Intellectual Property Appellate Board
Harbansram Bhagwandas Ayurvedic ... vs Assistant Registrar Of Trade Marks, ... on 11 September, 2007
JUDGMENT S. Usha, Member (T)
1. This appeal is arising out of the order dated 15.05.2006 rejecting the TM 16 dated 9.6.1997 and directing the opposition DEL-7239 in application No. 422307 in class 3 to proceed in accordance with the provisions of the Act and Rules. M.P. No. 84/2006 has been filed to stay operation of order dated 15.05.2006, pending the hearing and final disposal of the main appeal.
2. The second respondent herein filed an application for registration of the Trade mark 'RAHAT' under application No. 422307 in class 3 in respect of hair oil and non medicated cosmetics on 24.05.1984. The said application was advertised in the Trade Marks Journal No. 1000 dated 01.02.1991 at page No. 1259. The appellant herein had filed their notice of opposition objecting to the registration of the trade mark 'RAHAT' on various grounds on 03.06.1991. The second respondent filed their counter statement on 25.05.1993. Subsequently, both the parties had filed their affidavits of evidence. After completion of the formal procedures the matter was set down for hearing before the learned Assistant Registrar of Trade Marks.
3. The appellant herein had filed an application on Form TM-16 for amendment by adding two paragraphs to the notice of opposition. The points in the said paragraphs were to say that they had acquired the right from their predecessors as early as 08.12.1976 and also that their trade mark 'RAHAT ROOH' was registered and as such the impugned mark was barred for registration under Section 12(1) of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
4. The Assistant Registrar of Trade marks after going into the merits of the matter had rejected the application on Form TM-16 and decided the TM-24 to the application to bring on record the subsequent proprietors. Aggrieved by the said order the appellants are before us on appeal.
5. The matter was taken up for hearing in the Circuit Bench at Delhi on 06.08.2007. We have heard learned Counsel Ms. Prathiba M. Singh assisted by Ms. Bitika Sharma and Shri S.K. Panda for the appellant and learned Counsel Shri N.K. Anand assisted by Shri A.K. Jha.
6. The learned Counsel for the appellant drew our attention to the impugned order wherein the Assistant Registrar had observed that the issue in TM-16 was to decide whether the opponent i.e. the appellant was a subsequent proprietor of the registered trade mark No. 343612 in class 3. The counsel submitted that the Assistant Registrar had gone into the merits of the matter which could be gone into only after the application for amendment was decided. The counsel also submitted that the Registrar had dealt the assignment agreement dated 31.03.1989 which was not before him. Moreover, the application on Form TM-24 was pending before the concerned authorities for bringing on record the subsequent proprietors.
7. Learned Counsel for the appellant submitted that as per the provisions of Sub-section (7) of Section 21 of the Act, the Registrar has powers to permit correction of any error or amendment of a notice of opposition or counter statement. She also submitted that the amendment was only to add two paragraphs to the notice of opposition which did not materially alter the facts of the case in toto.
8. Learned Counsel for the appellant further submitted that the Assistant Registrar had exceeded the powers and had decided the application on Form TM-24 which was not before him. The learned Counsel for the appellant further contended that the Form TM-16 was only to rely on the earlier registration and based on that the respondent's mark was barred for registration as per the provisions of Section 12(1) of the Act.
9. The learned Counsel for the appellant relied on various judgments i.e. AIR 1991 Delhi 4 Modi Threads Limited v. Som Soot Gola Factory and Anr. - application pending for getting the trade mark transferred in his name will not be a bar for him to protect violation of trade mark.
PTC (Suppl) (1) 709 (Del) Sunil Aggarwal and Anr. v. Kum Kum Tandon and Ors. - was relied on to say that an agreement which contemplates a future act is held to have effect of an equitable assignment.
2006 (33) PTC 729 IPAB Abdul Mujeeb Abdul Wajit Pvt. Ltd. v. Ahmed Mohamed Saleh Baseshen & Co. and Anr. Was relied on to support her claim that the Registrar may permit new ground by way of amendment in the notice of opposition.
10. Learned Counsel for the appellant relying on the above judgments prayed that the appeal be allowed, remanding the matter back to the Registrar and the opposition be decided on merits.
11. The learned Counsel for the second respondent referred to the definition of assignment which meant that the assignment must be in writing by act of the parties concerned. He submitted that the assignment which was relied on was only an agreement which did not have an immediate effect and was only a future act. The counsel also submitted that the appellants had suppressed the fact that the application on Form TM-24 to bring on record the subsequent proprietors was pending before the concerned authorities and had stated that there was no proceeding pending in any court in the grounds of appeal which was also false.
12. The counsel further submitted that the assignment agreement was entered into as early as 1989 whereas the application on Form TM-24 was filed in the year 1992 after a long delay.
13. The counsel contended that the application on Form TM-16 can be decided only on the application on Form TM-24 having been allowed. The counsel submitted that the Assistant Registrar's order was correct and the appeal be dismissed.
14. We have carefully considered the rival submissions and have gone through the proceedings and documents placed before us.
15. On perusal of the application in Form TM-16, we find that the application is only to amend the notice of opposition by adding two paragraphs. In this regard we quote the provisions of Section 21 of the Act which would be instructive.
21. Opposition to Registration.- (1) XXXX (2) XXXX (3) XXXX (4) XXXX (5) XXXX (6) XXXX (7) The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter - statement on such terms as he thinks just.
On a bare reading of Sub-section (7) of Section 21, it is clear that the Registrar may permit any amendment of a notice of opposition on counter statement as he thinks just. So at any stage on consideration of the application, the Registrar can permit an amendment to the application, notice of opposition or a counter statement. The Registrar will allow amendment which will not substantially affect the identity of the mark. The well settled principle of law is that any amendment can be allowed where the amendment would not cause any injury to the other side.
16. The principles regarding amendment has been stated by the Supreme Court in Pirgonda v. Kalgonda as follows:
All amendments ought to be allowed which would satisfy the two conditions (a) of not working injustice to the other side and (b) of being necessary for the purpose of determining the real questions in controversy between the parties - amendment should be refused only where the other party cannot be placed in the same position as if the pleadings had been originally correct, but costs. It is merely a particular case of this general rule that where a plaintiff seeks to amend by setting up a fresh claim in respect of a cause of action which since the institution of the suit has become barred by limitation, the amendment must be refused, to allow it would be to cause the defendant an injury which could not be compensated in costs by depriving him of a good defence to the claim. The ultimate test, therefore, still remains the same, can the amendment be allowed without injustice to the other side or can it not.
In another decision of the Supreme Court in Leach v. Jardine Skinner - the Bench observed that "It is no doubt true that courts would, as a rule, decline to allow amendments, if a fresh suit on the amended claim would be barred by limitation on the date of the application. But that is a factor to be taken into account in exercise of the discretion as to whether amendment should be ordered and does not affect the power of the court to order it, if that is required in the interest of justice."
17. Based on the above principles, it is clear that amendments can be allowed by the Registrar. The Registrar has powers to allow the same which is a discretionary power and which has got to be exercised judiciously.
18. In the instant case, the application on Form TM-16 was only to amend the notice of opposition by adding two paragraphs, but the Registrar has gone into the merits of the document to decide the application. In fact, the registrar has raised a doubt as to the validity of the agreement which was not before him. The Registrar has gone ahead to decide about the application on Form TM-24 for bringing on record the subsequent purchasers which was also not before him.
19. The well settled principles of law is that amendment of notice of opposition can be allowed even by including a new ground which must be construed liberally. The provisions of Order. VI, Rule 17 of the Code of Civil Procedure 1908 states that the courts may, at any stage of the proceedings allow either party to amend the pleadings and such amendment shall be made for the purpose of determining the real question in controversy between the parties. Even though we are not bound by the provisions of the Code, the principles of natural justice is to be considered. In the interest of justice, it is just and necessary that the amendment should be allowed and an opportunity be given to the other side to amend his counter statement accordingly.
20. The application on Form TM-24 for bringing on record though was not placed before us, the respondent insisted that the order in that application along with the review petition be taken into consideration for deciding the appeal. Though we had the benefit of going through the review petition order against the application on Form TM-24, we are not considering the same as, in our opinion, the same is of no relevance to this appeal before us.
21. Accordingly we set aside the impugned order dated 15.05.2005 and allow the appeal and remit back the matter for fresh consideration in accordance with law. Therefore, the matter is remanded back to the Assistant Registrar of Trade Marks, New Delhi to decide the matter afresh, allowing the application on Form TM-16 for amendment and also giving an opportunity to the respondent to file amended counter statement and to decide the matter in accordance with law. The Assistant Registrar is directed to dispose of the matter as expeditiously as possible as the application is pending for more than two decades. As the main appeal itself has been disposed off, MP No. 84/2006/TM/DEL does not survive and becomes infructuous. However, there shall be no order as to costs.