INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018
(Circuit Bench Sitting at Delhi)
COD NO. 2/2011
IN
S.R.No.436/2010/TM/IPAB
THURSDAY, THIS THE 30TH DAY OF MARCH, 2012
HON’BLE SMT. JUSTICE PRABHA SRIDEVAN … CHAIRMAN
HON’BLE SHRI V. RAVI … TECHNICAL MEMBER
ITC Limited,
A-9, USO Road,
Qutub Institutional Area,
New Delhi – 110 067. … Appellant
(Represented by Advocates: Shri Pravin Anand with Shri M.S.Bharath,
Shri Manav Dev)
Vs.
1. The Registrar of Trade Marks,
Trademarks Registry,
Intellectual Property Building,
Plot No.32, Sector-14,
Dwarka, New Delhi – 110 075.
2. Tea Board, India,
14, B.T.M. Sarani, (Brabourne Road),
P.O.Box, No. 2172,
Kolkata – 700 001. … Respondents
(Represented by Advocates: Shri Ashish Marbaniang with Shri Sushant Singh Gurvinder Singh for R2)
ORDER (No.87/2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
This application is for condonation of delay in filing the appeal against the order dated 8.4.2009. By the said order the Deputy Registrar had held the application filed by the appellant herein for registration of trade mark “DARGEELING LOUNGE” in class 42 as abandoned. The application No. is 1265886. According to the impugned order in the opposition proceedings the applicant had filed the counter statement beyond time prescribed under the Act. On the date of hearing no one appeared on behalf of the appellant and the Deputy Registrar was of the opinion that no discretion can be exercised for relaxing the time period for filing the counter statement.
2. The case of the appellant is that they did not receive the copy of the order dated 8.4.2009 nor did they receive the hearing notice posting the matter on 11.12.2008. In addition to this stand that they did not receive notice nor the order copy, the appellant originally stated that they did not receive the letter dated 01.08.2008 by which they were called upon to show cause why the application shall not be deemed to have been abandoned. On 05.09.2011 on receipt of the counter filed by the respondent that they have evidence to show that the letter dated 01.08.2008 was received by the appellant, the appellant prayed for time to file a reply to meet this allegation. When the matter was listed again 12.12.2011 the appellant had filed an affidavit sworn to by the counsel setting out the facts. We indicated that it was not proper for the counsel on record to place himself in the position of a witness and it was not desirable either.
3. The learned counsel for the appellant thereupon prayed for time to file an appropriate and better affidavit. It came up on 12.01.2012 and the counsel for respondent prayed for time to file reply and thereafter we heard both the counsel yesterday. They made their submissions and also referred to the documents.
4. The learned counsel for the appellant submitted that all along the appellant’s stand had been that they had not received the notice of hearing to be held on 11.12.2008 and that the order copy was also not received by them. According to the appellant herein the trade mark word and device “DARGEELING LOUNGE” is not used in respect of any goods but as a service mark for the services rendered at the hotel Sonar Bangla at Kolkata. Their case is that they have used such names of places in their various hotels where hospitality services are rendered and they applied for registration of the mark. The learned counsel submitted that though no doubt they had stated that the registry’s letter dated 01.08.2008 was not received by them, on receipt of the respondent’s reply they made enquiries of the original attorneys who had appeared for the appellants in these proceedings namely, Vaish and Associates. Now the clerk of Vaish and Associates had filed an affidavit to support the case of the appellant. The learned counsel also submitted that the affidavit of the constituted attorney and authorized representative Shri Arun Pathak has also been filed. The learned counsel submitted that this was not a case where the appellant is in any way benefitted by protraction of the proceedings and therefore, the delay shall not be construed be deliberate. The learned counsel submitted that the letter dated 30.01.2009 sent by the then counsel for the appellant Shri S. Majumdar and Co., would show that the appellant was really in the dark regarding the hearing dated 11.12.2008. The learned counsel submitted that it was only when the respondent referred to the order which was in October, 2010 in the proceeding before the Hon’ble Calcutta High Court that the appellant came to know about the order and within one month thereafter i.e., November, 2010 they filed the appeal. This would show that there was no deliberate delay on the part of the appellant.
5. The learned counsel for the respondent submitted that when an untrue statement has been made in an affidavit by a party, the party shall not be granted any indulgence by this Board. The learned counsel submitted that the explanation regarding receipt of the letter dated 01.08.2008 and why they had stated that it had not been received was given only after the falsity of the statement was pointed out and not before. The learned counsel submitted that the affidavit of the earlier attorney’s clerk Mr. Chetri merely says that by inadvertence the particular letter was not maintained in the records. The learned counsel submitted that if that communication was missed inadvertently then they might also have received the impugned order and inadvertently failed to take note of it. The learned counsel submitted that the said probability cannot be ruled out. The learned counsel also submitted that if one sees the records it would be clear that there has been no change of address of either the appellants or the respondents counsels during the relevant period. The learned counsel submitted that when the communication to the respondent has been received it is curious why the appellant alone should not have received the notice of hearing and the copy of the order. The learned counsel also submitted that all the letters sent by the Trade Marks Registry have specific numbers. In fact the learned counsel for the respondent submitted that the letter 30.01.2009 which is referred to by the appellant to support its case of non-receipt of notice of hearing would actually indicate otherwise. According to him the letter dated 30.01.2009 had come in response to the letter of the respondent’s counsel’s letter date d30l05.2008. Nearly eight months after. The learned counsel for the respondent seemed to indicate that this letter itself has been sent only to bolster the case of the appellant that they did not receive the notice of hearing.
6. Above all, the learned counsel for the respondent submitted that the respondent is a statutory body and has a duty to protect geographical indications in relation to the goods and has been protecting the mark DARGEELING since it would indicate the geographical origin of tea. The learned counsel submitted that the reasons given by the appellant for the condonation of delay do not deserve acceptance and the delay shall not be condoned.
7. We are not in this order concerned with the merits of the main matter. If the registration of the mark shall not be allowed because of the provisions of the Geographical Indication of the Goods (Registration and Protection) Act, 1999 that issue will be decided in accordance with law at the appropriate time when it arises.
8. The fact that delay in filing the appeal is condoned does not mean that a mark for which registration is prohibited will be registered. So we are merely concerned with the question of delay and whether the appellant has made out sufficient cause to explain the delay. The affidavit of Sri Arun Pathak states that neither the appellants nor the erstwhile attorneys had received the notice for the hearing fixed on 11.12.2008. The deponent Shri Arun Pathak we are informed is the Vice-President (Finance) of the appellant herein. The affidavit also states that neither the appellants nor the erstwhile attorneys had received the impugned order. As far as the statement made regarding non-receipt of the letter dated 01.08.2008 the same deponent in his reply has stated that it was an inadvertent statement that the letter dated 01.08.2008 was not received by the appellant. In fact it appears that the erstwhile attorneys had replied by their letter dated 13.08.2008. In addition to the affidavit filed by this officer of the appellant, an affidavit by the court clerk of the Vaish and Associates had been filed. According to this the letter dated 01.08.2008 was not maintained in the office records and that is why it was not addressed in the earlier affidavit dated 26.07.2011. In paragraph 5 of this affidavit the deponent states that their firm had neither received the hearing notice nor the impugned order dated 09.04.2009. In the evidence by way of affidavit filed by the aforesaid Shri Arun Pathak, it is stated that it was as late as October, 2010 that the appellant was shocked to note from the pleadings in CS No.250.2010 before the Hon Calcutta High Court regarding the impugned order. It is stated that thereafter they conducted a search and had immediately filed this appeal.
9. The respondent has filed an elaborate reply that is supported by an affidavit of Shri Kaushik Halder the Secretary of the respondent. The Respondent No.2 seems to have conducted an inspection of the records and they found that to the letter dated 01.082008 the respondent had replied by a letter dated 13.08.2008. Thereafter, the hearing notice was issued and the copy of the order. It is stated that the concealment of the receipt of the letter dated 01.08.2008 is dishonest and therefore, the denial of the other two official communications do not hold merit. The respondent has enclosed the copy of the official letter dated 01.08.2008 and the reply of the appellant dated 13.08.2008.
10. In the letter dated 13.08.2008 the appellant had taken a stand that since they received the notice of opposition only on 10.01.2006, the counter-statement filed on 06.03.2006 was within time. We are not really in this application for condonation of delay concerned with the question whether the counter-statement was filed within time or not. We referred to it since by this letter the appellant had requested the Registry to waive the objections and to treat the counter statement as within time limit and to take it on record. Next, we refer to the letter dated 30.01.2009 by which the counsel for the appellant had addressed the counsel for the respondent to withdraw the opposition filed by them against the trade mark in question. The counsel for the respondent pointed out that it is very curious that this letter has been sent eight months after the receipt of the letter referred to therein but on that ground it is difficult for us to impute any oblique motive for the appellant to address this letter. It may have been because the earlier Mr. Vaish & Associates were no longer in the picture and S. Majumdar and company had taken over. But it would strain our credulity to infer from this letter that it was sent to resist any possible or probable attack by the respondent if an appeal is filed with delay. Had the appellant really known that the hearing had concluded we do not see why they would not have taken steps immediately thereafter. In this regard we cannot go into the question of probabilities. This letter appears to indicate that the appellant was under the impression that the opposition proceedings were still pending.
11. As regards the delay in filing the appeal, the appellant had filed the affidavit of one of its own officers and the Court clerk of the erstwhile attorney who have categorically stated that the hearing notice was not received and the order copy was not received either. The counsel for the appellant had also filed an online record of the Trade Marks Registry which indicates that the mark is still “Opposed”. It is true that the respondent had received all this important communications. But on that ground alone we cannot reject the explanation given by the appellant of non-receipt which has some support from the letter dated 30.01.2009 to lend it credibility. However, we must express our displeasure at the wrong statement regarding the letter dated 01.08.2008. We are of the opinion that statements made on oath, shall be made with care and caution and after verification of records. The wrong statement made in the affidavit regarding the non-receipt of the letter dated 01.08.2008 may not be germane to the question of delay in filing the appeal, but nonetheless it is a wrong statement made to this Board. There cannot be any laxity in the degree of accuracy in the pleadings.
12. Therefore, we will condone the delay but it must be on payment of costs to ensure that greater care is exercised in drafting of pleadings and affidavits. The delay is condoned on payment of costs of Rs.25000/- to the respondent within two weeks. The Registry shall number the appeal on receipt of the proof of payment of the 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.)
