INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
(CIRCUIT BENCH SITTING AT DELHI)
OA/30/2008/TM/DEL
FRIDAY, THIS THE 20th DAY OF JULY, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Shri V. Ravi … Technical Member
M/s Mulakh Raj Ramesh Kumar
4065-B, Naya Bazar,
Delhi-110006. … Appellant
(By Advocate: Shri N.K. Manchanda)
Vs.
1. M/s. Mamraj Chunnilal
5183, Naya Bazar,
Delhi-110006. … Respondent No.1
2. The Registrar of Trade Marks
Trade Marks Registry (I.P. Bhavan)
Plot No.32, Sector-14,
Dwarka,
NEW DELHI-110075. … Respondent No.2
(By Advocate: Shri P.K. Jain)
ORDER(No.186/2012)
Hon’ble Smt. Justice Prabha Sridevan:
This appeal is against the dismissal of the Interlocutory Petition filed by the appellant herein for entertaining the evidence filed under Rule 53 of the Trade Marks Rules, 2002 (in short ‘Rules’). The application for registration of the trade mark in Class 30 was filed by the appellant herein. The trade mark “MOTHER’S PRIDE” was advertised in the Trade Marks Journal dated 25.8.2003. The registration was opposed by the respondent herein. The evidence that was sought to be introduced was a Search Report obtained on 16.7.2007. The Registrar felt that if the Search Report is taken on record after the matter is set down for final hearing, it will cause prejudice, inconvenience and unnecessary expenditure.
2. Heard both the Counsel. Rule 53 of the Rules gives the Registrar the discretion to “…give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit”. Therefore it is purely the Registrar’s discretion and normally the Appellate Court will not interfere unless the discretion has been perversely or arbitrarily exercised. In the present case the evidence is the Search Report. The learned Deputy Registrar appears to be under the impression that the Search Report cannot be considered after the matter is set down for final hearing. This is contrary to the Rules. Rule 37(2) of the Rules requires the Registrar to cause a search to be made amongst the registered trade marks and amongst the pending applications in order to ascertain whether there are identical marks or marks deceptively similar to the mark sought to be registered. Clearly this is to maintain the purity of the register. The Rule also provides that “the Registrar may cause the search to be renewed at any time before the acceptance of the application but shall not be bound to do so”. Therefore even the Rules provide for consideration of Search Report until the date of acceptance of the application for registration. Therefore the understanding of the Deputy Registrar that after the matter is set down for final hearing, the Search Reports cannot be considered is clearly erroneous. The Search Report is a document in the custody of the Registrar so we see no reason for the Registrar to say that it would cause inconvenience.
3. In these circumstances, we find that the discretion has not been exercised properly and the order has to be set aside. The appeal is allowed and the matter is remanded to the Deputy Registrar for disposing the interlocutory petition in accordance with law. The Search Report filed by the appellant shall be looked into for deciding the matter. The relevance of the entries shall be decided in accordance with law. The application for registration is made in the year 1997 and obviously has been pending for nearly 16 years. The application for registration shall be dealt with taking into account all relevant evidence and the Search Report and order shall be passed preferably within three months from the date of receipt of this Order.
(V. Ravi) (Justice Prabha Sridevan)
Technical Member Chairman
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)
