Intellectual Property Appellate Board
Titan Industries Limited vs Registrar Of Trade Marks And Anr. on 29 December, 2006
Equivalent citations: 2007(34)PTC346(IPAB)
JUDGMENT
S. Usha, Technical Member
1. The appellant filed this appeal challenging the order of the Assistant Registrar of Trade Marks, New Delhi dated 9.9.1999 allowing Form TM.16 for amendment of the date of user and to proceed with the registration of the application as per the provisions of Section 21 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
2. The second respondent herein filed an application on 1.9.1987 for registration of trade mark "Classic" along with the miscellaneous device under application No. 477688 in respect of clocks, watches, timepieces and their parts thereof included in class 14 claiming user since 1.8.1987. The said application was advertised before acceptance in Trade Mark Journal No. 1169 dated 16.2.98 at page No. 2125. The appellant herein had filed their notice of opposition to the said application on 31.3.1998. The grounds of opposition were:
(i) The appellants are manufacturers and dealers of wrist watches and their accessories recognisable throughout India and abroad.
(ii) They are the registered proprietors of the Trade Mark 'Titan' word per se and various other trade marks with the Titan as a prefix. Apart from class 14, they had applied registration of the trade mark in various other classes.
(iii) The appellants are the registered proprietors of the trade mark Titan Classique and as such their watches were popularly known as classique or classic. By reason of use the trade mark has gained much reputation and valuable goodwill.
(iv) The mark which is sought to the registered i.e., the first respondents' application is confusing and deceptively similar to that of the appellants.
(v) As the overall impression of boch the marks were phonetically and visually similar, the trade channels being the same, the inevitable confusion was very much there.
(vi) As prior users of the trade mark, the appellants have valid rights. The respondent's mark is not entitled for registration since the mark was in use only for a month on the date of application.
(vii) The appellants prayed for rejecting the application under Sections 9,11, 12 and 18 of the Act.
3. The second respondent filed their counter statement on 19.2.1999 along with the request for amendment of the date of user denying the various averments. The second respondent filed Form TM-16 for amendment of the date of user. The second respondent had claimed user since 1.8.1987 in their application for registration and now had sought for amendment to read as 10.4.1986 instead of 1.8.1987. The respondent had taken out Form TM-16 and the reason given for amendment was that only while preparing the counter statement, after going through the company records and predecessors records they became aware of the fact that the mark was being used by them since 10.4.1986 and not since 1.8.1987 as claimed in the application. The appellants had filed their reply to this Form TM-16 denying the averment made therein and has stated that the act of the respondent was mala fide and was dishonest attempt to improve their claim for registration on false and fabricated documents. The appellant further alleged that the user claimed by the respondent was 1.8.87 on 1.9.87 when the application was filed and to say it was inadvertently mentioned is false as there was no time between the date of user and the date of application. The appellant also stated that the respondent having failed in their compromise had filed this Form TM-16 for amendment which is a clear case of an abuse of process of law and prayed for the dismissal of the amendment petition.
4. The matter was heard by the Assistant Registrar of Trade Marks after the formal procedure was completed.
5. The learned Assistant Registrar allowed the application on Form TM-16 for amendment of date of user of the second respondent herein by stating that the merits and demerits of the amendment sought cannot be gone into at this stage. The Assistant Registrar had thus passed an order on 9.9.1999 allowing the Form TM-16 for amendment of the date of user and ordered that the application be proceeded with as per the provisions of Section 21 of the Act.
6. Aggrieved by the said order, the appellant had preferred an appeal before the Hon'ble High Court of Delhi in CM(M) No. 737 of 1999 which has been transferred to this Board as per Section 100 of the Trade Marks Act 1999 and re-numbered as TA 157/2003/TM/DEL.
7. We have heard the matter during the Circuit Bench at New Delhi on 14.09.2006. We heard Mr. Amarjit Singh counsel for the appellant and Mr. Shailen Bhatia, counsel for the second respondent.
8. The learned Counsel for the appellant submitted that the application for registration of the impugned mark was filed on 1.9.1987 claiming user from 1.8.87 for the trade mark "Classic" and as such looking into the application it is very clear that hardly a month's time is given as user and possibility of inadvertence does not arise. The appellants have got their trade mark "Titan Classique" already registered as early as 25.8.1986. The counsel for appellant further submitted the registration of the impugned mark will be a bar under Section 12(1) of the Act.
9. The appellant's counsel also submitted that the second respondent company was incorporated only in the year 1988 and to say that they had been using the trade mark since 10.4.1986 was false and Form TM-16 for amendment had been filed only to strengthen their case. He submitted that From TM-16 for amendment of date of user has been filed only after perusal of the averments in the notice of opposition which clearly proves the mala fide intention of the second respondent.
10. The counsel for appellant drew our attention to the latter of compromise sent by the second respondent to the appellant and the reply given by the appellant rejecting the proposal. The appellant forcefully argued that the second respondent had kept quite for more than 11 years and only after the Trade Mark Journal advertisement for which notice of opposition was filed, the second respondent had taken out the Form TM-16 to amend the date of user only to claim right over the trade mark as prior user.
11. He also referred to Section 22(a) of the Act and submitted that as per the provisions of Section 22(a), the Registrar can permit the correction only before or after acceptance of an application for registration and that the Registrar had no powers to allow the amendment of application without following the due procedures.
12. The counsel for the appellant concluded his arguments stating that his grounds are four fold as-
(i) that the Form TM-16 for amendment of the date of user after the mark was advertised in the Trade Mark Journal was not permissible;
(ii) that if such amendment was allowed, it would definitely cause undue hardship and prejudice to the rights of the appellant;
(iii) that the appellant's loss cannot be compensated in terms of money; and
(iv) that a new precedent would be set up by allowing such amendments. The appellant, therefore, prayed that the order of the Assistant Registrar be set aside and the appeal be allowed.
13. The main contention of the learned Counsel for the second respondent was that the appeal itself was not maintainable and was liable to be dismissed. He further argued that an appeal under Section 109 of the Act was not maintainable against the order of the Assistant Registrar allowing the application for amendment.
14. The respondent relied on various judgements in support of his contention to support his claim that no appeal will be maintainable against the interlocutory order of the Assistant Registrar and placed reliance on M/s Ratan and Co. v. P. Narayanan . Here the appeal was against Registrar's powers to grant extension of time.
Ashoka Dresses v. Bonn's Shirts and Anr. 2000 PTC (20) 161 (Del) was relied on to say that the Assistant Registrar has powers to cause publication of the advertisement and to cancel the same. We observe that the facts are different from the instant case.
Reliance was placed on Gopal Krishan v. Mex Switchgeat (P) Ltd. Anr. 1993 (13) PTC 1 (Del)(DB) to say that allowing the application for amending the date of user was legally valid. Here we observe that the facts are different and that after amendment was allowed the mark was again advertised and the opponent/appellant had filed an appeal against allowing of the amendment application.
Daya Ram v. Puran Chand and Mangal Dass Sant Ram Gauba v. Government of India . The second respondent relied on these judgments to support his contention that the amendment at a late stage could be allowed following the principles as the amendment was because of the advocate's mistake. We find that the facts are not relevant to the case on hand.
15. The learned Counsel for second respondent thus concluded his arguments stating the appal itself be dismissed as not maintainable and prayed that a direction be issued to the Registrar to proceed with the opposition proceedings.
16. The learned Counsel for appellant in reply to the arguments of the learned Counsel for second respondent only submitted that the judgments relied on by the second respondent was not applicable as the facts of these cases were different.
17. We have carefully considered the arguments of both the counsel and also have gone through the proceedings before us. We would refer to Section 22 of the Act which empowers the Registrar to make corrections and amendment in the original application. The said provision reads as under:
Section 22. Correction and amendment - The registrar may on such term as he thinks just-
(a) at any time, whether before or after acceptance of an application for registration under Section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application; or
(b) permit correction of any error, or an amendment of, a notice of opposition or a counter-statement under Section 21.
A plain reading of the above provisions makes it clear that the Registrar of Trade Marks either before or after acceptance of the application for registration can permit the correction of any error or permit an amendment of the application. The amendment is allowed even after the publication which would not substantially alter the mark.
18. We are of the opinion that any amendment which will materially change the nature of the application should not be allowed. Here in the instant case, the second respondent has taken out the application on Form TM-16 to amend the date of user after a long delay of 11 years. When procedures are followed before advertisement, the second respondent could have taken out the application at the pre-advertisement stage itself if they had been really interested and vigilant. Here we only observe this application has been taken after receipt of the Notice of opposition is only to gain right over the mark as prior users. Moreover, the well settled proposition of law in Trade Mark law is that the prior user of a trade mark has more valid rights in a mark than the registered proprietor. The second respondent, we observe, is trying to take advantage of the proposition of law and has taken out this application at this belated stage. As seen from the act of the second respondent it is very clear that they have filed this application with mala fide intentions.
19. Amendment which is of such nature as to displace the other party cannot be allowed. Procedural laws are intended to facilitate and not to obstruct course of substantive justice. However, negligent or careless may have been the first omission and however late the proposed amendment, the amendment should be allowed if it can be made without injustice to the other side.
20. Taking the principles of law as guidelines and the facts of the case into consideration, we observe that by allowing the application for amendment of the date of user will definitely prejudice the rights of the appellant, as the very nature of the application gets substantially changed. We, therefore, hold that the application for amendment of the date of user which alters the nature of the application cannot be allowed.
21. We, therefore, set aside the order of the Assistant Registrar of Trade Marks dated 9.9.1999 and consequently allow the appeal. We also direct the Registrar to proceed with the opposition proceedings and dispose of the matter within six months from the date of receipt of this order as the application is pending from 1987. However, there shall be no order as to costs.