuance of Form O-3 notice may assume significance but now the procedure has been specified. The learned counsel submitted that once removal takes place then the law moves to the next stage and S.25(4) takes over. The learned counsel submitted that even otherwise the question whether Form O-3 notice was issued or not should be proved by the persons who claims that O-3 notice was not issued and wants to derive an advantage from that. It cannot be inferred it must be proved. The various attorneys of the appellant whose addresses were given as address for service have not sworn to the fact that notice was not served. He referred to the various pages of the paper book which contain the affidavits regarding the issuance/non-issuance of notice. The learned counsel submitted that between 2005-2010 the respondent had not used the mark. The appellant could not have filed an application for removal of the mark on the ground of non-user since at the time the appellant’s mark was registered, the respondent’s marks had already been removed and by this impugned order, the mark has been restored, and the respondent had started using the mark and therefore the ground of non-user has been taken away.
7. The learned counsel also submitted that the affidavit regarding non-issuance of Form O-3 has been sworn at one time by the counsel for Shaw Wallace and at another time the counsel for United Breweries and it is not clear whether the person who had sworn to the affidavit had, at that point of time, the authority to swear to the affidavit on behalf of the Company. The learned counsel appearing for the appellant relied on several judgements which will be dealt with later.
8. The learned Senior Counsel appearing for the respondent submitted that Shaw Wallace amalgamated with United Breweries in 2007 and TM-24 has been filed with the Trade Marks Registry. He submitted that the mark ‘MB’ was applied for in 2005 where as the mark ‘BMB’ was registered till 2009. There are no bonafides in the conduct of the appellant. The learned Senior Counsel submitted that ‘BMB’ has been used from 1943 which is the date of first use and therefore the respondent is the prior user. The learned Senior Counsel submitted that if no Form O-3 notice is given, then S.25(4) will not come into play. The learned counsel submitted that sometimes a particular mark which had expired is not removed for several years and would therefore get the benefit of renewal because Courts have held that if Form O-3 notice is not sent the proprietor is entitled to have his mark renewed even after the expiry of the mark; while if the mark is removed immediately after the expiry, then as per the stand of the appellant the respondent will not have that advantage. The learned counsel submitted that this would be unjust and the rights of the parties cannot depend upon the vagaries of the officers. The learned counsel submitted that the chronology of the events would show that it was as if the appellant was waiting for the respondent’s mark to be removed to ''sneak'' in his mark. The learned Senior Counsel submitted that the respondent had asserted the non-receipt of Form O-3 and therefore, the burden shifts to the Registrar to prove that the notice was sent. If O-3 notice is mandatory then the removal without the issuance of the said notice is non est. The counsel submitted that in the pleadings the appellant had stated that there is no confusion and both the marks can subsist. The learned Senior counsel submitted that if the appellant is prejudiced then his remedy lies in filing the rectification or by any legal process by which his grievance can be addressed. The learned senior counsel submitted that the public notice has no consequence and the respondent’s application was filed before the public notice.
9. First we will refer to the judgements relied upon by the counsel. The learned counsel for the appellant first referred to 2007 (35) PTC 875 (Karn.) Tetragon Chemie (P) Ltd., vs Government of India & Anr., wherein the Hon’ble High Court held that there was no prior notice under S.25 read with Rule 69 before the order of removal was issued. The impugned order of removal was quashed. The learned counsel for the appellant also distinguished this by saying that before the order of removal in that case, the renewal application had been filed along with requisite fee during 2002 and therefore, that case will not apply to the present case.
10. In AIR 2011 SC 760 Kalyan Kumar Gogoi v. Ashutosh Agnihotri and another, the question was relating to hearsay evidence. The learned counsel submitted that the evidence with regard to the non-issuance of Form O-3 falls in this category.
11. The learned counsel then relied on W.P. (C) 10189/2009 Allied Nippon Limited vs. Union of India and Others. That was the case where nothing was brought on record to show that the notice in Form O-3 was issued. Therefore, the benefit of doubt was given to the petitioner and the Hon’ble High Court directed the Registrar of Trade Marks to consider the application for renewal by condoning the delay. The learned counsel submitted that this decision will not apply since the mark had not been removed.
12. In 2010 (42) PTC 57 (Mad.) (DB) Allied Blenders and Distillers Pvt. Ltd, vs. Intellectual Property Appellate Board and Ors., the Division Bench of the Madras High Court held that the Trade Marks Act is a special Act and time provided in the Act must be observed too and if the special Act provides for specific time and manner for doing an act, the requirement cannot be relaxed. In this case it was also held that Rule 53 cannot be pressed into service since that section will apply only where time is not expressly provided. The learned counsel submitted that this case will squarely apply and there cannot be any relaxation of the requirement in law to file the application for restoration of the mark within one year from the date of removal.
13. Next he referred to 1983 PTC 55 A. Abdul Karim Sahib and Sons etc. v. The Assistant Registrar of Trade Marks. In this case the Division Bench of the Madras High Court held that the Statute does not contemplate punishment and if restoration is just it is bound to be made. The Division Bench took note of the inordinate delay and held that if the delay had led to the registration of mark in favour of someone else, it would be an appropriate ground for denial of right. The learned counsel submitted that this case arose under the 1940 Act which did not provide for the time frame for filing the restoration application and yet the Division Bench taken note of third party rights. The Division Bench had referred to the Rule and had held that restoration can be made if it is just(Emphasis supplied). In the present case the restoration had not been filed within time.
14. In AIR 1986 SC 137 American Home Products Corporation v. Mac Laboratories Pvt. Ltd., it was held no construction should be put upon a statutory provision which would lead to manifest absurdity or futility, palpable injustice. They were speaking in the context of the legal confusion created by S. 48 (2). The counsel submitted that if the respondent’s case has to be accepted then S.25(4) may be removed from the Statute.
15. He then referred to AIR 1989 SC 2227 M/s Aphali Pharmaceuticals Ltd., vs. State ofMaharashtra and others. Wherein the Hon’ble Supreme Court had held that no part of a Statute is to be taken as superfluous or redundant and every word in a statute must be given a meaning and the statute has to be so construed with reference to all the clauses in the Act. The learned counsel submitted that it is the proper way of constructing S.25 would mean that there cannot be any restoration beyond that.
16. In AIR 1992 SC 1789 Krishan Kumar v. State of Rajasthan and others the Hon’bel Supreme Court held that where there appears to be inconsistency in two sections of the same Act, the principle of harmonious construction should be used and no section of the Statute can be used to defeat any section.
17. In AIR 2003 SC 1637 Balwant Singh and others, v. Anand Kumar Sharma and othersthe Hon’ble Supreme Court referred to Sutherland Statutory Construction and held that if no consequences of non-compliance are stated then it should be considered as a factor tending towards a directory construction.
18. In (2007) 9 SCC Pandiyan Roadways Corporation Ltd., vs. N. Balakrishnan the Hon’ble Supreme Court held that the ordinarily consequences flowing from the contravention of an imperative character of a Statute have to be given effect to.
19. In (2010) 13 SCC 98 May George vs. Special Tahsildar and ors., it was held that
“26… In fact, failure of issuance of notice under Section 9(3) would not adversely affect the subsequent proceedings including the award and title of the Government in the acquired land. So far as the person interested is concerned, he is entitled only to receive the compensation and therefore, there may be a large number of disputes regarding the apportionment of the compensation. In such an eventuality, he may approach the Collector to make a reference to the Court under Section 30 of the Act”.
The effect of non-issuance of notice here is relevant.
20. On the side of the respondent, the learned senior counsel referred to 1998 PTC (18) Whirlpool Corporation v. Registrar of trade Marks where it is seen that the Registrar had allowed renewal for three successive periods.
21. The respondents also relied on 1983 PTC 55 A. Abdul Karim Sahib and Sons., etc. v. The Assistant Registrar of Trade Marks and submitted that the fact that no time frame has been stipulated in the 1940 Act would not make a change with regard to the position of law that if there is non-receipt of notice renewal and restoration must be ordered.
22. In Malhotra Book Depot vs. Union of India & Ors W.P.(C) No. 7882/2010 since the mandatory notice in Form O-3 was not issued the Court held that removal was illegal. According to the learned counsel for the respondent this clearly applies to the present case.
23. The learned counsel for the respondent relied on the decision of this Board in M/s Alberto Culver USA Inc. vs. The Registrar of Trade Marks (OA/52-55/2011/TM/DEL) where since no notice in Form O-3 was issued the Board directed restoration to be considered subject to third parties rights.
24. In the impugned order the Assistant Registrar of Trade marks had held that the M.P. for restoration has been filed pursuant to the public notice dated 24.09.2010 issued by the Controller-General and the time for filing the response was also extended by him and on this ground the M.P. was held to be filed within time prescribed. The reason given by the Registrar is totally untenable. No public notice can extend the time provided by the Act within which restoration application should be filed. In fact the public notice itself does not say so. We may easily set aside the order on this ground alone but it would not be fair to both Mr. P.S.Raman and Mr. Hemant Singh who have tried to explain the legal position to assist us, so that the correct decision can be arrived at. The subsequent findings of the Assistant Registrar that there is no record regarding the issuance of O-3 notice with the Trade Marks Registry and the finding that since the respondent has similar trade marks registered in respect of beer, ale and port, the appellant cannot contend that his interest will be prejudiced because he has bonafide adopted the trade mark are all findings which are subject to the main issue whether the restoration application filed beyond a year can be entertained.
25. Though a number of documents have been enclosed in the paper book we will deal with only those which are relevant. The Search Report has been filed as also the appellant's sales statistics and other documents. Annexure ‘D’ at page 128 in the paper book is the renewal for the trade mark No.488802 from 07.04.2002 communicated by the Trade Marks Registry to Ray Chaudhuri & Associates who had filed the previous renewal which is at page 130. The annexure ‘N’ at page 132 is the Trade Marks Journal dated 01.03.2010 which shows that the mark 488802 and 488803 were removed. Annexure ‘O’ collectively are Form TM-12 and TM-13 filed by the then counsel Marks and Trade on behalf of United Spirits. This has been filed on 19.04.2010. The receipt number also shows the proprietors as United Spirits (India) Limited. Annexure ‘V’ is dated 29.11.2010 is a communication by L.S. Davar and Company on behalf of the respondent referring to the public notice dated 24.09.2010. In the said letter it is stated that they have received no notice on Form O-3 and that the previous attorneys have filed a declaration in the form of an affidavit in this regard. In the statement of case filed in the present appeal at page 222 of the paper book it is stated that “The said trade mark fell due for renewal but notice on Form O-3 was not received by proprietors or their previous agents”. On the same date i.e. 29.11.2010, L.S. Davar and Company filed TM-50 in which one Kajal Sinha has stated that ""as no notice on Form O-3 was received by either the proprietors of the trade mark or their agents on record…"" There is no primary evidence filed by the respondent regarding the receipt or non-receipt. Annexure ‘Z’ is a judgment of the Bombay High Court in Notice of Motion in Suit No. 3140 of 2011 between the parties herein where the learned judge had held that a prima facie case made out by the appellant on infringement. Annexure ‘Z2” is the affidavit of one Mahesh Nedungadi for United Spirits where it is stated that “No notice as mandated by S.25(3) of the Act, or Rule 64 having been served either on SWCL or USL…”.
26. The public notice which forms one of the main documents and obviously had persuaded the Assistant Registrar to treat the application as within time reads to the effect that ""since reports have been received that last day for receiving petitions for restoration of removed marks may be extended and time has also been extended."" The first notice is dated 24.09.2010. It calls upon the registered proprietors whose marks were removed to give a representation. It clearly says that the marks which have lapsed cannot be restored after the first cycle of renewal. This clearly means that after the period of restoration is over, lapsed marks can not be restored. This public notice was issued because there were few complaints either that O-3 notice was not received or that original registered certificate itself has not been received or other reasons. We cannot treat this public notice as a carte blanche to all registered proprietors who had slept over the removal of their mark to apply for registration at any time ignoring the legal provisions. Therefore, the reading by the Assistant Registrar was totally erroneous. However this need not weigh with us because, the present TM-12 and TM-13 had been filed before the public notice and the learned Senior Counsel appearing for the respondent also submitted that he is not relying on the public notice for entertaining the application.
27. The respondent marked documents to show that they have registration in their favour from 1946 and the Trade Marks Journal advertisement dated 01.11.1972 with relation to BMB bearing No. 278669 and again the registered certificated dated 07.04.1988 in which it shows that they have agreed to disclaimer of words ‘MASTER BLEND’, the Trade Marks Journal dated 01.03.1993, registration certificate dated 15.07.1994 and the deed of assignment executed by Shaw Wallace Company Limited in favour of Shaw Wallace Distilleries, the various trade marks that they own, in class 33 in India, the approval scheme by the Hon’ble Bombay High Court and the scheme of amalgamation. The respondents have also filed the affidavits and the other statements made by the counsel or its representatives on various stages regarding the O-3 notice. In the notice of motion judgement dated 18.02.2011 the Bombay High Court had restrained the respondent from using that label which it found was a deliberate copy of the appellant’s label. These are the documents.
28. The issue relates to the right of the party whose trade mark has been removed from the Register to have it restored. Is it untrammelled by any time limit? Is the removal subject to certain conditions without which the removal cannot take effect? If so what are they? Or does the removal flow as a consequence of the non-performance of certain acts by the registered proprietor? In the 1940 Act S.18 corresponded to the present S.25. The period of renewal which was then 15 years was reduced to seven years in the 1958 Act. Now it has been increased to 10 years. Dr. S. Venkateswaran in his book on ‘Law of Trade Marks and Passing Off’ has referred to the reduction of the period of renewal as a change which will be beneficial to the public since it will help to eliminate from the Register marks which have gone out of use and "merely block the register". The purity of the Register is not only dependant on eliminating registration of marks which are not registrable but also on removal of marks which merely block the Register. The Register must be kept free for persons to apply for registration of marks and who bonafide intend to use a mark or were already using the said mark, without being blocked by a person who was not using it or by a mark which was not plainly not registrable. S. 18(3) in the 1940 Act contains the provision for restoration but it did not fix a time frame for restoration. In the 1958 Act, this clause was removed from sub-section (3) but a new provision for restoration was introduced as sub-section (4) of S.25. While S.18 of the 1940 Act did not prescribe a time limit for filing an application for restoration of the mark which has been removed for non-payment of renewal fee, S.25(4) of the 1958 Act introduced for the first time a time limit of one year from the expiration of the last registration of a mark. The introduction of this time limit is surely intended to eliminate the continuance on the Register of marks which had not been renewed thereby cluttering the Register. We cannot place any construction upon S.25(4) which will make S.25(4) a dead letter or useless. Therefore we will have to read the entire section so that each sub-section works with the other and no sub-section is rendered meaningless.
29. Now we come to S.25(4) as it stands at present. Before that we will compare S.25 of the 1958 Act with the S.25 of the 1999 Act. S.25(1) of the 1958 Act and 25(1) of 1999 Act are identical but for the fact that in the earlier sub-section (1) the period was for seven years but now it is for 10 years. Sub-section (2) of both the Acts are also identical except for the same difference mentioned above, namely period of seven years in the earlier Act has been changed to period of 10 years in the latter Act. With sub-section (3) comes a difference. In the new Act a proviso is introduced which restrains the Registrar from removing the trade mark from the Register if within six months from the expiration of the last registration an application is made for renewal. This is a statutory safeguard for the registered proprietor who has failed to renew the mark within the stipulated period. Next we come to sub-section (4) which is again identical in all respects except that the period of seven years in the earlier Act has been changed to 10 years in the present Act. Sub-section (4) provides for restoration of the mark if an application is filed within one year from the expiration of the last registration of the trade mark. This is another safeguard provided for the registered proprietor.
30. The object of the Act is to provide for registration and better protection of trade marks and for prevention of use of fraudulent marks. Now we will again examine S.25 as a consolidated section. Sub-section (1) provides for registration. The life of a trade mark upon registration is 10 years. However, this can be renewed in accordance with the provisions of section 25. Therefore, the duration of the mark on the Register is contained in S.25. We are not referring to the provisions relating to revocation or removal but the duration of the registered mark per se. In fact the certificate that is granted clearly states at the bottom that the registration is for 10 years from the date of application and may then be renewed for a further period of 10 years. Therefore, the documents under which the statute recognises the trade mark right of a proprietor clearly also indicates the life time of the property subject to renewal.
31. Next comes sub-section (2). This clearly shows that the renewal is not dependent on the issuance of Form O-3. That is, the Act does not say that unless O-3 notice is issued, renewal shall not be granted. Therefore, when a registered proprietor makes an application within the prescribed time, the Registrar shall renew the registration. The prescribed period is the life time of the mark which is mentioned in sub-section (2). Sub-section 3 provides for the notice in the prescribed manner that shall be sent to the registered proprietor at the prescribed time before the expiry of the last registration.. If the Act intended renewal to depend on the receipt of notice, there will be a position that only upon receipt of the notice from the Registrar, the application for renewal shall be made but not otherwise. That would make the renewal totally dependent on the action of the Trade Mark Registrar. In that eventuality the registered proprietor’s right to renewal of his own mark will be made dependent on the official action of issuing notice. There is nothing in the Act that suggests it to be so. However, the Act provides for the Registrar to issue notice and the time when the notice is to be issued. Thereafter, the Registrar is restrained from removing the trade mark if the application for renewal is made within six months from the expiration of the last registration. Therefore, though an application must be made within the prescribed period, the registered proprietor does not lose his right of renewal for a period of six months after the expiration provided of course, the prescribed fee and surcharge is paid. Then comes S.25(4) which deals with the removal. Sub-section (4) gives the registered proprietor another period of protection. It is six months after the expiration but within one year from the expiration of the last registration. This is because for a period of six months the Registrar’s hands are tied and he cannot remove the mark. During that period the registered proprietor has the right of renewal as per the proviso of sub-section (3) but within the next six months which is before the expiry of one year if the proprietor of the removed trade mark files an application for restoration that too shall be considered by the Registrar only if he is satisfied that it is just so to do.
32. The proviso to S.(3) does not give the Registrar any discretion. He cannot remove the trade mark from the Register if an application is made within six months and he shall renew the registration. Therefore, a registered proprietor who applies for renewal within six months from the date of expiration of the last registration is entitled as a matter of right under the Act to have his mark renewed. But in contrast if a registered proprietor applies after the period of six months but before a period of one year to have the removed mark registered it is not a matter of right. It is entirely a matter of discretion of the Registrar dependent on the justness of the case. Under the Act the registered proprietor who had allowed his mark to expire, who had not renewed the mark within the time provided, cannot demand that, ""since the application has been made within one year, my removed mark shall be restored"". The words ‘if satisfied that it is just so to do’ itself means that the application for renewal is a matter of discretion. Of course the discretion should be judiciously exercised and must be based on reason and cannot be a product of arbitrariness.
33. In the present case, there is no dispute regarding the fact that the application has been made after a period of one year. The only alibi that the respondent claims is the non-issuance of Form O-3. The law makers could very well have introduced another proviso “provided also that the Registrar shall not remove the trade mark from the Register if notice under sub-section (3) was not issued.” That would have made it clear and beyond the pale of controversy. One cannot read such a fetter on the duty of the Registrar to remove the trade mark by introducing words which are not in the Statute. We cannot add or subtract words to the statute (AIR 1989 SC 2227 M/s Aphali Pharmaceuticals Ltd., vs. State of Maharashtra and others (cited supra), AIR 1992 SC 1789 Krishan Kumar v. State of Rajasthan and others(cited supra)).
34. Now we come to the Rules. Rule 63 deals with TM-12 application for renewal. This is filed by the registered proprietor on his own accord without any prompting by the Registrar. Rule 64 provides for the Form-O3 notice. That is, one month before the expiration of the mark but not earlier than three months before the expiration of the mark, if an application is not received from the registered proprietor, then Form-O3 notice shall be issued by the Registrar to inform the proprietor of the approaching expiration. Rule 65 provides for advertisement of removal of trade mark. Rule 65 corresponds to S.25(3) which provides for the removal of the mark if renewal fees has not been paid and requires the Registrar to advertise the fact forthwith in the Journal. But this removal shall not be done if payment of surcharge is made in Form TM-10. Rule 66 provides for application in Form TM-13 after six months and within one year from expiration of the mark. As we observed earlier, this restoration is not automatic. It depends on discretion and the principles of justice and Rule 66 makes it explicit and requires the Registrar to consider the request for restoration and renewal and having regard to the interest of other affected persons. Rule 64 would have read that unless rule 64 (1) notice has been issued, the mark shall not be removed from the Register, if that were the intent of the law. But it does not read so. In fact sub-rule (2) and sub-rule (3) make the removal subject to rule 66 and nothing else.
35. The judgement of the Division Bench of the Hon’ble Madras High Court is very clear. The Division Bench in 2010 (42) PTC (supra) has held that:
“27… If the Special Act provides for specific time, manner and fees for filing of the plaint, it has to be so done in compliance and the requirements cannot be relaxed… Rule 53 also cannot be pressed into service, since that Section will apply only where time is not expressly provided under the statute and Rule 53 is concerning the time for leading the evidence. It cannot apply to filing of notice of opposition or the counter statement. Any other interpretation will defeat the objective of the Act, and hence, cannot be accepted.”
36. Section 131 provides for extension of time for doing any act if there is sufficient cause subject to no time being expressly provided in the Act.
“131. Extension of time.-(1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act (not being a time expressly provided in this Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section.”
Therefore, when time has been expressly provided under the Act, there is no power for the Registrar to extend the time.
37. Now, let us look at Form O-3. It merely states that the mark will expire on a particular date and the registration can be renewed by filing Form TM-12 accompanied by the prescribed fee. In fact Form O-2 which is the form for certificate of registration of trade mark refers to S.25 and Rule 63 to 66. Neither the Act nor the Rules are to the effect that S.25(4) removal is subject to the issuance of S.25(3) notice.
38. The mark expired on 07.04.2009. But the Registrar could not have removed it till 07.10.2009 by virtue of the proviso to S.25(3). But the respondent did not apply for renewal, though until 07.04.2010, the respondent had the right to file the application for restoration upon the removal of the mark. The Registrar removed the mark and advertised it in the Journal on 01.03.2010. The advertisement in the Journal which is sufficient notice is clearly not less than one month and not more than three months from the date on which his right of restoration expired which is on 07.04.2010 (This is the time given for issuing Form 03 notice). Therefore, even if we have to seek a clue in the Act itself the registered proprietor must be deemed to have had sufficient time to file the application for restoration. The Act does not require the Registrar to notify the registered proprietor of the removal. In fact the Act requires the Registrar to advertise it forthwith. The law clearly requires the Registrar of Trademark to remove the mark which have not been renewed after the six months period is over. The Registrar cannot keep non-renewed marks on the Register endlessly. If, in fact, some marks though unrenewed, remain on the Register for years, it is regrettable. But that cannot justify time barred restoration to be allowed.
39. If such non-renewed marks remain on the register it leads to another problem. Marks which are not renewed but remain in the Register, are sought to be renewed on the ground that Form O-3 notice was not issued. However, it is an undeniable fact that the Registry has not been sending Form O-3 notices individually by post. The various decisions of the High Courts are to the effect that Form O-3 notice is mandatory and if it is not issued, renewal must follow and we have also followed with respect the decisions of the Hon’ble High Courts. But when the Trade Marks Registry is flooded with applications it casts an onerous duty upon the Registrar to issue notice when the mark is due to expire especially when the registered proprietor himself does not show anxiety to protect his property right. Intellectual Property Rights are bound by time and the Act also indicates that the procedures should have a time frame. Therefore we are not sure if merely because a non-renewed mark remains on the Register, without being removed for a number of years, the registered proprietor will have the right of renewal just by stating that Form O-3 notice was not issued. With respect, the law may need to be revisited in this regard.
40. As regards the question whether Form O-3 notice was issued or not we are unable to discern anything from the affidavits a categorical statement that the respondent had not received Form O-3 notice. They are all cleverly worded statements regarding non-receipt. However, the impugned order records that the Registrar’s office did not make available records relating to Form O-3 notice. Therefore, the position relating to the issuance of O-3 notice remains shrouded in doubt. But in the judgements of the Hon’ble High Courts the benefit of doubt appears to have been given to the trade mark proprietors who seek renewal. So we may also have to do that. However, in this case, this issue has no significance since we have held that law does not state that removal will depend on issuing of notice it only follows non payment of fees (Rule 65). So if at the expiry of last registration of a trade mark, the renewal fees have not been paid, the Registrar may remove the trade mark and advertise the mark.
41. Above all, it is not as if the proprietor whose mark has been removed by his own lethargy, is blighted permanently. He can always apply afresh for registration. There is nothing in law which prevents that.
42. Now we come to the question of equity and conduct of parities. According to the appellant, the respondent had not been using the mark and when he started using the mark the respondent introduced labels which were evidently a copy of the appellant’s marks and further, the certificate of renewal had been issued with alacrity by the Registrar without even waiting for the time for appeal. On the side of the respondent it is contended that in spite of the mark BMB being on the Register the appellant had applied in 2005 and had waited quietly until the mark was removed and in the short period between the removal of the mark and the application for restoration obtained his registration. Since this is purely a question of law we are not going into the equities. We quote from Joseph Addison's "The Spectator" referring to Sir Roger de Coverley and ""after having paused some time, told them with the air of a man who would not give his judgment rashly much might be said on both sides."" and will leave it at that.
43. The impugned order was clearly wrong in entertaining the time barred application purely on the basis of public notice, without considering S. 25(4). We have explained the reasons in the above paragraphs why a time barred application for restoration cannot be allowed. The Act does not give the Registrar the power to restore a mark one year after the expiry of the mark. So the Impugned order is set aside, the mark will stand removed. The appeals are allowed. No order as to costs.
(V. RAVI) (JUSTICE PRABHA SRIDEVAN)
TECHNICAL MEMBER CHAIRMAN
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
