Delhi High Court
Ms Aman Engineering Works vs Registrar Trade Marks Trade Marks ... on 4 November, 2022
Author: Navin Chawla
Bench: Navin Chawla
Neutral Citation Number: 2022/DHC/004701
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 17.10.2022
Date of decision: 04.11.2022
+ CM(M)-IPD 5/2021 & CM 16168/2020
MS AMAN ENGINEERING WORKS ..... Petitioner
Through: Mr.Ashish Dholakia, Sr. Adv.
with Mr.Nipun Saxena, Mr.Archit
Adlakha, Ms.Somya Saxena,
Mr.Akash Pawar, Advs.
versus
REGISTRAR TRADE MARKS, TRADE MARKS REGISTRY,
NEW DELHI & ANR. ..... Respondents
Through: Mr.Vikram Jetly, CGSC with
Ms.Shreya Jetly, Adv. for R-1.
Mr.C.M.Lall, Sr. Adv. with
Mr.Abhinav Bhatia, Ms.Ananya
Chug, Advs. for R-2.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
1. This petition has been filed challenging the orders dated
07.01.2020 passed by the learned Senior Examiner of Trade Marks, Delhi
in TM-M Review Applications nos. 631248 for the mark "RITE
KRANTI" [review filed by the respondent no. 2 against order dated
09.07.2002] and 765101 for the mark "B&M KRANTI" [review filed by
the respondent no. 2 against order dated 11.08.2006], allowing the
aforementioned review applications filed by the respondent no. 2.
2. By the application no. 631248 filed on 16.06.1994, the respondent
no. 2 applied for the registration of the mark "RITE KRANTI" in Class
9 with respect to "water meters, oil meters, gas meters, speed meters and
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meters of all types". An Examination Report dated 05.10.1999 was issued
by the respondent no.1 communicating the grounds of objection to the
registration of the mark. Subsequently, vide an order dated 09.07.2002
the application was dismissed as "abandoned".
3. By the application no. 765101 filed on 28.07.1997, the respondent
no. 2 had applied for the registration of the mark "B&M KRANTI" in
Class 9 with respect to "water meters, oil meters, gas meters, speed
meters and other meters of all types and all other goods included in class
9". An Examination Report dated 05.02.2003 was issued on this
application by the respondent no. 1 communicating the grounds of
objection to the registration of the mark. This application was also
eventually dismissed as "abandoned" vide order dated 11.08.2006.
4. The respondent no. 2 applied for a review of the above orders vide
applications dated 31.08.2019, inter alia, on the ground that though the
Reply to the Examination Report had been filed by the previous Attorney
of the respondent no.2, neither the respondent no. 2 nor its Attorney had
received the hearing notices dated 09.07.2002 [for application no.
631248] and 11.08.2006 [for application no. 765101] and, therefore, the
applicant/respondent no. 2 in the petition could not attend the hearing in
the applications on the said dates. The respondent no. 2 also contended
that the orders of refusal of the applications were not served on the
respondent no.2.
5. The impugned orders allowing these review applications are
almost verbatim. The order passed by the learned Senior Examiner of
Trade Marks, as far as application no. 631248 is concerned, is reproduced
hereinunder:-
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"An application for registration of trade mark
consisting of word" RITE KRANTI" was filed by
the aforesaid Applicant under application No
631248 in respect of applied goods included in
Class - 9. The application was examined and
examination report containing the objections to
the acceptance of application for registration of
trade mark was communicated to the Applicant.
On the request of the Applicant, a hearing was
fixed in this matter. Eventually on 16 September
2019, the application came up before me for
hearing and the order was passed accordingly.
The present petition on form TM-M has been filed
for review of the order dated.
Made submission that applicant never received
the examination report, affidavit to this effect also
filed, review allowed on the basis of affidavit.
The request on form TM-M is accordingly
Allowed.
Sealed and signed at the Trade Marks Registry,
Branch Delhi on dated: 07 January 2020."
Submissions on behalf of the learned senior counsel for the petitioner
6. The learned senior counsel for the petitioner submits that while in
the review applications it was admitted by the respondent no. 2 that the
Examination Report had been received by it and even a reply thereto had
been filed, the review applications have been allowed by the respondent
no.1 on the ground that the Examination Report was never received by
the respondent no. 2. He submits that this is an error apparent on the face
of the record. He further submits that even otherwise and more
fundamentally, Rule 119 of the Trade Marks Rules, 2017 (hereinafter
referred to as the „Rules‟) provides that an application for review can be
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filed "within one month from the date of the decision or within such
further period not exceeding one month thereafter as the Registrar may
on request allow". In the present case, the review applications were filed
almost seventeen years (for application No. 631248) and sixteen years
(for application No. 765101) after the rejection orders, dismissing the
applications filed by the respondent no. 2 seeking registration of its
marks as "abandoned". The applications were, therefore, were not only
barred by limitation, but also the respondent no.1 had no power to
condone the delay. Placing reliance on the judgment of the Supreme
Court in New India Assurance Company Limited. v. Hilli Multipurpose
Cold Storage Private Limited, (2020) 5 SCC 757, he submits that where
the statute prescribes an outer limit within which a particular action is to
be undertaken, such as the condonation of delay, the said outer limit
cannot be increased by the Tribunal/Quasi-Judicial Authority and thus,
delay beyond the said period cannot be condoned by the authority. He
submits that the respondent no.1 cannot condone the delay beyond this
outer limit relying upon its power under Section 131(1) of the Trade
Marks Act, 1999 (hereinafter referred to as the „Act‟). In this regard, he
places reliance on the judgment of this Court in Surinder Corporation,
U.S.A. v. Hindustan Lever Limited & Anr., 2007 SCC OnLine Del
1018.
Submissions on behalf of the learned senior counsel for the
respondent no. 2
7. On the other hand, the learned senior counsel for the respondent
no.2 submits that though the review applications had been filed on the
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ground that the Examination Reports had been received and replied to,
however, the Notice of Hearing had not been received by either the
respondent no.2 or its Attorney and that the said admission was a
mistake. Later affidavits were filed by the respondent no.2 stating that it
had not received the Examination Report as well. Relying upon the said
affidavit, the respondent no.1 condoned the delay as this was a material
irregularity committed by the respondent no.1 in passing the impugned
orders dismissing the applications of the respondent no.2 seeking the
registration of their marks as „abandoned‟. The service of a Notice of
Hearing as also the order passed is mandatory, as held by the High Court
of Bombay in Institute of Cost Accountants of India v. Registrar of
Trade Marks and Another, 2013 SCC OnLine Bom 362 and by this
Court in Gopal Ji Gupta v. Union of India and Another, 2019 SCC
OnLine Del 7670.
8. He further submits that the general power of condonation of delay,
vested with the respondent no. 1 under Section 131 of the Act, cannot be
curtailed by Rule 119 of the Rules. As far as an application for review is
concerned, Section 127(c) of the Act does not prescribe any period of
limitation for filing of the same, therefore, the respondent no. 1 has
power to condone the delay, if any, in filing of an application seeking
review of an order, and such power cannot be curtailed by Rule 119 of
the Rules. In this regard, he places reliance on the order of the erstwhile-
learned Intellectual Property Appellate Board (in short, „IPAB‟) in Sahil
Kohli v. Registrar of Trade Mark and Another, 2018 SCC OnLine
IPAB 55.
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9. He further submits that even otherwise, the petitioner had no locus
to file the present petition as it has an efficacious remedy of filing
objections to the applications seeking registration of the marks filed by
the respondent no.2 once they are advertised in the Trade Marks Journal.
10. Further placing reliance on the judgment of the Supreme Court in
Jagatjit Industries Limited v. Intellectual Property Appellate Board and
Others, (2016) 4 SCC 381, he submits that separate reasons on basis of
which the Registrar condones the delay under Section 131 of the Act
need not be recorded in the order itself in every case. In the present case,
therefore, it should be deemed that the learned Senior Examiner of Trade
Marks has condoned the delay, if any, in the filing of the review
applications by the respondent no.2.
Submissions on behalf of the learned counsel for the respondent no. 1
11. The learned counsel for the respondent no.1, while adopting the
submissions made by the learned senior counsel for the respondent no.2,
further submits that as there was no record of compliance with Section
132 of the Act, that is, of the service of the Examination Report and the
date of hearing on the respondent no.2, available with the respondent
no.1, thus, the respondent no.1 rightly allowed the applications seeking
review of the orders dismissing the applications of the respondent no.2
seeking registration of its marks. He places reliance on the order dated
14.11.2017 passed by this Court, inter alia, in a batch of petitions
including W.P.(C) 3043/2016 titled Tata Steel Limited v. Union of India
& Anr. and the order dated 12.03.2021 passed by this Court in W.P.(C)
8298/2020 titled Mahesh Gupta v. Union of India and Anr, to submit
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that therein as well, the orders passed by the Registrar of Trade Marks
dismissing the applications as „abandoned‟ without due service of the
notice to the applicants was set aside by this Court.
Rejoinder Submissions on behalf of the learned senior counsel for the
petitioner
12. In rejoinder, the learned senior counsel for the petitioner, while
reiterating his earlier submissions, submits that the affidavit filed by
respondent no. 2 does not state that even the then Attorney of the
respondent no.2 had not been served with the Examination Report or the
Notice of Hearing. He submits that therefore, no reliance could have been
placed on the said affidavits.
13. Further, placing reliance on Sections 157(xxxiv) and (xxxvii) of
the Act, he submits that the period prescribed in the Rules for filing of an
application seeking for review for an order and/or for seeking
condonation of the delay under Section 131 of the Act, is to be treated as
being prescribed by the Act itself. He submits that, therefore, the power
under Section 131 of the Act vested with the respondent no. 1 is
circumscribed and restricted by the Rules. In this regard, he places
reliance on the judgment of the Supreme Court in State of Tamil Nadu v.
M/s Hind Stone and Others, (1981) 2 SCC 205.
Analysis and Findings
14. I have considered the submissions made by the learned counsel for
the parties.
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15. As far as the objection of the learned senior counsel for the
respondent no.2 is concerned to the effect that the petitioner must wait for
the application of the respondent no.2 to be advertised and file its
objection thereto rather than filing the present petition, in my opinion, the
same is ill-founded. Admittedly, the parties are in litigation in a Civil
Suit. The revival of the applications of the respondent no.2 seeking
registration of its marks shall, therefore, cause prejudice to the petitioner
in such Civil Suit. Even otherwise, the plea of the petitioner is that the
learned Senior Examiner of Trade Marks had become functus officio and
had no power to condone the delay of the respondent no.2 in filing of the
applications seeking review of the orders by which its applications
seeking registration of its marks were deemed to be "abandoned" by the
respondent no. 1 . This being an issue of jurisdiction, should be decided
at an initial stage itself rather than letting the proceedings in those
applications being dragged on.
16. On merits, the question to be determined by this Court is as to
whether the respondent no. 1 has the power to condone the delay beyond
the period prescribed in Rule 119 of the Rules. Section 127(c) of the Act
empowers the Registrar to review its own decision. The same is
reproduced hereinbelow:-
"127. Powers of Registrar.--In all proceedings
under this Act before the Registrar,--
(a) xxxxxx
(b) xxxxx
(c) the Registrar may, on an application made in
the prescribed manner, review his own decision."
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17. The manner for making the application is prescribed in Rule 119 of
the Rules. The same is reproduced hereinunder:-
"119. Application for review of Registrar's
decision.--An application to the Registrar for the
review of his decision under sub-section (c) of
Section 127 shall be made in Form TM-M within
one month from the date of such decision or
within such further period not exceeding one
month thereafter as the Registrar may on request
allow, and shall be accompanied by a statement
setting forth the grounds on which the review is
sought. Where the decision in question concerns
any other person in addition to the applicant, such
application and statement shall be left in triplicate
and the Registrar shall forthwith transmit a copy
each of the application and statement to the other
person concerned. The Registrar may, after
giving the parties an opportunity of being heard,
reject or grant the application, either
unconditionally or subject to any conditions or
limitations, as he thinks fit."
18. A reading of the above Rule would show that an application
seeking review of a decision of the Registrar of Trade Marks/respondent
no. 1 has to be made within a period of one month from the date of such
decision or within such further period not exceeding one month
thereafter, as the Registrar of Trade Marks/respondent no. 1 may on
request allow. Therefore, it sets the maximum outer limit by which the
delay in filing of an application seeking review of the decision of the
Registrar of Trade Marks/respondent no. 1 can be condoned .
19. In New India Assurance Co. Ltd. (supra), the Supreme Court in
relation to the provisions of the Consumers Protection Act, 1986 relating
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to the time period for filing of the reply/response to the consumers‟
complaint held as under:-
"13. On the contrary, sub Section (2)(a) of Section
13 of the Consumer Protection Act provides for
the opposite party to give his response „within a
period of 30 days or such extended period not
exceeding 15 days as may be granted by the
District Forum‟. The intention of the legislature
seems to be very clear that the opposite party
would get the time of 30 days, and in addition
another 15 days at the discretion of the Forum to
file its response. No further discretion of granting
time beyond 45 days is intended under the Act.
xxxxxx
16. Now, reverting back to the provisions of the
Consumer Protection Act to consider as to
whether the provision of sub-section (2)(a) of
Section 13 granting a maximum period of 15 days
in addition to 30 days has to be read as
mandatory or not, we may also consider the other
provisions of the Consumer Protection Act where
the legislature intended to allow extension of
period of limitation.
xxxxxx
20. The legislature in its wisdom has provided for
filing of complaint or appeals beyond the period
specified under the relevant provisions of the Act
and Regulations, if there is sufficient cause given
by the party, which has to be to the satisfaction of
the authority concerned. No such discretion has
been provided for under Section 13(2)(a) of the
Consumer Protection Act for filing a response to
the complaint beyond the extended period of 45
days (30 days plus 15 days). Had the legislature
not wanted to make such provision mandatory but
only directory, the provision for further extension
of the period for filing the response beyond 45
days would have been provided, as has been
provided for in the cases of filing of complaint and
appeals. To carve out an exception in a specific
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provision of the statute is not within the
jurisdiction of the courts, and if it is so done, it
would amount to legislating or inserting a
provision into the statute, which is not
permissible.
21. By specifically enacting a provision under
sub-section (3) of Section 13, with a specific
clarification that violation of the principles of
natural justice shall not be called in question
where the procedure prescribed under sub-
sections (1) and (2) of Section 13 of the Consumer
Protection Act has been followed or complied
with, the intention of the legislature is clear that
mere denial of further extension of time for filing
the response (by the opposite party) would not
amount to denial or violation of the principles of
natural justice. This provision of Section 13(3)
reinforces the time-limit specified in Section
13(2)(a) of the Act.
22. This Court in Lachmi Narain v. Union of
India [Lachmi Narain v. Union of India, (1976) 2
SCC 953 : 1976 SCC (Tax) 213] has held that :
(SCC p. 969, para 68)
"68. ... If the provision is couched in
prohibitive or negative language, it can rarely be
directory, the use of peremptory language in a
negative form is per se indicative of the intent that
the provision is to be mandatory."
Further, hardship cannot be a ground for
changing the mandatory nature of the statute, as
has been held by this Court in Bhikraj
Jaipuria v. Union of India [Bhikraj
Jaipuria v. Union of India, AIR 1962 SC 113 :
(1962) 2 SCR 880] and Fairgrowth Investments
Ltd. v. Custodian [Fairgrowth Investments
Ltd. v. Custodian, (2004) 11 SCC 472] . Hardship
cannot thus be a ground to interpret the provision
so as to enlarge the time, where the statute
provides for a specific time, which, in our opinion,
has to be complied in letter and spirit.
xxxxxx
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24. Further, it has been held by this Court
in Popat Bahiru Govardhane v. LAO [Popat
Bahiru Govardhane v. LAO, (2013) 10 SCC 765 :
(2014) 1 SCC (Civ) 149] that the law of limitation
may harshly affect a particular party but it has to
be applied with all its vigour when the statute so
prescribes and that the Court has no power to
extend the period of limitation on equitable
grounds, even if the statutory provision may cause
hardship or inconvenience to a particular party.
25. The contention of the learned counsel for the
respondent is that by not leaving a discretion with
the District Forum for extending the period of
limitation for filing the response before it by the
opposite party, grave injustice would be caused as
there could be circumstances beyond the control
of the opposite party because of which the
opposite party may not be able to file the response
within the period of 30 days or the extended
period of 15 days. In our view, if the law so
provides, the same has to be strictly complied, so
as to achieve the object of the statute. It is well
settled that law prevails over equity, as equity can
only supplement the law, and not supplant it."
20. This Court, in Surinder Corporation, U.S.A. (supra), while
considering the provisions of Section 21(4) of the Act read with Rule 50
of the Trade Marks Rules, 2002 (hereinafter referred to as the „old
Rules‟) observed as under:-
"8. Reading Rule 50, it is clear that the evidence
by way of affidavit in support of an opposition to
the registration of a trade mark has to be filed
within two months of the service of a copy of the
counter-statement on the opponent. This period of
two months is further extendable by a period of
one month in the aggregate thereafter as the
Registrar may on request allow. Clearly, in the
first instance, the evidence affidavit has to be filed
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within two months of the receipt of a copy of the
counter-statement. The Registrar may extend this
period by a further one month in the aggregate if
a request for the same is made in time. Sub-rule
(2) of Rule 50 makes it clear that if an opponent
takes no action under Sub-rule (1) within the time
mentioned therein, he shall be deemed to have
abandoned his opposition. It is also interesting to
note that Sub-rule (3) refers to the application for
extension of the period of one month mentioned in
Sub-rule (1). It is also stipulated that such an
application has to be made in Form TM-56
accompanied by the prescribed fee before the
expiry of the period of two months mentioned
therein. So, it is clear that a strict regimen has
been prescribed for the filing of evidence by way
of affidavit in support of an opposition. A plain
reading of the provisions makes it abundantly
clear that the evidence has to be filed within two
months in the first instance and, if an appropriate
application for extension of time is made before
the expiry of the period of two months and if such
application is allowed by the Registrar, then latest
by a further month. In other words, under no
circumstances can the evidence affidavit be filed
beyond the maximum three months prescribed
under the said rule. In case the opponent has not
taken steps within the prescribed time, then there
is no option left with the Registrar but to deem
that the opponent has abandoned his opposition.
9. In Chief Forest Conservator (Wildlife) v. Nisar
Khan, (2003) 4 SCC 595 : AIR 2003 SC 1867 , the
Supreme Court held:
"It is now well settled that when rules are
validly framed, they should be treated as a
part of the Act."
10. There is no doubt that Rule 50 of the 2002
Rules has been validly framed in exercise of the
Central Government's rule making powers under
Section 157(1) in general and Section 157(2)(vii)
in particular. In this background, it can be safely
stated that the time and manner prescribed in Rule
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50 of the 2002 Rules should be treated as having
been prescribed by the 1999 Act itself.
11. The decisions referred to in the cases of Delta
Impex v. Commissioner of Customs, 110 (2004)
DLT 209 (DB) , Pranam Enterprises v.
Commissioner of Sales Tax, New Delhi v. 111
(2004) DLT 743 and Union of India v. Popular
Construction Co., (2001) 8 SCC 470 : AIR 2001
SC 4010 all clearly indicate that where the
statute itself prescribes a maximum condonable
period, then it would not be open to the authorities
under that statute to extend the period for doing
an act beyond the prescribed maximum
condonable period. It is, therefore, clear that the
Registrar does not have any power to extend the
time for filing the evidence affidavit beyond the
maximum period of one month after the initial
period of two months."
21. In the above judgment, the Court also rejected the reliance of the
respondents on Section 131 of the Act as granting an unbridled discretion
with the Registrar of Trade Marks to condone the delay.
22. The submission of the learned senior counsel for the respondent
no.2 that the above decision would not have an application to Section
127(c) of the Act, inasmuch as, the same dealt with Section 21(4) of the
Act which states that the evidence must be filed within the prescribed
time and such prescribed time can be in the Rules, whereas, as far as
Section 127(c) is concerned, it does not state that the application must be
filed within the prescribed time, also cannot be accepted. Section 127(c)
of the Act states that the application seeking review should be made in
the "prescribed manner". The manner prescribed for making such an
application is in Rule 119 of the Rules. If the application is not filed in
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the "prescribed manner", that is, including within the period prescribed
for filing of such an application, the same cannot be entertained by the
respondent no. 1, as the said condition and prescription is mandatory
because of the language used in Rule 119 of the Rules.
23. Similarly, the submission of the learned senior counsel for the
respondent no.2 that Section 131 of the Act would vest an unbridled
power with the Registrar of Trade Marks/respondent no. 1 to condone the
delay even beyond the period prescribed in Rule 119 of the Rules, also
cannot be accepted. Section 131 of the Act is reproduced hereinunder:-
"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."
24. The above provision has to be read along with Section 157 (xxxiv)
of the Act, which is reproduced hereinbelow:-
"157. Power to make rules.--
xxxx
(xxxiv) the manner of making an application for
review under clause (c) of section 127;"
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25. The above provision empowers the Central Government to make
Rules to carry out the provisions of the Act, including prescribing the
manner of making an application for review under Section 127(c) of the
Act. Rule 119 of the Rules has been framed exercising the said power. As
held by the Supreme Court in M/s Hind Stone and Others, (supra), a
statutory rule is to be treated as part of the statute and is equally effective.
Rules made under the statute must be treated for all purposes of
construction or obligations exactly as if they were in the Act and are to be
of the same effect as if contained in the Act. The same principle was also
accepted by this Court in Surinder Corporation, U.S.A. (supra), as is
reflected in paragraph nos. 9 and 10 of the judgment, quoted hereinabove.
26. Section 131 of the Act empowers the Registrar of Trade
Marks/respondent no. 1 to extend the time for doing any act, provided the
time period is not expressly provided in the Act. As held by the Supreme
Court, as also by this Court in the above referred judgments, the period
prescribed under Rule 119 of the Rules has to be considered as one
prescribed in the Act itself. The Registrar, therefore, has no power to
condone the delay beyond the period prescribed by the said Rule.
27. Reliance of the learned senior counsel for the respondent no.2 on
the judgment of Sahil Kohli (supra) also cannot be accepted. In the said
judgment, the learned-erstwhile IPAB was considering Rule 45 of the old
Rules and the amendment made thereto in the Rules. The learned-
erstwhile IPAB, in fact, distinguished the judgment of this Court in
Surinder Corporation, U.S.A. (supra), observing as under:-
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"45. Since the judgment of Sunrider
Corporation v. Hindustan Lever supra was
rendered by Delhi High Court in the context of
interpretation of Trade Marks Rules, 2002 and the
respondent has placed heavy reliance of upon the
same, therefore, the analysis and interpretation of
the new Rules of 2017 is necessary viz a viz the
interpretation rendered by the Delhi High Court
under the old Rules of 2002 and it is only then the
assessment can be made as to whether the
interpretation rendered under the old rules of
2002 can be applied to the context of the new
rules as it is or not.
xxxxxx
50. On the basis of the interpretation arising from
the combined reading of Section 21(4) read with
Section 131 and Rule 50 of the Trade Marks
Rules, 2002, the Delhi High Court in the case
of Sunrider Corporation v. Hindustan Lever
Ltd. (supra) came to the conclusion by comparing
the Rule 50 which was subsisting under the Trade
Marks Rules, 1959 viz. a viz. the changes made in
the said Rule by way of amendment in Trade
Marks Rules, 2002 that the Registrar's power to
extend the time period after the passage of two
months has been restricted by way of the
amendments carried out in the Rule 50 by limiting
the power of Registrar to extend the time period
not exceeding one month in aggregate by inserting
the words „not exceeding one month in aggregate
thereafter‟ in Rule 50(1) and removing the
residual discretion by omitting the words "unless
the Registrar otherwise directs". This has
weighed heavily before the Delhi High Court
while giving the mandatory effect to the
interpretation of Rule 50(1) of the Trade Marks
Rules, 2002.
xxxxxx
53. In view of the changes made in Rule 45(1) of
the Trade Marks Rules, 2017 and also in view of
the discussion arising at points (f) to (j) mentioned
in the preceding paragraphs relating to the
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interpretation of Rule 45 of the Trade Marks
Rules, 2017, the judgment passed in case
of Sunrider Corporation v. Hindustan Lever
Ltd. (supra.) is clearly distinguishable and is not
applicable in view of the changes made in the
structure of Rule 45 which omits completely the
entire aspect of the registrar discretion of
granting the extension and the restrictions, which
were imposed earlier in rule 50 of rules of 2002
upon the Registrar's power to extend the time
period.
xxxxxx
56. In view of the changes made in the Rules and
the language of the Rules including Rule 45, the
interpretation rendered in the earlier Rule 50 of
the Trade Marks Rules, 2002 which restrictedly
discretion of the Registrar to grant of extension of
time only to one month period in aggregate is
removed and consequently the applicability of the
judgment of Sunrider Corporation (supra.) under
the new Rules the extension of power has been
extinguished or have lost its significance, in view
of the change in the language of the newly framed
Rule 45 of the Trade Marks Rules, 2017."
28. The position, however, with regard to Rule 119 of the Rules will
continue to be governed by Surinder Corporation, U.S.A. (supra), as
Rule 119, as was the case with Rule 45 of the old Rules prior to its
amendment, prescribes the outer limit within which alone the respondent
no. 1 can condone the delay. The judgment of this Court in Surinder
Corporation, U.S.A. (supra) would, therefore, fully apply as far as Rule
119 of the Rules is concerned, as it clearly provides that the Registrar of
Trade Marks/respondent no. 1 has no power to condone the delay in the
filing of an application seeking review beyond expiry of one month from
the date of the decision of which review is sought.
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29. The learned senior counsel for the petitioner, placing reliance on
Section 157(xxxvi) of the Act read with Rule 109 of the Rules, rightly
submits that the power of the Registrar of Trade Marks/respondent no. 1
to condone the delay, even otherwise, has been curtailed to only one
month of delay. Section 157(xxxvi) of the Act and Rule 109 of the Rules
are quoted hereinbelow:-
Trade Marks Act, 1999
"157. Power to make rules.--
xxxxx
(xxxvi) the manner of making an application and
the fee payable therefor under sub-section (1) of
section 131;
xxxxx
Trade Marks Rules, 2017
"109. Extension of time.--(1) An
application for extension of time under Section
131 (not being a time expressly provided in the
Act or prescribed by Rule 85 or by sub-rule (3) of
Rule 86 or a time for the extension of which
provision is made in the rules) shall be made in
Form TM-M.
(2) Upon an application made under sub-rule
(1) the Registrar, if satisfied that the
circumstances are such as to justify the extension
of the time applied for, may, subject to the
provisions of the rules where a maximum time
limit is prescribed and subject to such conditions
as he may think fit to impose, extend the time not
exceeding one month and communicate the parties
accordingly and the extension may be granted
though the time for doing the act or taking the
proceeding for which it is applied for has already
expired."
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30. Rule 109(1) of the Rules prescribes that "An application for
extension of time under section 131 (not being a time expressly provided
in the Act or prescribed by rule 85 or by sub-rule (3) of rule 86 or a time
for the extension of which provision is made in the rules) shall be made
in Form TM- M." . As held hereinabove, the time prescribed for the filing
of an application seeking review of the decision of the Registrar has been
prescribed in the Act in the form of Rule 119 of the Rules. In fact, Rule
109(2) further states that the Registrar, on such an application made
under Section 131 of the Act, may extend the time "not exceeding one
month". This clearly further circumscribes and restricts the power of the
Registrar of Trade Marks/respondent no. 1 under Section 131 of the Act
to condone the delay.
31. The submission of the learned senior counsel for the respondent
no.2 that in the present case as the Examination Report and the Notice of
Hearing was not served on the respondent no.2, which is a mandatory
requirement, the respondent no. 1 was within its jurisdiction to review its
decision to treat the applications of the respondent no.2 as "abandoned",
also cannot be accepted. Apart from the fact that the applications seeking
review itself were not maintainable having been filed beyond the time
prescribed, even otherwise, in the applications seeking review, the
respondent no.2 had admitted to the receipt of the Examination Report
and filing of the reply thereto. There was no amendment to the
applications sought or made by the respondent no.2. However, affidavits
were later filed by the respondent no.2 claiming that even the
Examination Report was not received. The respondent no. 1 went on to
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entertain the said affidavit, though it was in contradiction to the review
applications itself. Further, the said affidavit had been filed by the
director of the respondent no.2-company, who stated that he had not
received a copy of the Examination Report "and the examination report
was not in my knowledge or of the company". There was no assertion in
the affidavit that the Examination Report had also not been received by
its Attorney, whose address was given in the application for affecting
service of any communication of the respondent no. 1. In the absence of
such an assertion, clearly, the respondent no. 1 erred in accepting the
submission of the respondent no.2 that the Examination Report had not
been received by the respondent no. 2.
32. In fact, the reply-affidavit filed by the respondent no.1 to the
present petition shows that the respondent no. 1 shifted the burden of
proof of service of the Examination Respondent on the respondent no. 2
to itself, though the applications for review were filed seventeen and
sixteen years respectively after the orders of the respondent no. 1
dismissing the applications of the respondent no.2 as "abandoned". No
explanation was sought from the respondent no.2 on the steps taken by
the respondent no.2 for all this period with respect to its applications. The
burden of proving service could not have been placed by the Registrar on
himself after such a long period of time. An act of the authority must be
deemed and presumed to have been done in accordance with the
procedure prescribed. Section 114 of the Indian Evidence Act, 1872,
reads as under:
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"114. Court may presume existence of certain
facts.--The Court may presume the existence of
any fact which it thinks likely to have happened,
regard being had to the common course of
natural events, human conduct and public and
private business, in their relation to the facts of
the particular case.
Illustrations
xxxx
(e) that judicial and official act have been
regularly performed:
xxxx
But the Court shall also have regard to such facts
as the following, in considering whether such
maxims do or do not apply to the particular case
before it: --
xxxxx
as to illustration (e) - a judicial act, the
regularity of which is in question, was performed
under exceptional circumstances;
xxxxx"
33. In Iqbal Basith and Others v. N. Subbalakshmi and Others,
(2021) 2 SCC 718, it was held that there is a presumption that all official
acts have been regularly performed. The onus lies on the person who
disputes the same to prove otherwise. In the present case, the respondent
no. 2 had clearly failed to discharge this burden and inspite of the same,
the respondent no. 1 shifted this burden on itself, though there was an
unreasonable delay on part of the respondent no. 2 to move applications
seeking review of the original orders.
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34. The reliance of the learned counsel for the respondent no.1 on the
order of this Court dated 14.11.2017 in a batch of petitions including
Tata Steel Limited (supra) and on the order dated 12.03.2021 in Mahesh
Gupta (supra) also cannot be accepted as these orders were passed on the
respondent no.1 itself having withdrawn its orders for the abandonment
of applications passed without due process.
35. The learned senior counsel for the respondent no.2 has also placed
reliance on the judgment of Jagatjit Industries Limited (supra), to
contend that the Registrar of Trade Marks/respondent no. 1 need not give
reasons for condoning the delay in filing of an application seeking
extension of time. The said judgment also has no application to the facts
of the present case, inasmuch as, what stares at the face herein is the lack
of power with the respondent no. 1 to condone the delay itself.
Relief
36. In view of the above, the impugned orders dated 07.01.2020
passed by the learned Senior Examiner of Trade Marks in application
nos. 631248 and 765101 are set aside.
37. The petition is allowed. There shall be no order as to costs.
NAVIN CHAWLA, J.
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