Intellectual Property Appellate Board
Shri Prashant Sharma S/O Shri Kamal ... vs The Assistant Registrar Of Trade Marks, ... on 18 September, 2007
ORDER
Z.S. Negi, Vice-Chairman
1. This appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) is directed against the order dated 25.11.2002 of the Assistant Registrar of Trade Marks, Mumbai.
2. The brief facts as gathered from the appeal records are that Shri Prashant Sharma in the capacity of a partner of the B.E.W. AUTO PARTS filed application No. 740382 for registration of the trade mark BEW in class-12, in respect of Hubs, break drums for trucks, buses, tractor, trailor, animal driving vehicles, trollies, clutch housings for motor land vehicles, chasis spare parts, helper bracket and parts and fittings for motor land vehicles. The application was advertised before acceptance in the Trade Marks Journal but subsequently cancelled and the cancellation notification was published in the Trade Marks Journal No. 1311 dated 16.1.2004 at page 265. On the other hand, the application No. 596305 filed on 5.5.1993 by Shri Satish Sharma, the respondent No. 2 herein for registration of trade mark BEW in class-12, in respect of almost similar goods as that of the appellant's goods mentioned above, is pending. The said application of the respondent No. 2 was advertised before acceptance under proviso to Section 20(1) of the Trade and Merchandise Marks Act, 1958 in the Trade Marks Journal No. 1238 (Suppl.) dated 8.1.2001.
3. The appellant through attorney Manisha Verma Advocates and Company filed notice of opposition dated 28.3.2001 in triplicate, out of which only one copy of notice of opposition was signed and other copies were not signed under the bonafide impression that since one copy from amongst the unsigned copies will be served on the applicant, therefore, on that copy signature of appellant was not mandatory. The Trade Marks Registry, Mumbai by its letter No. TOP/1058 dated 9.9.2002 required the appellant to file Forms TM-5 and TM-48, which reads: "With reference to the above and your notice of Opposition dated 28.3.2001 I am directed by the Registrar of Trade Marks to inform you that the General Power of Attorney on Non-Judicial Stamp Paper of Rs. 100/- should be filed in the first instance within 15 days from the date hereof, failing which the said notice of Opposition will be treated as void-ab-initio." The said letter also required the appellant to send TM-5 without fee duly signed. Thereafter, the Assistant Registrar of Trade Marks, Mumbai by his letter TOP/No. TMR/2024 dated 26.11.2002 informed both the parties and their attorneys stating as "....I have to inform you that due to not receipt of any reply of official letter No. TOP/1058 dated 09/09/2002, the proposed opposition to application No. 596305 in class 12 is to be treated as void-ab-initio." The appellant has directed the present appeal against this letter of Assistant Registrar of Trade Marks.
4. The respondent No. 2 filed the counter-statement dated 4.2.2005 refuting all the material averments made in the appeal. The appeal came up before us for hearing on 18.9.2007 when Shri H.L. Verma and Ms. Boomi Desai, Advocates appeared for the appellant and Shri Prashant Sharma, Advocate appeared for the respondent No. 2.
5. Learned Counsel Shri Verma contended that the order of the Assistant Registrar of Trade Marks is totally erroneous, perverse and against the settled principles of law that on technicality of procedure and practice the substantive claim or defence is not rejected without affording opportunity to the erring party. He contended that the respondent No. 1 without verifying the record of the Registry to ascertain whether the appellant has complied with the requirements of the impugned letter had passed an order. He submitted that the appellant had filed Form TM-5 and TM-48 on 8.10.2002 and also on 25.11.2002 in compliance with the impugned order. On the contrary the learned Counsel for the respondent No. 2 vehemently opposed the contentions raised by the learned Counsel for the appellant.
6. After carefully hearing counsel for both the sides, the first question that emerges is whether any order of the Registrar of Trade Marks can be the basis for filing appeal and whether the present matter is an appeal against the present order or decision of the Registrar as required by Sub-section (1) of Section 91 of the Act. In an analogus provision for appeal contained in Section 109 of the Trade and Merchandise Marks Act, 1958, the Hon'ble High Court of Delhi had occasion to consider the meaning of the words "from any order or decision of the Registrar under this Act". Justice Avadh Behari Rohtagi of High Court of Delhi, in Ratan and Company v. Assistant Registrar of Trade Marks PTC (Suppl) (1) 635 (Del) has observed at paras 19 and 24 as under:
19. To my mind the object of Section 109(2) of the Act is to give a right of appeal to a party aggrieved by some order which affects his right or liability. The words "from any order or decision of the Registrar under this Act" though very wide do not include interlocutory orders, which are merely procedural or processual and do not affect the right and liabilities of the parties. The legislature could not have intended that the parties should be harassed with endless expense and delay by appeals from such procedural orders. It is open to a party to set forth the error, defect or irregularity, if any, in such an order as a ground of objection in his appeal form the final order in the main proceeding.
24. A decision means a concluded opinion. It is an authoritative answer to the question raised before a court. It is the settlement of controversy submitted to it. Decision implies the exercise of a judicial determination as the final and definite result of examination a question....
The Apex Court, in the case of Central Bank of India Limited v. Gokal Chand AIR 1965 SC 799, has also held that an order under the Act means that it is an order which affects the rights and liabilities of the parties. In the present appeal the letter of the assistant Registrar has informed the appellant that due to non receipt of any reply, the proposed opposition is to be treated as void-ab-initio meaning thereby that the decision to treat the proposed opposition as void-ab-initio was not taken at that time but the appellant instead of rushing to the High Court of Madhya Pradesh could have made attempt to seek appropriate relief from the tribunal. The Registrar has not passed any final order in the main proceeding. The impugned order does not affect the rights of the appellant as right to appeal or right to move for rectification of mark, as the case may be, is available to the appellant if the application for registration is allowed or trade mark applied for is registered. It is apparent from the pleadings of the appellant that the Form TM-48 dated 6.7.2001 on 20 rupees non-judicial stamp paper authorised Sh. H.L. Verma to act as agent for registration of application No. 740382 and not for opposition of application No. 596305. The Form TM-48 on 100 rupees non-judicial stamp paper is in favour of Sh. H.L. Verma (without date) for opposition against application No. 593605 (sic 596305) is received by the Trade Marks Registry on 25.11.2002. The copy of Form TM-5 (Annexure-D) which is signed by Shri H.L. Verma cannot be accepted as he had no authority to sign and file the same without any authorisation given to him at that material time by the appellant. On the basis of these facts, we can conclude that there was no legally filed opposition to the application No. 596305. In view of these we are of the opinion that the present appeal is not maintainable.
7. The appeal is dismissed as not maintainable.