INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-I, 2nd Floor, Anna Salai, Teynampet, Chennai 600 018
(Circuit Sitting at Ahmedabad)
OA/80 & 81 /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
OA/80 and 81/2009/TM/AMD
M/s.H.I.Tamboli & Co.,
A registered partnership firm,
Having its Office at
37-A, Rajaspura, Satara 415 001,
Maharashtra. … Appellant
(Rep. by: Advocate Shri Shiwprasad Anandrao Wanne)
vs.
1. M/s.Urmin Products Pvt.Ltd.,
48, Changadar Industrial Estate,
Bavla Road, Changador 382 210,
Gujarat.
2. The Deputy Registrar of Trade Marks,
15/27, National Chambers, Ashram Road,
Ahmedabad 380 009. … Respondents
(R1 – rep by: Advocate Shri Harshil Shah)
ORDER (No.120/2012)
Hon’ble Ms. S.USHA, Vice Chairman:
These two appeals arise out of the order dated 15.07.2009 and 05.04.2005 respectively, passed by the Deputy Registrar dismissing the Review Petition, treating the notice of opposition as abandoned for non-compliance of Rule 50(1) of the Trade Marks Rules, 2002.
2. The 1st respondent filed two applications on 09.03.2001 under Nos.997712 and 997713 in Class 34 for registration of the trade mark‘Sarathi 62’ and ‘Sarathi 39’ respectively. The said applications were advertised in the Trade marks Journal No.MEGA-3 - Vol.J dated 14.10.2003. On 25.03.2004, the appellant herein filed the notice of opposition on various grounds. The first respondent herein filed the counter statement. The 2ndrespondent herein, by letter dated 18.10.2004, invited the appellant to file the evidence as per Rule 50. The evidence was, therefore, to be filed on or before 18.12.2004. On 10.12.2004, the appellant filed an application for extension of time up to 19.01.2005. The appellant therefore filed their evidence in support of opposition along with an application to condone the delay of 20 days in filing the evidence on 08.02.2005. The 2nd respondent had not communicated any order as to the request made on 10.12.2004 and 08.02.2005, but had communicated the order dated 05.04.2005 treating the opposition as abandoned. The appellant herein preferred a Review Petition against the said order of abandonment. The second respondent heard the parties and passed an order dismissing the Review Petition on 15.07.2009.
3. Being aggrieved by the said orders, the appellant has filed the instant appeals praying that the orders be set aside and the evidence in support of opposition be taken on record.
4. The learned counsel for the appellant submitted that on 10.12.2004 within the stipulated period, the extension of time was sought for, which the Registrar had powers to grant. The other grievance of the appellant is that there had been two letters sent to the Registrar requesting for extension, for which they received no communication. The Registrar has the power to grant extension as per Section 131 of the Act. The counsel referred to the following judgments:
1. Wyeth Holdings Corpn. & Anr. v. C.G., of P.D. & TM & Ors. [2007(34) PTC 1 (Guj)].
2. UCB v. Torent Pharmaceuticals Limited & Ors [2007(35) PTC 820(IPAB)]
3. Nissan Jidosha Kabushiki Kaisha, A Joint Stock Company organised under the law of Japan of 2, Takara-Cho v. Crossword Agro Industries and Assistant Registrar of Trade Marks [MANU/IC/0024/2008]
4. Asian Paints Limited v. The Assistant Registrar of Trade Marks and Greenline Pvt. Ltd. [2005 (30) PTC 444 (IPAB)]
5. Tata Motors Ltd. V. Cavincate Pvt. Ltd. & Ors. [2006 (32) PTC 717(IPAB)]\
6. Jagatjit Industries Limited v. The Registrar of Trade Marks [MANU/DE/2041/2001]
7. Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks & Anr. [MANU/DE/0816/2000]
8. Aktieboaget AKF v. SKR Engineering Corpn. [2001 PTC 389 (Del)]
9. Kantilal Tulsidas Jobanputra v. The Registrar of Trade Marks & Anr. [1982 PtC 127]
10. Nisar Enterprises, A proprietary Firm carrying on its Business v. Vikash Fashion Clothing (P) Ltd., the Registrar of trade Marks, Chennai and the Registrar of Trade Marks, Mumbai [MANU/IC/0020/2010]
11. Sanyo Electric Col. Ltd. v. The Assistant Registrar of Trade Marks National Chambers, the Registrar of Trade Marks National Chambers and Sanyo Ceramics [2007 (34) PTC 156 (IPAB)]
All the judgments deal with the powers of the Registrar to extend the time to file evidence. The Registrar’s power was said to be directory and not mandatory.
5. The learned counsel for the respondent submitted that the appellant have given no reason for the delay. The counsel further strongly opposed the appeals. The counsel then relied on few judgments which are as follows:
[1] Parsion Devi & Others v. Sumitri Devi & Others [1998 (1) CTC 25] was relied on to say in which circumstances, the order can be reviewed. A review petition cannot be allowed to be an appeal in disguise.
[2] Sanofi – Synthelabo, France v. The Registrar of Trade Marks, New Delhi and Ranbaxy Laboratories Limited, New Delhi in OA/72/2004/TM/DEL (unreported decision):- Even after the Registrar granting several extension, the appellant had not filed the evidence. The opposition was therefore treated as abandoned against which a review petition was filed. The review petition filed was dismissed against which an appeal was filed which was also dismissed as there was no error on the face of the order and held that the Registrar was right in treating the notice of opposition as abandoned for non-compliance of Rule 50.
[3] Rikab Chand Jain, New Delhi v. M/s.Swastik Pipes Ltd., New Delhi in R.P.No.1/2004 in TA/100/2003/TM/DEL(CM(M) 551/94), (unreported decision):- Review Petition was dismissed stating that the merits of the case had already been gone into and the same cannot be again dealt with.
[4] M/s.Shah Jivraj Nanchand & Sons, Surat (Gujarat) v. M/s.Jivraj Tea Ltd., Surat, Gujarat and The Assistant Registrar of Trade Marks, Ahmedabad in OA/42/2005.TM.AHD (unreported decision):- It was a case on identical facts of the case on hand, where the appeal was dismissed.
[5] Dolat Industries v. Krishna Oil Industries [2002 (24) PTC 468 (Guj)] – The same principle was followed in this case.
6. We shall first deal with the Review Petition which arose out of the order based on the merits of the main opposition proceedings. The ground on which the appellants had sought for review was that the Registrar had the power to extend the time for filing evidence in support of application. Review of an order/judgment can be allowed only (a) on discovery of new and important matter of evidence which after the exercise of due diligence was not within the knowledge of the appellant or could not be produced at the time when the decree was passed or order was made or (b) if some mistake or error is apparent on the face of the record or (c) for any sufficient reason. The Supreme Court of India in a leading case [Parsion Devi case (cited supra)] held –
“9. Under Order 47, Rule 1, C.P.C. judgment may be open to review inter alia if there is a mistake or an error apparent on the face of the record. An error which is not self evident and has to be detected by a process of reasoning, can hardly be said to be an error apparent on the face of the record justifying the court to exercise its power to review under Order 47, Rule 1, CPC. In exercise of the jurisdiction under Order 47, Rule 1, C.P.C. it is not permissible for an erroneous decision to be ‘reheard and corrected’. A review petition, it must be remembered has a limited purpose and cannot be allowed to be ‘an appeal in disguise’.”
Therefore, an order can be reviewed only when there is any error on the face of the order. No order can be corrected by rehearing in a Review Petition.
7. In this appeal, the appellant has sought for an order setting aside the order dated 05.04.2005 which was sought to be reviewed. The order dated 05.04.2005 was treating the notice of opposition as abandoned as the evidence in support of opposition was filed after the prescribed period. The judgments relied on by the appellant were all dealt with under the 1958 Act. The relevant provision under the 1999 Act has been dealt with inSunrider Corporation, U.S.A. v.Hindustan Lever Ltd. & Anr. [2007 (35) PTC 388 (Del.)] as under:
“50. Evidence in support of opposition.- (1) Within two months from services on him of a copy of the counterstatement or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow, the opponent shall either leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery.
(2) If an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition.
(3) An application for the extension of the period of one month mentioned in sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein.
7. Reading Rule 50, it is clear that the evidence by way of affidavit in support of an opposition to the registration of a trade mark has to be filed within two months of the service of a copy of the counter-statement on the opponent. This period of two months is further extendable by a period of one month in the aggregate thereafter as the Registrar may on request allow. Clearly, in the first instance, the evidence affidavit has to be filed within two months of the receipt of a copy of the counter-statement. The Registrar may extend this period by a further one month in the aggregate if a request for the same is made in time. Sub-rule (2) of Rule 50 makes it clear that if an opponent takes no action under sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition. It is also interesting to note that sub-rule (3) refers to the application for extension of the period of one month mentioned in sub-rule (1). It is also stipulated that such an application has to be made in Form TM-56 accompanied by the prescribed fee before the expiry of the period of two months mentioned therein. So, it is clear that a strict regimen has been prescribed for the filing of evidence by way of affidavit in support of an opposition. A plain reading of the provisions makes it abundantly clear that the evidence has to be filed within two months in the first instance and, if an appropriate application for extension of time is made before the expiry of the period of two months and if such application is allowed by the Registrar, then latest by a further month. In other words, under no circumstances can the evidence affidavit be filed beyond the maximum three months prescribed under the said rule. In case the opponent has not taken steps within the prescribed time, then there is no option left with the Registrar but to deem that the opponent has abandoned his opposition.
8. In Chief Forest Conservator (supra), the Supreme Court held:
It is now well-settled that when rules are validly framed, they should be treated as a part of the Act.
There is no doubt that Rule 50 of the 2002 Rules has been validly framed in exercise of the Central Government's rule making powers under Section 157(1) in general and Section 157(2)(vii) in particular. In this background, it can be safely stated that the time and manner prescribed in Rule 50 of the 2002 Rules should be treated as having been prescribed by the 1999 Act itself.
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.
The Registrar has been empowered to extend time for doing certain acts provided he is satisfied that there is sufficient cause for extending the time. But there is an exception to this power. The exception being that it must not be a case where time is expressly provided in the Act. Rule 105 of the 2002 Rules, which is also sought to be pressed into service by the learned Counsel for the respondent No. 1, reads as under:
105. Extension of time.-(1) An application for extension of time under Section 131 (not being a time expressly provided in the Act or prescribed by Rule 79 or by sub-rule (4) of Rule 80 or a time for the extension of which provision is made in the rules) shall be made in Form TM-56.
(2) Upon an application made under sub-rule (1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to impose, extend the time and notify the parties accordingly and the extension may be granted though the time for doing the act or taking the proceeding for which it is applied for has already expired.
The said rule stipulates that an application for extension of time under Section 131 of the 1999 Act has to be made in Form TM-56. It may be remembered that this is the same Form TM-56 in which an application for extension of time is required to be made under Rule 50 (3). However, the extension of time permissible under Rule 105 is not applicable to the following cases:
i) where time is expressly provided in the Act ; or
ii) where time is prescribed by Rule 79 or by sub-rule (4) of Rule 80; or
iii) where time for the extension of which provision is made in the rules.
Therefore, in cases where time is expressly provided for doing of an act under the 1999 Act or where provision for extension of time for doing such act is made in the rules itself, then Rule 105 would have no applicability.
In any event, Rule 50 (1) specifically makes provision for the extension of time for filing the evidence affidavit. That being the case, Rule 105 cannot have any application. It is interesting to note that both Rule 50 and Rule 105 require that the application for extension of time be made in Form TM-56. If the view espoused by the learned Counsel for the respondent No. 1 is to be taken, then the provisions of Rule 50 would be rendered otiose. An exception has been carved out in Rule 105 with regard to provisions made in the Rules for extension of time. But, no exception has been made in Rule 50. Therefore, Rule 105 would have no application insofar as the filing of an evidence affidavit in support of an opposition beyond the prescribed time is concerned. It is only Rule 50 which would apply. In fact, sub-rule (2) of Rule 105 itself circumscribes the power of the Registrar to extend time by using the expression "subject to the provisions of the rules where a maximum time limit is prescribed". Rule 50 (1) prescribes a maximum time limit. Therefore, even under Rule 105, the Registrar cannot extend time beyond the prescribed maximum time limit.
First of all, in sub-rule (1) of Rule 50 of the 2002 Rules, the following words have been inserted:-
‘or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow.’
These words are missing in Rule 53 (1) of the 1959 Rules and, Therefore, the decision in Hastimal Jain (supra) would not apply to the facts of the present case. The second difference is that the expression "unless the Registrar otherwise directs" appearing in Rule 53 (2) of the 1959 Rules is missing from Rule 50 (2) of the 2002 Rules. For this reason also, the decision of the Full Bench in Hastimal Jain's case would not apply to the present case. The Full Bench had placed great reliance on the expression "unless the Registrar otherwise directs" to indicate that the provision was directory and not mandatory and secondly that the Registrar had discretion in the matter. But these words are missing in the new avatar of this rule which is to be found in Rule 50 (2) of the 2002 Rules. The new Rule 50 (2) simply and plainly states that if an opponent takes no action under sub-rule (1) within the time prescribed therein, he shall be deemed to have abandoned his opposition. The Registrar has no role to play and no discretion in the matter. The entire basis of the Full Bench decision in Hastimal Jain's case is that the Registrar had been given discretion in the matter as indicated by the words "unless the Registrar otherwise directs". This discretion is missing in Rule 50 under the 2002 Rules.
Rule 53 of the 1959 Rules did not prescribe any maximum period of extension of time. Whereas Rule 50 of the 2002 Rules specifically provides for extension of time not exceeding one month in the aggregate. This introduces a clear stipulation that the Registrar's powers to grant extension of time are limited to one month in the aggregate beyond the two months prescribed under the said Rule. This limitation was not there in the earlier Rule, but it is definitely there in Rule 50 of the 2002 Rules. The second instance is that the words "unless the Registrar directs" have been consciously deleted from sub-rule (2) of Rule 53 in its new incarnation in Rule 50 (2). It is obvious that the legislature wanted to make the provision mandatory and did not want to give any discretion to the Registrar in this connection. The object is apparent that the delays be cut down in deciding the application for registration of a trade mark.
16. It is, therefore, quite clear that the answer to question No. 1 is that the Registrar does not have the power to extend the time for filing of the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under Rule 50 (1) of the Trade Marks Rules, 2002 and that the answer to question No. 2 is that the non-filing of the evidence affidavit within the prescribed time would by itself lead to the conclusion that the opposition has been abandoned.”
8. In view of the above principles laid down by the Hon’ble High Court, it is clear that the Registrar does not have the power to extend the time for filing evidence beyond a period of three months prescribed under the Rule 50(1) of the Rules, 2002. In the instant case, the appellant had sought time till 19.01.2005, but had filed evidence on 08.02.2005 after 20 days with an application for condoning the delay. In our considered opinion, we think, as stated earlier, the Registrar may grant time up to one month and not further. If that be so, we do not think that the Registrar has the power to condone the delay and take on record the evidence.
9. We therefore hold that the Registrar was right in dismissing the Review Petition. The order dated 05.04.2005 also does not need to be interfered with by us. Accordingly, the appeals are 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.)
