IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL UNDER SECTION 109 No 2 of 1992 For Approval and Signature: Hon'ble MR.JUSTICE K.M.MEHTA ============================================================ 1. Whether Reporters of Local Papers may be allowed : YES to see the judgements? 2. To be referred to the Reporter or not? : YES 3. Whether Their Lordships wish to see the fair copy : NO of the judgement? 4. Whether this case involves a substantial question : NO of law as to the interpretation of the Constitution of India, 1950 of any Order made thereunder? 5. Whether it is to be circulated to the Civil Judge? : NO -------------------------------------------------------------- DHARAMSI MORARJI CHEM.CO.LTD. Versus T.J.FERTILIZERS -------------------------------------------------------------- Appearance: MR RR SHAH for Petitioner MR JR NANAVATI for Respondent No. 1 NOTICE SERVED for Respondent No. 2 -------------------------------------------------------------- CORAM : MR.JUSTICE K.M.MEHTA Date of decision: 08/09/2000 C.A.V. JUDGEMENT 1. The Dharamsi Morarji Chemicals Co.Ltd-petitioners herein have filed this appeal under section 109 of Trade marks & Merchandise Marks Act, 1958 (hereinafter referred to as "the Act") against the order, dated 12.9.1991 passed by the Assistant Registrar of Trade Marks. The Assistant Registrar of Trade Marks (Respondent No.2 herein) by his aforesaid order treated the petitioner's notice of opposition as amended under Rule 53(1) of Trade & Merchandise Marks Rules, 1959 (hereinafter referred to as "Rules") which Notice of Opposition was initiated against the registration of Application No.426202 in Cl.I of the respondent No.1. The petitioner has also challenged the order, dated 12.2.92 passed in review petition by the Assistant Registrar of Trade Marks wherein the Assistant Registrar of Trade Marks was pleased to reject the review petition, dated 4.10.1991 filed by the petitioner wherein the petitioner tried to review the earlier order of the Registrar of Trade Marks, dated 12.9.91. FACTS: 2. The petitioners(original opponents) are a public limited company having its Registered Office at Bombay. The petitioners carry on business of manufacturing and marketing of chemical products used in industry, agriculture, horticulture and forestry since 1922 and manures (natural and artificial) since 1945 under its brand name "SHIP BRAND" (in English) JAHAJ CHAP ( Devnagari script) and VAHAN CHHAP(in Gujarati script). The said trade marks are registered interalia under Nos (i) 224495 as of 22.9.64, (ii) 227547 as of 4.3.1965 and (iii) 227548 as of 4.3.65 and (iv) 227546 as of 4.3.65, all in Class I ( for chemical products used in industry falling under Schedule IV) of the Act. 3. The respondent No.1 are a partnership firm under the name and style of T.J.Fertilisers. The respondent No.1 filed application being Application No.426202 to register their trade mark label of NAUKA BRAND for the goods "N.P.K.Fertilisers" in Cl.I user claimed since 21.4.1983. The Registrar of Trade Marks accepted the said application of the respondent No.1 herein and same came to be advertised in Trade Marks Journal No.987 at page 475 on 16.6.1990. The opponent sent Notice of Opposition on 6.9.90 as per TM 5 Form with prescribed fee signed by Mr.D.G.Mehta, Secretary of the opponent company to the Registrar of Trade Marks, Bombay. Since the file was transferred from Bombay to Ahmedabad the Notice of Opposition on TM 5 was taken on record by the Assistant Registrar of Trade Marks at Ahmedabad under Opposition No.AMD 125 on or about 6.3.1991. The applicants filed their counter statement on TM 6 on 6.5.91. The Assistant Registrar, Trade Marks sent the copy of TM 6 to Shri S.B.Shah, Advocate for opponent with direction to file evidence under Rule 53 on 7.5.91. The opponent filed request on TM 56 for extension of time of two months on 12.7.1991. The Registrar of Trade Marks by his order, dated 7.9.91 granted time to file evidence under Rule 53. 4. The opponent through their advocate-Mr.R.R.Shah applied on TM 56 on 17.9.91 for extension of time for two months. However, before the said application can be considered the Assistant Registrar of Trade Marks passed order, dated 12.9.1991 under Rule 53(2) of Rules on 12.9.1991 and thereby treated the Opposition filed by the opponent as abandoned and this order has been challenged in the present appeal before this court on the ground that the Registrar has no power and jurisdiction to pass said order under Rule 53(2). 5. Before I consider the rival contentions, few facts may require to be noted. The opponent filed review proceedings on or about 3.10.1991 for reviewing the order of the Registrar dated 12.1.1991. Said review proceedings filed on behalf of the the opponent by its advocate. The Assistant Registrar, Trade Marks by his order dated 12.2.1992 was pleased to reject the review petition. This subsequent order has also been challenged by the petitioner-original opponent in the present appeal by amending the memo of appeal. 6. Mr.R.R.Shah, Ld.advocate for the petitioner-original opponent has submitted the following submissions: (i) It is submitted that the provisions of Rule 53(2) is merely directive and is not mandatory and therefore the action of the respondent No.2 treating the opposition proceedings as abandoned is unwarranted, bad in law and not maintainable at law. (ii) It is submitted that the opposition proceedings ought to have been decided on merits by allowing the petitioners to adduce the evidences in support of opposition in the interest of justice, equity and good conscience and public interest to protect the purity of the Register. (iii) It is submitted that the applicant's interest was not likely to be prejudiced if the opposition was not treated as abandoned and extension of time was granted as prayed for by the petitioners. (iv) It was further submitted that in any case that the respondent No.2 had reviewed the impugned order dated 12.9.1991 in view of review application made on 3.10.1991 and therefore to that extent the order of the Registrar, Trade Marks, dated 12/2/1992 is also illegal and bad in law as the Registrar has not properly considered the review application. 7. As against the aforesaid submissions, Mr.Jesani, Ld.advocate for original applicants submitted that the order dated 12.9.91 and further order, dated 12.2.92 wherein he has refused to review the order are perfectly legal and valid and in accordance with the provisions of the Act and Rules. He has further stated the court has also considered the factual aspect while considering the appeal of the petitioner-original opponent. He has further stated that the opponent had filed Civil Suit No.1/85 in the court of Ld.Asstt.Judge at Porbandar and the learned Assistant Judge by his judgment and order, dated 9.9.1991 was pleased to dismiss the said civil suit filed by the opponent. He has further stated that on 1.10.1995 the applicant had filed application No.536372 in Class 1 as on 4.9.90 to register the Trade Mark Nauka Brand came to be advertised in the Trade Marks Journal No.1112 came to be advertised on 1.10.1995. He has stated that neither the opponent nor anyother person opposed the Application No.536372 of the applicants, the Registrar of Trade marks issued Registration certificate of the trade mark Nauka Brand. The Registered Trade Mark No.536372 of Nauka Brand renewed for further seven years from 4.9.97 on 4.5.99. 8. I have heard learned advocates appearing for petitioner-opponent and the respondent. Before discussing rival contentions of the parties, it will be necessary to refer to relevant statutory provisions. STATUTORY BACKGROUND: The Trade And Merchandise Marks Act, 1958 (hereinafter referred to as "the Act") has been enacted to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. Section 2(1)(d) provides definition of "Deceptively similar" means a mark shall be deemed to be deceptively similar to another mark, if it so nearly resembles that other mark as to be likely to deceive or cause confusion. Section 2(1)(j) provides definition of "mark" means 'mark' includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof". Section 2(1)(p) defines "registered" means "registered under this Act". Sectin 2(1)(r) defines "registered the traade mark" means "a trade mark which is actually on the register". Section 2(1) (v) defines "trade mark" means-- (i) in relation to chapter X (other than s.81) a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some persons having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and somer person having the right, either as proprietor or as registered user, to use the mark whether with our without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII. Chapter II provides for Register and Conditions for Registration. Chapter III provides for Procedure for and duration of Registration Section 9 provides for requisites for registration in Parts A & B of the register. Section 11 provides for prohibition of registration of certain marks and reads as under: A mark-- (a) The use of which would be likely to deceive or cause confusion, or (b) The use of which would be contrary to any law for the time being in force, or (c) Which comprises or contains scandalous or obscene matter, or (d) Which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India, or which would otherwise be disentitled to protection in a court shall not be registered as a trade mark. Section 12 provides for prohibition of registration of identical or deceptively similar trade marks and reads as under: (1) Save as provided in Sub.sec(3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. (2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any. (3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods ordescription of goods, subject to such conditions and limitations, if any as the Registrar may think fit to impose. Chapter III provides for procedure for duration of registration. Section 18 provides for application for registration. This section provides as to how application for registration to be made. Once Registrar accepts the application for registration, the application is required to be advertised under section 20 in Trade Mark journal. Once such application is advertised there may be opposition for registration of trade mark in fvour of applicants and therefore section 21 makes provision for lodging such opposition and as to how such opposition is to be dealt with. Section 21 reads as under: "Section 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. (2) The registrar shall serve a copy of the notice on the application for registration and within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter statement of the grounds on which he relies for his application and if he does not do so, he shall be deemed to have abandoned his application. (3) If the applicant sends such counter statement the Registrar shall serve a copy thereof on the person giving notice of opposition. (4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard if they so desire. (5) The Registrar shall, after hearing the parties, if so required, and considering the evidence decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not. (6) Where a person giving notice of opposition or an applicant sending a counter statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceedings before him and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned. Section 97 confers the all powers upon the Registrar of civil court for the purpose of receiving evidence, administering oath, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses and also to award costs. Section 97 also confers powers on the Registrar to review his decision. Section 101 deals with extension of time which reads as follows: "Section 101. 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 the 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 notify the parties accordingly. (2) Nothing in subsection (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. Section 109 provides for appeal against the decision of the Registrar under sections 17 or 18 or 21 of the Act. Section 133 contains powers of Central Government to make rules to carry out purposes of this Act. In exercise of powers conferred by Section 133 of the Trade & Merchandise Marks Act, 1958 read with Section 22 of the General Clauses Act, 1897 the Central Government made the rules known as Trade & Merchandise Marks Rules, 1959 Rule 51 provides for Notice of Opposition Rule 52 provides for counter statement Rule 53 provides for evidence in support of opposition. Rule 53 reads as under: "53. Evidence in support of Opposition: (1) Within two months from the service on him of a copy of the counterstatement by the Registrar 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 but intends to rely on the facts stated in the notice of opposition. He shal deliver to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule. (2) If an opponent takes no action under subrule (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs be deemed to have abandoned his opposition". Rule 54 provides for Evidence in support of application. Rule 55 provides for evidence in reply by opponent. Rule 56 provides for further evidence. Rule 57 provides for Exhibits. Rule 58 provides for translation of documents. Rules 59 provides for hearing and decision and reads as under: "(1) Upon completion of the evidence (if any) the Registrar shall give notice to the parties of a date when he will hear the arguments in the case. Such appointment shall be for a date atleast one month after the date of the notice, unless the parties consent to a shorter notice. Within fourteen months from the receipt of the notice any party who intends to appear shall so notify the Registrar on Form TM-7. Any party who does not so notify the Registrar within the time last aforesaid may be treated as not desiring to be heard and the Registrar may act accordingly. (2) The decision of the Registrar shall be notified to the parties in writing." Rule 60 provides for security for costs. Rule 106 provides for extension of time. 8.1 In my view, in view of section 101 of the Act which provides for extension of time, under Rule 106 this application for extension of time must be made on Form TM 56. The Registrar, if satisfied that the circmstances are 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 may be think fit to impose, extend the time and notify the parties accordingly and the extension may be granted though the time for the doing the Act or taking the proceedings for which it is applied for has already extended. 9. Mr.R.R.Shah, Ld.Advocate appearing for petitioner has relied on the judgment of this court (Coram: M.S.Shah,J) in the case of Torrent Pharmaceuticals Ltd vs Union of India reported in 1998(3) GLR 2090 where this court has considered the provisions of Trade & Merchandise Marks Act, 1958, especially Sections 21, 101 and Rules 53, 54, 55 and 106 where after considering the scope of the Act the court held that Rule 53(2) is directory. The learned judge was also confronted with the view of the Delhi High Court in the matter of Hindustan Embroidery Mills Pvt.ltd vs Hemla Embroidery Mills Pvt.Ltd reported in 1978(3) IPLR 148 wherein the Delhi High Court held that the rule to be mandatory. The learned judge also relied on the judgment of the Bombay High Court in the matter of Kantilal Tulsidas Jobanputra vs Registrar of Trade Marks reported in 1982 PTC 127 where the Bombay High Court has held that by operation of Rule 53 the opposition deemed to have been abandoned unless the Registrar otherwise directs and that clearly indicates that the legislature never intended to lay down a rigid rule ignoring the genuine circumstances which may require extension of time for filing of evidence beyond the period of two months. The learned judge has preferred the view of the Bombay High Court and disagreed with the view taken by the Delhi High Court. However, Mr.Jesani, Learned advocate appearing for other side, at this stage, pointed out that appeal has been filed against the aforesaid judgment of the learned single Judge of this court in the matter of Torrent Pharmaceuticals Ltd vs Union of India reported in 1998(3) GLR 2086 wherein the Division bench of this court in paras 6 & 7 of the judgment held as under: "6. Mr.Daruwala for Mr.Banaji for respondent No.3 on the other hand supported the order passed by the learned single judge. He submitted that the learned single judge has not committed any error of law in interpreting the provisions of Rule 53 of the Rules and holding them to be directory. He, however, submitted that in the facts and circumstances of the case, even if it is held that the provisions of Rule 53 are mandatory, then also the action taken and the order passed by the respondent No.2 could not be said to be illegal or contrary to law since the application for extension was made in accordance with Rules by respondent No.3 within stipulated period of two months as contemplated by Rule 53. For that, he invited our attention to certain facts which were not controverted by the appellant. It was stated that the application of the appellant for registration of Trade Mark was advertised in the Trade journal on Ist January, 1995. On 6th April 1995 respondent No.3 objected vide its notice of opposition to said registration. On 10th October, 1995 the appellant filed counter statement copy of which was required to be supplied to the respondent No.3. It was sent to respondent No.3 by the Assistant Registrar On November 13, 1995. But it was actually served upon the respondent No.3 on November 22, 1995. It was the case of the respondent No.3 that though the Assistant Registrar sent the counter statement along with a letter dated 13.11.1995 it was sent by registered post on the next day, i.e. on November 14, 1995 which was received by the respondent No.3 on November 22, 1995. Thus, two months would expire on 22nd January 1996. Before the said period, however, respondent No.2 made an application for extension of period on 10.1.1996 which was received by respondent No.2 on 15.1.1996. An order was passed by the respondent No.2 granting extension of period on 18.1.1996.Thus, considering the relevant date of receipt of counter statement by the respondent No.3 on November 22, 1995 necessary action was taken by him within a period of two months by making an application on 10.1.1996 to respondent No.2 for extension which was received by respondent No.2 on 15.1.1996 and an order was also passed on 18.1.1996. Thus, in the facts and circumstances, the case did not fall under sub-rule (2) of Rule 53. He also stated that the learned single judge has recorded a clear finding to that effect in para 10 of the judgment. Para 10 reads under: "Coming to the facts of the instant case the contention of Mr.Shah that the respondent No.3 must be deemed to have abandoned his opposition on account of the nonfiling of the application for extension by 13.1.1996 is clearly misconceived in facts because of the two months' time stipulated by Rule 53(1) for adducing evidence of the opponents is to begin from the date of service on the opponent (respondent No.3 herein) of a copy of the coutner statement filed by the petitioner and this service is to be effected through the Registrar. Hence, merely because the Registrar had sent a copy of the petitioner's counterstatement to respondent No.3 along with Registrar's letter dated 13.11.1995 it did not mean that the period of two months referred to in Rule 53(1) commenced from 13.1.1996. It commenced from the date on which respondent No.3 received a copy of the petitioner's counterstatement . The averment made on behalf of respondent No.3that the said counterstatement and Registrar's letter dated 13.11.1995 were received by the respondent No.3 on 22.11.1995 is not controverted and therefore the first contention of Mr.Shah has to be rejected as even on facts respondent No.3 had filed its first application for extension of time to adduce evidence within the prescribed period of two months from the date of service of the counterstatement". In view of the above facts and circumstances and a finding recorded by the learned single judge, in our opinion, the case of the respondent No.3 did not fall within the mischief of Rule 53(2) of the Rules. When a copy of counterstatement was received by respondent No.3 on November 22, 1995 and an application for extension was made by him on 10th January, 1996 and an order was passed by the respndent No.2 on January 18, 1996 the statutory period of two months was not over. It was, therefore, open to the respondent