TORRENT PHARMACEUTICALS LTD. Vs. UCB

JUDGEMENT

(1.) DHARAM Singh, ARTM 1. This order disposes of an Interlocutory petition dated 22.12.2003 filed by the Petitioner/opponent with request for grant of leave for an affidavit of Mr. Allen Norris alongwith evidence either under Rule 50(1) or 53 of the Trade Marks Rules, 2002. The facts of the case in brief are as under:

(2.) ON filing of counter statement by the applicant, a copy thereof was served on the opponent vide official letter dated 18.07.2003 calling upon him to file evidence in support of opposition. But, the opponent did not file evidence within the prescribed/extended time. However, he filed the Interlocutory petition for grant of leave for the said evidence filed after expiry of the extended time and is the subject -matter of hearing held on 1.2.2005, when Mr. Vishnu Mohan Rethnam, Advocate of Remfry and Sagar for the opponent and Mr R.R. Shah, Advocate appeared for the applicant. Mr. Rethnam submitted that a copy of the Counter Statement was served on the opponent vide official letter dated 18.7.2003 inviting his attention to Rule 50(1) to file evidence in support of opposition within the period of two months from the date of receipt thereof; meanwhile, the new Trade Mark Law was implemented with effect from 15.9.2003, which had the provision only for one month extension of time to file evidence in support of opposition. The opponent filed two requests on Form TM -56 for extension of two months time. The first request was allowed and an extension of one month time was granted from 22.10.2003 to 21.11.2003, whereas the second was refused vide official letter dated 4.12.2003. Mr. Rethnam contended that Interlocutory petition was filed on 22.12.2003 within a marginal time after expiry of the extended time. He drew the attention of this tribunal to all the grounds one after another. He referred to para 3 of Interlocutory petition and submitted that the opponents had been collecting necessary documents and information from various sources including collection of relevant material from their office worldwide including India and the process of enquiry, correspondence and collection and sorting of the relevant evidence consumed considerable time. Mr. Rethnam submitted that the process was further delayed for the reason that coordinating officer at the opponent's office was frequently kept changing. He stated that for last two months due to computer virus, the computer hard disc of the opponents attorney was crashed, which resulted into complete loss of data; and this necessitated redrafting of affidavit. The Ld. Advocate contended that since the new trade mark came in force abruptly, it took the opponent's much time to come to terms with the practice and procedure therein, hence, delayed in filing of evidence. He vehemently argued that the evidence filed by way of IP is a quality evidence coupled with reasons pleaded above and there has been no lack of diligence on the part of the opponent; the evidence filed by way of Interlocutory Petition is vital and extremely relevant to these proceedings in all fairness and can be taken on record in exercise of discretion of this tribunal under Section 131 of the Act. He prayed that affidavit of Mr. Allen Norris filed alongwith exhibits be taken on record either under Rule 50(1) or 53 in the interest of natural justice, especially, when the applicant has not filed evidence under Rule 51; it will not prejudice to the applicant's right, as the mark sought to be registered is 'proposed to be used'. He relied on a decision of the Hon'ble High Court of Delhi in C.M.(M) 525/1994, C.M. (M) 137/1994, & CO 8/1992, (2000 PTC 24(FB). Mr. R.R. Shah, Sr. Advocate for the applicant present at hearing strongly protested against the grant of leave for evidence filed in support of opposition submitting that of course; it would certainly and highly prejudice the rights of the applicant, if the said evidence is taken on record. He referred to his letter dated 4.12.2003 and said that he had already vehemently objected to the invitation of the applicant's attention to Rule 51 to file evidence in support of application by the Registrar. He argued that the Ld. Advocate for the opponent admittedly knew that the new Trade Marks Rule had the provisions only for one month's extension of time to file evidence in support of opposition; despite of that he deliberately filed extension for three months, which is contrary to the new provisions of the Trade Mark Law.

(3.) IN the present case, the opponent was served with a copy of counter statement vide official letter dated 18.7.2003 inviting his attention to file evidence in support of opposition under Rule 50(1). But the opponent did not file evidence as required within the prescribed period of two months from the date of receipt of a copy of counter statement. Meanwhile; he sought extension of one month from 22.9.2003 to 21.10.03 by filing a request on Form TM -56 dated 22.9.2003. However, the Trade Marks Act, 1999 was implemented with immediate effect from 15.9.2003. The opponent filed the second request for extension of time for another month on 21.10.2003. Since it was a transitional period of replacement of the Trade Marks Act, the said request was inadvertently, allowed and an extension from 22.10.2003 to 21.11.2003 was wrongly granted and communicated second time to the opponents. However, the opponent's third request for extension from 22.11.2003 to 21.12.2003 was rejected and communicated to the Opponent accordingly vide official letter dated 4.12.2003 and as a result the present IP is filed by the Opponent in the matter.