Delhi High Court - Orders
Purushottam Singhal Proprietor Ms. ... vs Registrar Of Trade Marks & Anr on 23 May, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A. (COMM.IPD-TM) 13/2021
PURUSHOTTAM SINGHAL PROPRIETOR MS. PRIME
CABLE INDUSTRIES ..... Appellant
Through: Mr. Subodh K. Pathak and Mr. Adil
Alai, Advocates. (M:9811643223)
versus
REGISTRAR OF TRADE MARKS & ANR. ..... Respondents
Through: Mr. Kirtiman Singh, CGSC with Ms.
Srirupa Nag, Advocate for R-1.
(M:7838889854)
Mr. Bikash Ghorai and Mr. Deepak
Panwar, Advocates for R-2.
(M:9818318973)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 23.05.2022
1. This hearing has been done through hybrid mode.
2. The dispute in this matter relates to the trademark "PRIME CAB". The Appellant had filed trademark application bearing no.779092 dated 20th November, 1997. The same was published on 15th January, 2006 but was made available to the public on 1st May, 2006 in the Trade Mark Journal. An opposition was filed on 14th July, 2006 against the said application by Respondent No.2 and was served upon the Appellant's agent on record on 22nd October, 2008. However, in the meantime, it appears that the Appellant's agent changed and one TM-16 was filed on 22nd November, 2007. The same is stated to have been allowed by the Trade Mark Registry. In view of allowing the TM-16, it was directed that the opposition be served C.A. (COMM.IPD-TM) 13/2021 Page 1 of 3 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI again on the address on TM-16. The Deputy Registrar of Trademark passed this order on 20th May, 2013.
3. The stand of Respondent No.1- Trademark Registry is that the opposition was served once again on 7th March, 2019. However, it is not clear as to at which address it was served. In the meantime, there were three rectification petitions which were also pending between the parties before the Intellectual Property Appellate Board (IPAB) which were filed by the Appellant herein against the registrations granted to Respondent No.2 in respect of the mark 'PRIME CAB CABLES (label)'. The IPAB observed that while Appellant's earlier trademark continued to remain pending for the same mark and for the same goods, Respondent No.2's subsequent application was granted registration. The IPAB, vide order dated 7th August, 2013, had allowed the said rectification petitions. The Bombay High Court vide order dated 21st July, 2016 had set aside the order of the IPAB in W.P. No. 2793/2013 titled Ravin Cables Limited v. Union of India and remanded the matter to the IPAB for fresh consideration on merits.
4. On behalf of the Appellant, reliance is placed on the judgment of this Court in Praveen Kumar Maakar v. Union of India & Anr., [W.P.(C) 1625/2017, decided 06th November, 2017] to argue that if the service of the notice of opposition, has not been properly effected, the time for filing counter statement can be extended.
5. On behalf of Respondent No.1, the following three judgments have been relied upon:
● Seiko Cables of India v. Hattori Seiko Company Limited & Ors 96(2002) DLT 886.
● Torrent Pharmaceuticals Ltd. v. UCB 2005(31) PTC 14 (Guj.) C.A. (COMM.IPD-TM) 13/2021 Page 2 of 3 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI ● Allied Blenders and Distillers Pvt. Ltd. v. Intellectual Property Appellate Board & Ors. AIR 2009 Mad. 196.
6. On the strength of the above judgments, it is argued by Respondent No.1 that the time for counter statement in terms of Section 21(2) of the Trade Marks Act, 1999 is mandatory and the same cannot be condoned. Thus, the order of the Trademark Registry treating the application in question as 'deemed to be abandoned' is in accordance with law.
7. In the above background, the ld. Counsels for the parties are directed to seek instructions on the following points:
(1) The status of the three rectification petitions filed by the Appellant herein, owing to the enactment of Tribunal Reforms Act, 2021 as to the forum before which they are pending. (2) Whether any suit has been filed by Respondent No.2 against the Appellant and if so, the status thereof.
(3) Whether TM-16 was filed by the Appellant and if so, a copy thereof be placed on record by Respondent No.1. The Registrar shall also clarify as to at which address the opposition was served in 2019.
8. Let the instructions be sought in respect of the above aspects by ld. Counsels for the parties by the next date of hearing.
9. Additional documents are permitted to be filed in this matter.
10. List for further hearing on 26th August, 2022.
PRATHIBA M. SINGH, J.
MAY 23, 2022/dk/sk C.A. (COMM.IPD-TM) 13/2021 Page 3 of 3 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI