Intellectual Property Appellate Board
Smt. Sandhya Sharma W/O Satish Sharma vs The Registrar Of Trade Marks, Trade ... on 15 October, 2007
Equivalent citations: MIPR2007(3)462
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 letter of Registrar of Trade Marks dated 11.3.2005 addressed to the respondent No. 2 enclosing therewith a copy of notice of opposition in pursuance of Section 21(1) of the Act. The appellant, along with the appeal, has filed miscellaneous petition Nos. 61/2005 - for stay for registration of trade mark in favour of the respondent No. 2 and early hearing of the appeal, and 62/2005 - for fixing the hearing of the matter at Delhi. During the pendency of the appeal, the appellant has filed yet another miscellaneous petition No. 45/2006 for taking the additional facts on the record, allowing the appeal and directing that application No. 1219400 be rejected by treating the trade mark as non-registrable for the goods mentioned in class-12.
2. In February, 1998, Shri Satish Sharma, the proprietor of the Bharat Auto Products, filed application No. 791190 for registration of trade mark "Auto Brake", in class-12, in respect of Hubs and brake drums for trucks, buses, tractor-trailors and animal driven vehicles, clutch and gear housings, chassis parts, helper brackets, shacks, etc. Subsequently, Bharat Auto Products assigned the trade mark to Bharat Auto and Agro Industries, a proprietorship firm which came into being in 1999. The said application No. 791190 was refused but order with regard to this effect has not been given. However, in response to TM-15 dated 11.11.2005, the Assistant Registrar of Trade Marks, Mumbai, by his letter No./TOP/2002 dated 6.2.2006, informed the grounds of refusal to Shri Prashant Sharma, Advocate as under:
As the mark is "Auto Brake" and the goods are Hubs and brake drums for trucks, buses, tractor-trailors and animal driven vehicles, clutch and gear housings, chassis parts, helper brackets, shacks, etc. The trade mark "Auto Brake" is connected with the goods i.e. which is descriptive to the goods and hence the objection under Section 9(1)(b) of the Trade Marks Act, 1999 is applicable and the mark is refused.
Section 9(1)(b) of the Trade Marks Act, 1999 states that the trade mark which consists exclusively of the mark or indications which may serve in the trade to designate kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of the goods or service shall not be registered.
Thus by applying the above objection of the Trade Marks Act, 1999 the application No. 791190 in class 12 is refused.
3. In July, 2003, Mrs. Chitvan Sharma, trading as Sainath Auto Industries filed application No. 1219400 for registration of trade mark "Autobrake" in class-12, in respect of automobile parts (Brake Drums, Hubs, Clutch, Gear Box, Housing U. J Cross & Chasis Parts for Trucks, Buses and Tractor Trailers) and this application was advertised in the Trade Marks Journal No. 1323 Supplementary (1) dated 5.1.2005 at page 631. The appellant filed notice of opposition No. 186632 to the application for registration. The Registrar of Trade Marks sent a copy of said notice of opposition to the respondent No. 2 for filing counter-statement thereto. Against that letter, the appellant has filed this appeal seeking that the impugned order be quashed, application for registration be dismissed and objection filed by the appellant be allowed.
4. After completion of procedural formalities, the appeal and miscellaneous petitions came up before us for hearing on 18.9.2007 when Shri Prashant Sharma, Advocate appeared for the appellant and Shri H.L. Verma, Advocate appeared for the respondent No. 2. After conclusion of the arguments, permission to file written submission was given to the learned Counsel for the appellant with a condition that a copy of the written submission should be sent to the other side.
5. Learned Counsel for the appellant contended that the mark applied for registration being not registrable under Section 9 of the Act ought to have been dismissed at the outset and ought not to travel to the stages of advertising in the Trade Marks Journal, calling TM-5 and then calling upon the respondent No. 2 to file counter-statement. By mere reading of Sections 9 and 11 will show that the mark is not registrable as it is devoid of any distinctive character, it designates the kind and quality of the goods and the same deceptively and confusingly similar to the mark of the appellant. He further contended that the respondent No. 2 is neither a trading nor a manufacturing/production firm whereas the appellant is using the said trade mark on goods traded or manufactured by it and the appellant is a prior user of the mark and the Registrar has not only yet given any decision on the objection filed under Rules 38, 39, 41, 42 and 44 of the Trade Marks Rules, 2002 read with Section 19 of the Act against the application No. 1219400 but has not yet even sought explanation/clarification from respondent No. 2. The Registrar, without deciding the said application, has allowed the application for registration to travel to the stage of counter-statement. The application for registration of similar mark made by the appellant earlier has been ordered that the mark is not registrable and the said order has attained finality, therefore, same principle has to be applied to the application filed by the respondent No. 2. However, it is beyond the comprehension of the appellant as to why the same yardstick is not adopted in the case of application of the respondent No. 2 which has reached to the counter-statement stage:
6. Learned Counsel for the respondent No. 2 has raised preliminary objection about the maintainability of the appeal by contending that it is filed without any cause of action because on 11.3.2005, the Registrar has not passed any interim or final order in the opposition No. 186632. The Registrar has acted as per requirements of the Act or rules made thereunder. By filing the present appeal the appellant is challenging the well established legal procedure of opposition proceedings and the procedure of registration of trade mark and this Appellate Board has no power and no writ jurisdiction for determining and deciding the legality of the statute. He contended that by filing this appeal the appellant wants to challenge the rejection of his previous application by an order passed in October, 2003 and that any appeal against such order is barred by limitation. The person filing this appeal is not the applicant in the trade mark application No. 791190. He contended that the application No. 791190 was refused at the show cause hearing stage when the applicant failed to show the grounds on which the mark is qualified for registration, etc. as per Sections 9 and 11 of the Act. There is no bar on the registration of the mark 'Auto Brake' as the Registrar in application No. 791190 did not hold the mark not registrable.
7. After having heard the counsel for both sides and after going through the records, the central question arises, around which other issues revolve, is whether the present appeal falls under Sub-section (1) of Section 91 of the Act which provides that any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal. It is clear from the plain reading of the provision that for preferring an appeal under this provision, the person preferring an appeal must be a person aggrieved by an order or decision of the Registrar under that Act. This provision contemplates a situation for preferring an appeal, that is to say, that there must be an order or a decision. We, in the followings paras, would discuss the law propounded by the various courts with regard to the order passed or decision made under the Act and find out whether in the light of the legal propositions the impugned order of the Registrar is an order under the Act.
8. The order or decision against which an appeal is preferred should be such which affects the rights or liabilities of the parties as has been held by the Supreme Court. The Supreme Court has, in the case of Central Bank of India Limited v. Gokal Chand AIR 1965 SC 799, held that an order under the Act means that it is an order which affects the rights and liabilities of the parties. The Hon'ble High Court of Delhi in Ratan and Company v. Assistant Registrar of Trade Marks PTC (Suppl) (1) 635 (Del) had occasion to consider the meaning of the words "from any order or decision of the Registrar under this Act" which occurred in a similar appeal provision [Section 109(2)] of the Trade and Merchandise Marks Act, 1958 which is repealed by the Trade Marks Act, 1999. In that case, Hon'ble Avadh Behari Rohtagi, J, has observed in 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 rights 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 from 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. An order granting extension of time is not of such a nature. It is not such a decision as to give the aggrieved person a right to appeal. It is just a procedural order in aid of proceedings.' An order or decision would include an order, which does not finally decide the rights of parties and would thus cover an order in an interlocutory matter as has been held by the High Court of Rajasthan in the case of Gharib Ram Sharma v. Daulat Ram Kashyap (1994) 80 Com. Cases 267 (Raj). In the case of Aqua Pump Industries and Anr. v. Deputy Registrar of Trade Marks and Anr. PTC (Suppl) (2) 727 (Mad), the appellants had preferred appeals against the communication of the Deputy Registrar of Trade Marks, communicated through the Assistant Examiner of Trade Marks stating that the Review Petition filed by the second respondent has been taken on record by the first respondent. The appellants had also preferred the appeals in respect of the communication of the Deputy Registrar of Trade Marks communicated through Assistant Examiner of Trade Marks, calling upon the appellants to submit their statements in reply to the Review Petition of the respondents, within thirty days. The main issue considered by the High Court was whether the appeal is maintainable, in the absence of any order or decision? The High Court held as under:
An appeal shall lie under Section 109(2) of the Act against the Order passed by the Registrar.
The Registrar's letter calling upon the appellants to file reply would not at all amount to any order or decision and in the absence of the same, the Appeals have to fall to the ground.
Of course, the appellants have got every right to put forth all the contentions raised before this Court, before the Registrar of Trade Marks and they are at liberty to do so before the Registrar of Trade Marks and the same could be met by the respondents also.
As the letter sent by the Registrar of Trade Marks calling upon the appellants to file their statements would not at all amount to any order or decision, the appeals would not lie as against the said letter and in the said view of the matter. The appeals filed by the appellants are not at all maintainable.
9. Sections 18 to 24 of the Act provide for procedure for registration of a trade mark. Any person who claims to be the proprietor of a trade mark may apply to register the mark. Sections 19 and 20 of the Act deal with the withdrawal of acceptance and the advertisement, respectively, and Section 21 of the Act deals with the opposition to registration. In the present case, the application was advertised in the Trade Marks Journal before its acceptance and thus the window for receiving notice of opposition was opened. The appellant filed notice of opposition and the Registrar in pursuance of Section 21(1) of the Act sent a copy of notice of opposition to the respondent No. 2 and pointing out to her that a counter-statement of the grounds on which she rely for her application be filed within two months. Such act of Registrar does not amount to passing any order or making any decision. By sending the impugned letter in pursuance of the provision of the law, the Registrar can not be said to have passed order affecting the rights or liabilities of the parties. The Registrar is required to follow the prescribed procedure for deciding the application and opposition or passing order therein and the Registrar has with a view to achieve that object merely called upon the respondent No. 2 to file counter-statement. An order or decision depends on the facts of each case and even where a decision made or order passed in a case is squarely applicable to another case, such conclusion can be arrived at only after the prescribed procedure therefor is fully complied with. In fact by the impugned letter the respondent No. 2 was given an opportunity by the Registrar to file counter-statement which is just a procedural order in aid of proceedings to enable him to make a judicious decision on the application for registration and the notice of opposition. The appellant has on receipt of endorsement of the letter has rushed to this Appellate Board on a mere misconceived apprehension. The appellant has not pointed out the impugned order or decision, if any, passed by the Registrar. We are, therefore, of the opinion that this appeal is filed without any cause of action and is not maintainable under Sub-section (1) of Section 91 of the Act. In view of this opinion, we do not consider it necessary to go into the merits or otherwise of the appeal.
10. The appeal is dismissed as not maintainable. Since the appeal is dismissed, Miscellaneous Petition Nos. 61 & 62/2005 and 45/2006 do not survive. However, there shall be no order as to costs.