Intellectual Property Appellate Board
Tata Motors Limited vs Cavincare Pvt. Ltd. And Ors. on 17 March, 2006
Equivalent citations: 2006(32)PTC717(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. The appellant has filed this appeal against the order of the Assistant Registrar of Trade Marks dated 20.7.2004 rejetting the opposition of the appellant on the ground that they failed to file the evidence in support of opposition within the period fixed under Rule 50 (1) as such by operation of law, the said opposition is deemed to have been abandoned under Sub-rule (2) of Rule 52 of the Trade Marks Rules, 2002 (herein after referred to as the said Rules) framed under the Trade Marks Act, 1999 (herein after referred to as the said Act).
2. The case was taken up for hearing on 23.2.2006. Learned Senior Counsel Shri P.S. Raman assisted by Shri P. Vinod Kumar appeared on behalf of the appellant and learned Counsel Shri Mugunthan appeared on behalf of the first respondent.
3. The Assistant Registrar of Trade Marks has passed the impugned order on the ground that Rule 50(1) of the said Rule contemplates the filing of evidence within two months from service of the copy of counter statement or within such further period not exceeding one month on 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....
The time stipulated under this Rule is mandatory and the opponent is bound to produce the evidence within the time prescribed under Rule 50(1).
4. Learned senior counsel for the appellant contended that the period prescribed under the said Rule cannot be said to be final and the Registrar has no power to extend the time or to receive the evidence produced at a later point of time. In the absence of any such specific prohibition under the statute, the Registrar is always vested with the discretion to extend the time.
5. Learned Counsel for the first respondent however contended that when Sub-rule (2) of Rule 50 of the Said Rules makes it clear that the opposition is abandoned when the evidence is not produced as contemplated under Rule 50(1) of the said Rules. So it is the consequence of the failure to comply with Rule 50(1) as mentioned under Rule 50(2) of the said Rule and as such there is no infirmity in the impugned order.
6. We carefully considered the above contentions and we do not want to enter into an elaborate discussion since the issue raised in this appeal is covered by two earlier orders of this Appellate Board. In the case of Hindustan Lever Limited v. Sunrider Corporation and Anr. 2006 (32) PTC 287 (IPAB), this Board had elaborately discussed the issue and ultimately held that:
In conclusion we have to say that the larger interest of the society demands that an opportunity be granted to the applicant to adduce his part of evidence, besides the opportunity which the Registrar could have granted to the opponent by exercising his discretionary powers.
In the other order Asian Paints Limited v. Registrar of Trade Marksand Anr. 2005 (30) PTC 444 (c) 447 (IPAB) after considering the issue, this Appellate Board held as follows:
It is true that Rule 50 in its new incarnation has undergone changes of fundamental character. However, the settled proposition of law is that the provisions in the subordinate legislation have to be in conformity with the provisions of principal legislation. Section 131 as interpreted by the Courts by virtue of its parallel provision under Section 101 under the Trade and Merchandise Marks Act, 1958 is very much in place in its old form which unambiguously confers a discretionary power in the Registrar to grant extension. It is a settled proposition in law that the discretion of the Registrar under Section 131 of the Act extends to the grant of extension in matter of filing of evidence in opposition. In view of the above, the Registrar was very well competent to grant extension to the appellant in filing their evidence in opposition. Registrar also did not wait for the filing of evidence by the respondent. The society has a vital interest in the purity of the Register and for that matter to get to know the grounds for claiming the registration of the mark. The Registrar should have insisted on the filing of the evidence by the respondent so that by putting his reliance there upon he could discuss and give his reasons in the impugned order. The impugned order has been drawn up in a very sketchy manner. Quasi-judicial orders affecting the vital interests of the society should be put down in a more serious manner.
7. Following the above principles laid down by this Appellate Board, which we have to stick to the same, we are of the view that the impugned order of the Assistant Registrar of Trade Marks cannot be sustained. The appeal is allowed and the impugned order is set aside and the matter is remitted back to the Trade Marks Registry for disposal in accordance with law by receiving the evidence in opposition and if necessary by granting time to the first respondent for filing any reply. For the delay on the part of the appellant, the respondent can be compensated by way of cost. Accordingly the appellant is directed to pay the first respondent a cost of Rs. 2500 within two weeks from the date of receipt of this order, failing which the appeal stands dismissed.