Delhi High Court
Seiko Cables Of India vs Hattori Seiko Company Limited And Anr. on 25 January, 2002
Equivalent citations: 2002VIAD(DELHI)551, 96(2002)DLT886, 2002(62)DRJ640, 2002(24)PTC558(DEL)
Author: R.C. Jain
Bench: R.C. Jain
JUDGMENT R.C. Jain, J.
1. This appeal under Section 109(2) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act') has been filed against the order of the Assistant Registrar to Trade Marks, New Delhi dated 11th December, 1995. The relevant portion of which reads as under :-
"Proceedings having been taken under Section 21 of the Trade and Merchandise Marks Act, 1958 by the above named Opponents to oppose the registration of the trade mark applied for by the above named Applicants and by reason of operation of Sub-section (2) of Section 21 of the Trade and Merchandise Marks Act, 1958 the abovenoted application is deemed to have been abandoned.
2. The facts and circumstances leading to the said order are that on 11th August, 1988 the appellant a partnership firm filed an application bearing No. 495853 in Clause 9 in respect of Electric wires and cables for the registration of trade mark "SEIKO" word per se under the Act. The said application was accepted and advertised by the Trade Marks Registry, Bombay in Trade Marks Journal dated 1st May, 1994. Respondent No. 1 lodged a notice of opposition under Section 21(2) of the Act to the Registrar of the Trade Marks for the said application notice of which was received by the appellant on 8th August, 1995. The appellant send their counter statement on Form TM-6 through speed post on 25th September, 1995 which was received by the Trade Marks Registry on 26th September, 1995 but instead of sending a fee of Rs. 50/- prescribed under the rules, a fee of Rs. 30/- was sent by postal order which fact came to the notice of the appellant's attorney on receipt of a letter of the trade Marks Registry dated 27th September, 1995. The appellant's attorney vide letter dated 9th October, 1995 dispatched the counter statement together with the prescribed fee of Rs. 50/- which was received in the Registry's Office on 10th October, 1995. Respondent No. 2 i.e. Registrar instead of directing Respondent No. 1 to proceed further under Rule 53 of the Trade and Merchandise Marks Rules, 1959 abandoned the application of the appellant under Sub-section (2) of Section 21 of the Act which is alleged to be wrong and without any justification.
3. Notice of the appeal was issued to the respondents and Respondent No. 1 has put in appearance. I have heard Mr. Rajesh Chadha, Advocate for the appellant and Mr. Ajay Shani, Advocate for respondent No. 1 and have given my thoughtful consideration to their respective submissions.
4. Learned counsel for the appellant has assailed the impugned order mainly on the ground that the counter statement was filed within the period of two months as prescribed by Sub-section (2) of Section 21 of the Act and that the mere lapse on the part of the appellant or his attorney in not remitting the full prescribed fee of Rs. 50/- along with the counter statement in Form TM-6, which was subsequently made good on receipt of letter dated 27th September, 1995 from the Officer of the Registrar of the Trade Marks, was not fatal and the requirements was duly complied with and the Assistant Registrar ought not to have abandoned the application on that score. In this regard learned counsel for the appellant has referred to the letter/communication dated 27th September, 1995 issued from the office of the Assistant Registrar of Trade Marks informing the appellant that the fee of request on Fort TM-6 had been enhanced to Rs. 50/- with effect from 9th December, 1991 and requesting the appellant to re-submit the request on Form TM-6 with proper fees at the Trade Marks Registry. The attorney of the appellant dispatched the request in Form TM-6 with a fee of Rs. 50/- from Lucknow on 9th October, 1995 which was received in the office of the Registrar of Trade Marks only on 10th October, 1995. It is also submitted by the learned counsel for the appellant that as per Rule 52 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as 'the Rules') the counter statement required by Sub-section (2) of Section 21 of the Act is required to be sent in triplicate on Form TM-6 within two months from the receipt by the applicant of the copy of the notice of opposition and there is no requirement that the counter statement must be received by the Registrar within two months.
5. As against this learned counsel for the respondent has submitted that even if the date of sending of the counter statement with the prescribed fee is to be taken as 9th October, 1995, even then the counter statement submitted by the appellant was beyond the prescribed period of two months as admittedly the appellant had received the copy of the notice of opposition on 8th August, 1955. In this contention he also referred to the provisions contained in Rule 11(5) of the Rules which provides that where a fee is payable in respect of the filing of a document, the date on which the entire fee is paid shall be deemed to be the date of filing the document. He also emphasised that the provisions of Section 21(2) of the Act prescribing a time limit for sending the counter statement are mandatory and time is not liable to be extended by the Registrar even if a request for extension is made as provided under Section 101 of the Act. In this connection he has referred to a Full Bench decision of this Court in the case of Hastimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Anr., 2000 PTC 24 (FB) wherein Hon'ble Chief Justice S.N. Variava (as his Lordship then was) after noting the provisions contained in Sections 21(1) and 21(2) also with reference to Section 101 of the Act, speaking for the Court laid down that if the Registrar is satirised that there is sufficient cause for extending time he may subject to such condition as he may think fit to impose, extend the time. The Court further held that he cannot extend a time which has been expressly provided in the Act. The Court also held that where the time has not been expressly provided in the Act the Registrar has power to extend the time. It further held that no application for extension of time can be made where (1) time has been expressly provided in the Act; (2) time is prescribed by Rule 81; (3) time has prescribed by Rule 82(4); and (4) time for extension of which a provision is already made in the Rule. This would clearly show that the time limit as prescribed under Section 21(2) of the Act for submission of a counter statement is mandatory and has to be adhere to and is not liable to be extended by the Registrar.
6. As noticed above in the present case the appellant had admittedly received the notice of the application of opposition on 8th August, 1995. No doubt he submitted the counter statement well within the prescribed period of two months but the same was deficient in fee by Rs .20/- which was not made good within the prescribed period despite the receipt of a communication from the office of the Registrar. In fact the counter statement along with the prescribed fee of Rs. 50/- was sent by the appellant's attorney only on 9th October, 1995 i.e. after the expiry of the prescribed period of two months and, therefore, the same was clearly beyond time. As the Registrar had no power to extend the said period, nor any prayer was made, the consequence of the delay was the order of abandonment of the application by reason of the operation of Sub-section (2) of Section 21 of the Act. The contention of the learned counsel for the appellant that on receipt of the counter statement in Form TM-6 the Registrar ought to have proceeded to decide the application and the opposition as provided under Rule 53, is without any merits because once the counter statement was not submitted within the prescribed period, the Registrar was fully justified in not proceeding with the matter and making an order about the abandonment of the application.
7. In view of the foregoing, I am of the considered view that the impugned order is fully justified on the facts and circumstances of the case as obtaining on record and is in accordance with law. In the result this appeal fails and is hereby dismissed with costs of Rs. 5000/- to be deposited with the Delhi State Legal Aid Services within four weeks.