Intellectual Property Appellate Board
Merck Kgaa, Formerly Known As E. Merck vs The Registrar Of Trade Marks, Trade ... on 19 March, 2008
ORDER
Syed Obaidur Rahaman, Technical Member
1. This is an appeal under Section 91 of the Trade Marks Act, 1999 against the order dated 19.06.2006 passed by the Assistant Registrar of Trade marks, Ahmedabad in Opposition No. AMD-62103 to application No. 980737 in Class 5.
2. The facts of the case is that the appellant is a company duly incorporated under the law of Germany. The appellant is an old, well known, reputed and established company since over the past 150 years engaged in the manufacture and marketing of a wide range of pharmaceutical and medicinal preparations. The appellant's various pharmaceuticals and medicinal preparations are manufactured and sold throughout the world under distinctive trade marks. Owing to their superior quality, reliability and the extensive publicity/promotion, the appellant's pharmaceutical and medicinal preparations and/or the trademarks under which they are sold have become extremely popular and are very well known amongst the members of the trade, medical fraternity and all general public throughout the world including India. As a consequence the appellant's pharmaceutical and medicinal preparations also generate substantial sales/revenues for the appellant. The appellant has a subsidiary Indian company under the name Merck Limited and sell its product under its various trade marks directly or through its Indian subsidiary. The appellant is the proprietor and the earlier applicant in India of the trade mark 'CANDISTAT' under trade mark application No. 622787 dated 22.03.1994 in Class 5 in respect of pharmaceutical and medicinal preparations. The said trade mark has been in use in India by the appellant through its Indian subsidiary. The pharmaceutical and medicinal preparations manufactured and sold under the trade mark 'CANDISTAT' by the appellant are used to cure Onychomycosis - troublesome fungal nail infection, which may present clinically in various forms. The sales of the appellant's under the trade mark 'CANDISTAT' are continuous and substantial. In the year 1998, the sales were Rs. 2.40 million which rose to about Rs. 14.40 million in the year 2003. Such humongous growth in a span of five years explicitly substantiates that the pharmaceutical and medicinal preparations of the appellant manufactured and sold under the trade mark 'CANDISTAT' are of high quality and most reliable. By virtue of extensive, continuous and uninterrupted use the trade mark 'CANDISTAT' has become well known and has acquired tremendous goodwill and reputation in the course of trade.
3. The appellant opposed the impugned mark 'CANDITAS' vide Notice of Opposition dated 09.10.2002. A counter statement dated 14.05.03 was filed by the respondent No. 2 and which was served upon the applicant's erstwhile attorneys on or about 08.10.2003. The appellant's erstwhile attorney filed a request on 22.12.03 for seeking extension of time from 08.12.03 to 08.01.04 to file evidence in support of the Notice of Opposition. Thereafter, the appellant's erstwhile attorneys vide their letter dated 14.01.04 filed further request for extension of time from 08.01.04 to 08.02.04 to file the evidence in support of Notice of Opposition along with an interlocutory petition praying that the accompanying affidavits of the appellant along with Annexure A and B should be taken on record as evidence in support of opposition under Rule 53 of the Trade and Merchandise Marks Rules, 1959 (in short old Rules) and under Rule 50 of the Trade Marks Rules, 2002 (in short new Rules), and the delay in filing the evidence in support of opposition be condoned, as the evidence filed by the appellant is absolutely necessary for the determination of issues between the parties. There is a delay of only six days in filing the evidence in support of opposition as the appellant had been collecting necessary documentary evidence and information from various sources to be included in the affidavit and the process of inquiry, correspondence, collection, sorting and collation of the relevant evidence consumed considerable time in excess of the prescribed time. The respondent No. 2 filed his evidence in support of his application vide letter dated 18.03.04 and further requested that it may be taken on record and to proceed further with the matter. Apparently the respondent No. 2 has no objection in allowing the appellant's interlocutory petition dt.14.01.04 and admit the affidavit filed as evidence in support of notice of opposition under old Rule 53 and now read as Rule 53 of the old Rules and Rule 50 of the new Rules.
4. Thereafter, the Trade Marks Registry, Ahmedabad appointed hearing of the interlocutory petition on 15.07.04. Vide letters dated 9th and 10th July, 2004 advocate for appellant filed the written submission for hearing scheduled for 15.07.04. The hearing scheduled for 15.07.04 was adjourned due to administrative reasons. Next hearing was scheduled for 27.08.04. Vide letter dated 20.08.04 the appellant filed their written submission for hearing scheduled on 27.08.04. The interlocutory petition dated 14.01.04 was, however, not allowed and consequently the evidence in support of notice of opposition as sought to be filed under old Rule 53 of the old Rules (Rule 50 of the new Rules) could not be taken on record and the outcome of such hearing was recorded by respondent No. 1 by way of order dated 19.06.2006 and which is the subject matter of present appeal.
5. The respondent No. 2 had filed counter statement in the appeal and submits that the appeal against the order dated 19.06.2006 passed by the learned Assistant Registrar of Trade Marks is misconceived and under misinterpretation of law and facts. He further submits that the appeal preferred by the appellant against the order dated 19.06.2006 is not filed within limitation and therefore, deserve to be dismissed. By their own statement made in the present appeal in paragraph No. 3, the appellant has mentioned that the impugned order dated 19.06.2006 was received by the attorney of the appellant on 28.06.2006. Section 91(1) lays down that the appeal against the order of the Registrar may be preferred before the Appellate Board within three months from the date on which the order or decision sought to be appealed is communicated to the person preferring the appeal. By their own admission, the order has been communicated to and received by the appellant's attorney on 18.06.2006 and hence the appeal should have been preferred and filed within three months i.e. before 17.04.2006. It is submitted that the present appeal dated 22.09.06 is not filed within the limitation and therefore deserve to be dismissed. It is further submitted that respondent No. 2 is engaged in the business of manufacturing and marketing medicinal and pharmaceutical products included in Class 5. He further submits that to distinguish various products manufactured by the respondent company from the products of other manufacturers various trade marks have been adopted and used in respect of its product. He further submits that one such product is developed by the respondent company for treatment of skin disease. He further submitted that having considered the written submissions of the appellant/opponents and their manner of approach in taking the registration proceeding very casually and coming before the Trade Marks Registry with undue delay not supported by cogent reasons, the Assistant Registrar of Trade Marks passed his order dated 19.06.2006 to uphold the law and procedure and thus, not supporting the case of the appellant/opponent which comes in the category of exceptionally hard case where the Trade Marks Registry could not have taken routine decision of allowing the interlocutory petition and taking the evidence and affidavit on record. In the process the Assistant Registrar of Trade Marks has respected the intention of the legislature. He further submitted that the learned Assistant Registrar has observed that appellant/opponent's only stress is that evidence is necessary and it should be taken on record citing observations on various matters and also stating that delay is not much. The Assistant Registrar further observed in his order that observations of the court cannot be misused by taking the filing of evidence so casually. If the opponent realizes the importance of evidence why can't they file within the statutory period instead of holding the rights of applicants by going through long procedures and delaying by way of interlocutory petitions. From the facts it is clear and pertinent to note that the agents of the opponents are handling the registration proceedings in a very casual manner. The condonation request even does not contain the reasons. It is no where stated as to exactly when the counter statement was received, why extension was not filed before the expiry of the two months and how the condonation by way of I.P. with Form TM-56 shall be granted which is not allowable by plain reading of the Rules. There is no reason before Registrar to decide for condonation. Moreover, Registrar has no powers to grant extension if extension is not filed as per the provisions of Rule 50(3) and what is disallowed by specific provision cannot be made to be allowed by way of interlocutory petitions. The Assistant Registrar further observed that the time barred evidence in support opposition cannot be taken on record. When the opponents evidence is deemed to be having not been filed opposition is deemed to have been abandoned per Rule 50(2) of the new Rules.
6. The learned Counsel for the appellant submitted that the Registrar has powers to grant leave to file further evidence under the provisions of Section 131 of the Act. Reliance is placed on the recent order passed by this Appellate Board in 2005 (30) PTC 444 (IPAB) Asian Paints v. Registrar of Trade Marks in which this Appellate Board has observed as under:
It is true that Rule 50 in its new incarnation has undergone chances 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 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 instead on the filing of the evidence by the respondent so that by putting his reliance there upon 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.
Reliance was also placed on 2000 PTC 24 (FB) Hastimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Anr. 2006 (32) PTC 287 (IPAB) Hindustan Lever Ltd. v. Surinder Corporation and Anr. He further relied upon 2006 (32) PTC 717 (IPAB) Tata Motors Limited v. Cavincare Pvt. Ltd. and Ors. wherein this Appellate Board set aside the order of the Assistant Registrar of Trade Marks. The matter was remitted back to the Trade Marks Registry for disposal in accordance with law by receiving the evidence in opposition and if necessary by granting time to the first respondent for filing any reply. For the delay on the part of the appellant, the respondent can be compensated by way of cost of Rs. 2500/-.
7. On the other hand, the respondent relied upon 207 (35) ITC 388 (Del.) Surinder Corporation, U.S.A., v. Hindustan Lever Ltd., wherein it was held as under:
16. It is, therefore, quite clear that the answer to question No. 1 is that the Registrar does not have the power to extend time for filing of the evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under Rule 50(1) of the Trade Marks Rules, 2002 and that the answer to question No. 2 is that the non-filing of the evidence affidavit within the prescribed time would by itself lead to the conclusion that the opposition has been abandoned.
17. Lastly, I would like to observe that the Intellectual Property Appellate Board in arriving at the conclusion that it did was under the impression that the Registrar had discretion in the matter and was exercising a discretionary power. This premise is not correct. The provisions of Rule 50(2) are mandatory and the time prescribed, and the Registrar has no discretion. If the evidence affidavit has not been filed within the time prescribed, the opposition would have to be deemed to have been abandoned. The Registrar has also no discretion in extending the time beyond the maxim period one month prescribed under Rule 50(1). Therefore, the impugned order passed by the Intellectual Property Appellate Board on 11.03.2005 is set aside and the order passed by the Assistant Registrar dated 20.02.2004 is upheld.
Reliance was also placed on 1991 (11) PTC 1(SC) Wander Ltd. and Anr. v. Antox India (P) Ltd.
8. Section 131 of the Trade Marks Act, 1999 deals with the powers of Registrar for extension of time which is reproduced as under:
131. (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.
In terms of the above section, the Registrar has powers to extend time if he is satisfied and if he thinks fit to extend the time and no appeal shall lie against the order of the Registrar under this section.
9. After going through all the case laws and ruling of different High Courts and the rules and sections, we are of the view that the Registrar has power to extend time according to Section 131 of the Trade Marks Act, 1999 and Rule 105 of new Rules. Since this case is before the Ahmedabad Bench of this Appellate Board, the decision of High Court of Gujarat in Wyeth Holdings Corporation and Anr. v. Controller General of Patents, Designs and Trade Marks 2007 (34) PTC 1 (Guj.) will be binding where the Rule 50(2) has been declared to be directory.
10. In view of the above, we set aside the order dated 19.06.2006 passed by Assistant Registrar of Trade Marks, Ahmedabad in the interest of society which demands that an opportunity be granted to the applicant to adduce his part of evidence. The appeal is allowed and the matter is remitted back to the Assistant Registrar of Trade Marks for disposal in accordance with law by receiving the evidence in opposition and if necessary, by granting time to the respondent No. 2 for filing his reply. For the delay on the part of the appellant, respondent No. 2 can be compensated by way of cost.
11. Accordingly, the appellant is directed to pay a sum of Rs. 2500/- as costs to the respondent No. 2 within two weeks from the date of receipt of this order, failing which the appeal shall stand dismissed. No order as to the costs.