PARAGON RUBBER INDUSTRIES Vs. PRAGATI RUBBER MILLS

JUDGEMENT

(1.) THIS appeal, under section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), is directed against the order dated 25.10.2002 passed by the Deputy Registrar to Trade Marks, New Delhi whereby he dismissed the review petition of the appellant/review petitioner. The Hon'ble High Court of Delhi has in pursuance of the provisions of section 100 of the Trade Marks Act, 1999, transferred the said appeal, being C.M. (M) No. 158 of 2003 on its file, to the Intellectual Property Appellate Board and the Appellate Board renumbered the said appeal as TA/332/2004/TM/DEL.

(2.) THE case of appellant/review petitioner is that it is a registered partnership firm of long standing repute, engaged in the business of manufacturing and marketing vide variety of footwear including rubber chappals, hawai chappals, canvas shoes, soles, parts and fitting thereof for the last about three decades. It is the largest manufacturer of hawai chappals in India under the trade mark PARAGON. The appellant is the registered proprietor of trade mark PARAGON (label) under No. 323057-B dated 15.2.1977 in class 25, PARAGON (word) under No. 445530 dated 15.11.1985 in class 25, PARAGON CUSHION (label) under No. 445532 dated 15.11.1985 in class 25, PARAGON (word) under No. 456383 dated 3.7.1986 in class 25, PARAGON (word) under No. 467905 dated 19.02.1987 in class 01, PARAGON (label) under No. 467907 dated 19.2.1987 in class 01, PARAGON (word) under No. 467908 dated 19.2.1987 in class 07, PARAGON (label) under No. 467911 dated 19.2.1987 in class 17, PARAGON SAFARI (lebel) under No. 503258 dated 2.1.1989 in class 25, PARAGON with device LION (label) under No. 503259-B dated 2.1.1989 in class 25 and PARAGON SAFARI (word) under No. 503260 dated 2.1.1989 in class 25. All the registrations mentioned herein before have been renewed from time to time and are valid, subsisting and conclusive. The appellant by virtue of long and continuous use of the aforesaid registered marks, has the exclusive right to use the same to the exclusion of others. The appellant, owing to a long association with the above mentioned trade marks, coupled with superior quality of goods under each of its trade mark, has built up an unparalleled reputation and goodwill which is synonymous with the appellant and none else. The appellant claims to have extensively promoted and advertised its products under the marks throughout the country over the period of past 27 years.

(3.) AGGRIEVED by the order of abandonment passed by the respondent No. 2, the appellant/review petitioner filed a review petition on Form TM-57 dated 15.2.2002, along with affidavit evidence in the name of its partner with exhibits in support of opposition, on the grounds that the appellant 28.12.2001 once again sought further extension of time for two months from 21.12.2001 to 21.2.2002 to file evidence in support of its opposition and at the time of passing the impugned order the said request ought to have been before the respondent No. 2 but in total disregard to the said request he passed the impugned order. The appellant/review petitioner had made the said extension request accompanying with the requite fee which was paid by the bank to the respondent No. 2, therefore, he should have necessarily acted on the request either allowing or refusing it and communicated the decision to the appellant before passing the impugned order, which he failed to do, and as such the respondent No.2 erred in its action. The appellant/review petitioner was at all times interested in filing the evidence and it was collecting the evidence material, which was filed along with the review petition with request that same may be taken on record. It was submitted that there were several oppositions which were pending in the Registry of Trade Marks wherein the parties sought time, several occasions for months and at times years together, and in such cases the Registrar gave time and further time to the parties, even at occasions when extension of time is not asked for or taken. It was further submitted that the appellant was desirous that its evidence be taken on record and had accordingly been collecting the evidence to prove its case. It did not desire to delay the matter any further, which could be gauged from the fact that it had filed the evidence affidavit with exhibits. Further, its application seeking to condone the delay in filing its evidence was already on the record, to which the respondent No. 2 had erroneously lost sight of and thus there was an error apparent on the face of the record. The appellant/review petitioner after referring the ratio of decisions in the cases reported as (1982-PTC-127), 200 PTC 24 (FB), AIR 1976 SC 1177 and AIR 1987 SC 1353, prayed that the review petition be allowed and the evidence be taken on record under rule 53 of the Rules in the interest of equity and justice. However, after hearing both the parties, the respondent No. 2 disallowed the review petition on 25.10.2002 observing that the repeated identical ground in all the request, for seeking extension of time for more than one year, is obviously no valid reason and in view of the direction of the Full Bench of Delhi High Court in Hastimal Jain's case, there is no error apparent on the face of the record in deeming the opposition to have been abandoned by the appellant/review petitioner Hence, the present appeal.