Intellectual Property Appellate Board
Hindustan Lever Limited vs Sunrider Corporation, D.B.A. Sunrider ... on 11 March, 2005
Equivalent citations: 2006(32)PTC287(IPAB)
ORDER
Raghbir Singh, Vice Chairman
1. Application No. 669136 B for registration of trade mark 'SUNERGY' was made to the Registrar of Trade Marks. The Registrar of Trade Marks vide his order dated 20.2.2004 has ordered that by reason of operation of sub-rule (2) of rule 50 of the Trade Marks Rules, 2002, the opposition in the above case is deemed to have been abandoned and as such the mark shall proceed for registration under section 21 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The appellant being opponent in the above matter have given a list containing large number of marks which mentions that they are the registered proprietors of many trade marks which are similar to the impugned mark. Goods of the appellants bearing the mark 'SUN' have been used and sold in India for many decades, even prior to 1910. The mark 'SUN' with reference to goods falling in class 3 have been exclusively associated with the goods of the appellant worldwide and in India.
2. According to the appellant, the application No.669136B filed by first respondent for registration of the impugned mark 'SUNERGY' in class 3 was advertised in the Trade Marks Journal No.1241(s) dated 21.2.2001. The appellant filed opposition vide TM-5 dated 24.5.2001 on various grounds relying on its prior registration, use and status as a well-known mark. First respondent filed their counter statement vide TM-6 dated 14.10.2002. The counter statement filed by first respondent was forwarded to the appellant, which was received by them on 16.12.2002. The appellant was thereby called upon to file evidence in support of opposition. Appellant filed request in form TM-56 dated 10.2.2003 seeking extension of time of two months till 16.4.2003. First respondent through their counsel sent a letter dated 25.3.2003 which was received by the appellant on 31.3.2003 stating that it was negotiating with Unilever. The appellant has submitted that since the parties were corresponding to settle the proceedings amicably, the appellant filed for extension of time for filing evidence in support of opposition. Since first respondent had shown keen interest to settle the opposition proceedings amicably, the appellant could not finalise evidence in support of opposition. Appellant accordingly filed TM-56 seeking time till 16.4.2004 vide TM-56 dated 10.2.2004. Thence thereafter the Assistant Registrar issued order dated 20.2.2004 which was received by the appellant on 4.3.2004. The appellant has made submissions that the restrictions prescribed under Rule 50 to grant extension of time for only one month in the aggregate is directory and not mandatory. Section 131 clearly confers powers on the Registrar to grant extension of time not being a time specially provided in the Act. Since there is no bar under the Act for providing for extension of time, the Registrar can grant extension of time. Therefore, rule 50(1) and (2) are directory and not mandatory. The appellant has a very good case in the present opposition proceedings. It is a registered proprietor of the mark 'SUN' and various other marks containing the mark 'SUN'. The appellant has been diligent in conduct of proceedings. In conclusion, the appellant submitted that the impugned order dated 20.2.2004 may be recalled and set aside and the appellant may be allowed to file evidence in support of opposition under Rule 50 .
3. The appellant also filed M.P. 123/04 on the same lines as mentioned in OA/114/2004 and sought ad-interim injunction against the second respondent from issuing registration certificate under the impugned application.
4. In the counter statement filed by the first respondent on 20.1.2005 they have controverted the submissions of the appellant. They have submitted that first respondent is the registered proprietor of many marks having prefix 'SUN' in India. In view of the submissions made by them in the counter statement, they have submitted that the appeal of the appellant may be dismissed.
5. The appellant filed their reply to the counter statement on 14.2.2005 in the open court.
6. Both the M.P. No.123/04 and OA 114/04 were taken up together for consideration by the Board in its sitting held at Delhi on 14.2.2005. Learned counsel Shri N.Mahabir assisted by learned counsel Ms. Sheetal Vohra appeared on behalf of the appellant and learned counsel Shri S.S.Rana assisted by Ms. B.Rana appeared for first respondent.
7. Learned counsel for the appellant submitted that harmonious construction of rule 50 of the Trade Marks Rules, 2002 and other rules including rule 56(3) and rule 56(4) should be done and harmonious construction of these rules leads to the undisputed conclusion that the power of the Registrar under rule 50 is directory and not mandatory in nature. In view of that, instead of entering into an acrobatic order as the learned Assistant Registrar has done in the instant matter, he should have allowed full opportunity for the filing of opposition and given a detailed order bringing out all the facts in the matter.
8. Learned counsel for the first respondent drew our attention to the copy of TM-56 placed at page 52 wherein the learned counsel for the appellant had submitted that they are still in correspondence with the clients for finalizing the evidence in support of opposition and in view of that they had sought extension of time up to 16.4.2004. Learned counsel referred to Kailasam on Trade Marks at page 265 wherein it has been mentioned that important changes have been made in rule 50 as compared to the corresponding rule 53 of the Trade and Merchandise Marks Rules, 1959. The present rule 50(1) provides for an extension of the period of two months by one more month. However, it explicitly enacts that the extension of the period will not be "exceeding one month in the aggregate". Secondly, in sub-rule (2), the expression "unless the registrar otherwise directs" occurring in the former sub-rule(2) of rule 53 has been omitted. According to the learned author, the intention of law prima facie seems to be that the period for filing evidence in support of opposition should be two months plus one month and nothing beyond. The provision in section 131 seems prima facie to enable the Registrar, if he is satisfied, on application made to him in the prescribed manner, 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, to extend the time subject to such conditions as the Registrar may think fit to impose.
9. Learned counsel for the appellant drew our attention to the full bench judgment of the High Court of Delhi in Hastimal Jain case 2000 PTC 24 DEL wherein it has been held that the relevant provisions of law in the above context are directory and not mandatory in character. He also drew our attention to section 128 of the Act also which is reproduced herebelow:-
128. Exercise of discretionary power by Registrar.- Subject to the provisions of section 131, the Registrar shall not exercise any discretionary or other power vested in him by this Act or the rules made thereunder adversely to a person applying for the exercise of that power without ( if so required by that person within the prescribed time) giving to the person an opportunity of being heard.
10. We are tempted to draw support from the recent order passed by this Board in a similar case decided on 10.2.2005 in Asian Paints Ltd. v. Assistant Registrar of Trade Marks and Anr. OA/108/2004 wherein we have tried to examine the scope of Rule 50 as looked through the parameters of substantive provisions contained under section 131 of the Act. Section 131 of the Act is reproduced herebelow:-
131. 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 this 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 inform the parties accordingly.
(2) Nothing in sub-section (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.
The relevant portion of the order in the Asian Paints Ltd. v. Assistant Registrar of Trade Marks and Another in OA/108/2004 which is exactly applicable in the present case is as below:-
Section 131 of the Trade Marks Act, 1999 and Rule 105 of the Trade Marks Rules, 2002 are reproduction, with mutatis mutandis changes, of section 101 of the Trade and Merchandise Marks Act, 1958 and Rule 106 of the Trade Marks Rules, 1959 respectively. The scope of section 105 had been a matter of consideration under 2000 PTC 24 DEL by the Full Bench of that Court. It is enough to mention that rule 105 provides for grant of extension of time by the Registrar in all matters of excepting a few matters specifically referred to in that rule. Accordingly, provisions of Rule 105 are to be read in furtherance of substantive provisions contained in section 131 of the Act. 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 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 position 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 thereupon 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.
11. 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 power. In this case we find that the operative part of the order runs into seven lines. A quasi judicial authority should shun such a practice which is abhorrent to the principles of natural justice. All the relevant facts of the case should be brought out in the order and the reasons for arriving at the conclusion be discussed in the order.
12. In view of the above, we set aside the order dated 20.2.2004 and remand the matter back to the Registrar for giving an opportunity of hearing to the appellant and the respondent in the matter. Accordingly the appeal is allowed. No cost.