INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, Anna Salai, Teynampet, Chennai 600 018
(Circuit Sitting at Ahmedabad)
OA/71/2009/TM/AMD
FRIDAY, THIS THE 18TH DAY OF MAY, 2012
Hon’ble Ms. S.USHA ….. Vice-Chairman
Hon’ble Shri V.RAVI ….. Technical Member
M/s.Swastic Oil Industries,
F-5 to 8, Industrial Area,
Newai – 304021, District Tonk (Rajasthan)
… Appellant
(Represented by: Advocate Shri S.M.Gupta)
Vs.
1. M/s.Swastic Oil & Rice Mill,
G-301, Indraprastha Industries Area,
Kota-324005.
2. The Deputy Registrar of Trade Marks,
15/27, National Chambers,
Ashram Road, Ahmedabad 380009.
… Respondents
(None Represented)
ORDER (No.124/2012)
Hon’ble Ms.S.USHA, Vice Chairman:
Appeal arising out of the order dated 05.05.2009 treating the notice of Opposition on Form TM-5 dated 22.04.2008 as abandoned.
2. The respondent herein filed an application for registration of the trademark (a label mark) under No.846452 in Class 29 on 19.03.1999. The user claimed was since 31.12.1975. The said application was advertised in the Trade Marks Journal No.1375 dated 01.09.2007 which was made available to the public on 12.11.2007. The appellant herein filed their notice of opposition along with a Form TM-44 for extension of time on 01.03.2008. The same was sent by courier which was undelivered and returned back to the attorney with an endorsement ‘refused to take’ without POD. Again on 20.03.2008, by another courier the same was delivered in the Trade Marks Registry.
3. The Registrar of Trade Marks held that the notice of Opposition was filed beyond the time limit and therefore, treated to be abandoned.
4. The appellant, being aggrieved by the said order, filed this appeal praying that the notice of Opposition be taken on record, setting aside the impugned order.
5. The counsel for the appellant submitted that the application for registration was filed on 19.03.1999 and the same was advertised in the Trade Marks Journal on 01.09.2007 which was made available to the public on 12.11.2007. Therefore, the time to file the notice of Opposition started from the date on which it was made available to the public, viz., 12.11.2007. The time for filing the notice of Opposition would be three months, i.e., upto 12.02.2008. The aggregate one month period would also be available upto 12.03.2008. The notice of opposition was filed on 01.03.2008 within the prescribed period with a request for extension of time. The notice of opposition sent on 01.03.2008 was returned undelivered and therefore, the same was again sent on 20.03.2008. Therefore, there is no delay and the notice of opposition is well within the time limit.
6. We have heard and considered the arguments of the counsel for the appellant.
7. The real issue here to be decided is regarding the scope of Section 21(1) and Rule 47(6) of the Trade Marks Act and Rules respectively. The relevant provisions of the Act and Rules are given hereunder:
Section 21(1) of the Trade Marks Act, 1999:
“21. Opposition to registration. – (1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.”
Rule 47(6) of the Trade Marks Rules, 2002:
“47. Notice of opposition:
(1) to (5) xxxxx
(6) An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given under sub-section (1) of section 21, 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 sub-section (1) of section 21.”
8. Section 21 of the Act provides that any person may file a notice of opposition within three months from the date of advertisement or within such further period not exceeding one month in the aggregate as the Registrar may allow on an application for extension.
9. Rule 47(6) of the Trade Marks Rules reads that an application for extension of period as per sub-section (1) of Section 21 shall be in Form TM-44 before the expiry of the three months’ period.
10. Section 21 of the Act which provides for three months’ time for filing notice of opposition, also provides for extension of one month period in the aggregate on application before the Registrar in the prescribed manner. The prescribed manner is, what is provided under Rule 47(6) of the Rules. Therefore, it is clear that the notice of opposition shall be filed within three months from the date of advertisement, and if extension of time is sought, the same shall be filed before the expiry of three months. The extension of period will only be for one month and not exceeding further. The Registrar has the power to extend the time for one month that too, on application for extension of time filed with the prescribed fee within the three months’ period.
11. In the case on hand, the trade mark was advertised in the Trade Marks Journal on 01.09.2007 which was made available to the public on 12.11.2007. The appellant ought to have filed the notice of opposition on or before 11.02.2008. The application for extension of time also ought to have been filed on or before the said date. The appellant had filed the notice of opposition along with the application for extension of time on 01.03.2008 which was after the prescribed time. The appellant’s contention was that the appellant had time till 12.03.2008 and therefore, the notice of opposition along with extension application was well within the time. It was also submitted that the notice of opposition dated 01.03.2008 was returned undelivered and therefore, the appellant had to send the notice of opposition again on 20.03.2008. We are unable to accept this submission.
12. Even assuming that the notice of opposition dated 01.03.2008 was returned undelivered and therefore the appellant again sent it on 20.03.2008, the first notice of opposition was filed after the prescribed time limit and therefore, cannot be taken on record. If the Act provides for a specified time, it has to be followed in compliance of the same, and the requirements of the provision cannot be relaxed.
13. When Section 21(1) of the Act states that it is to be done in a prescribed manner, then, the Rules follow. The Rule 47(6) of the Trade Marks Rules is very clear wherein it is stated that the application for extension of time should be filed within the three months’ period.
14. In view of the above reasons, we do not think it necessary to interfere with the impugned order. Consequently, the appeal is dismissed with no order as to costs.
(V.RAVI) (S.USHA)
Technical Member Vice-Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
