CADILA HEALTHCARE LTD Vs. UNION OF INDIA

JUDGEMENT

(1.) The petitioner herein claims to be a Company registered under the Companies Act, engaged in the business of manufacturing and marketing pharmaceuticals and medicinal preparations since 1995. The petitioner Company claims to be working in the name and style of M/s. Cadila Healthcare Ltd. The petitioner has come with the case that an application for registration under No. 488075 was made by the petitioner's predecessor in-title of the mark of M/s Cadila Laboratories Ltd., Ghodasar, Ahmedabad. This M/s Cadila Laboratories Ltd., was amalgamated with the petitioner Company in terms of the order passed by this Court on 2-5-97 and the petitioner now claims to be the proprietor of the Trade Mark in the aforesaid application for registration. The petitioner alleges that the respondent No. 3 Company namely, M/s Wockhordt Ltd., gave a notice of intention to oppose the registration of the Trade Mark "CONAZOLE" as applied for by the petitioner's predecessor-in-title of the Trade Mark application No. 488075 in Class-5 in respect of pharmaceuticals and medicinal preparations in the office of the Trade Marks Registry, at Ahmedabad, on 26th December 1995. The said notice of opposition was taken on record by intimating the respondent No.3 and the petitioner by registered letter dated 26th December 1995. The Registry served a copy of the notice of opposition to the petitioner under intimation to respondent No.3 vide letter dated 6th November 1996. The petitioner filed the counter statement in the Registry on 13th December 1996 and the Registry served a copy of the said counter statement on respondent No.3 vide its letter dated 7th January 1997. Thereupon the respondent No.3 vide their Attorney's letter dated 23-3-97 forwarded a request on Form No. TM- 56 for extension of time upto 7th April 1997 which was granted by the Registry vide its letter dated 5th May 1997 and ultimately the respondent No.3 vide their Attorney's letter dated 30th April 1997, forwarded the documentary evidence in support of the opposition under Rule 53 (1) of the Trade and Merchandise Marks Rules, 1959 and the same was taken on record as evidence under Rule, 53 (1) of the Rules. Accordingly, the attention of the petitioner was invited to Rule, 54 of the said Rules to file their documentary evidence, if any, in support of the application vide Registry's letter dated 9th May 1997 and the petitioner is yet to file the evidence under Rule 54 of the Rules. It is further the case of the petitioner Company that during this time, it filed a letter dated 29th March 1997 pointing out the provisions of Rule 53 (2) of the Trade and Merchandise Marks Rules, 1959 and it has been alleged that the respondent No.2 did not process the said letter dated 29th March 1997 and therefore, the interlocutory petition dated 29th May 1997 was filed and the same was rejected Vide decision dated 8th October 1997. In the interlocutory petition, the petitioner prayed that the interlocutory petition be allowed and the subject opposition be treated as abandoned under Rule 53 (2) of the Rules. The petitioner is aggrieved against the aforesaid decision dated 8th October 1997 annexed with the petition as Exh. "B" and has sought that the same may be quashed and set aside and a direction has been sought against the respondents to treat the opposition proceedings bearing No. AMD-1042 to the petitioner's application No. 488075 in Class-5 as abandoned.

(2.) With the averments and prayed as aforesaid, the present Special Civil Application had been filed by the petitioner Company before this Court on 20th November 1997. On 21st November 1997, the notice returnable for the date of 16th January 1998 was issued by this Court and further proceedings of the opposition application were stayed till then. The respondent No.3 filed an affidavit-in-reply dated 4th February 1998 traversing the case of the petitioner stating therein that the respondent No.3 had applied for registration of the Trade Mark "CONAZ" under No. 481461 on 23rd November 1987 and 497076 on 1-9-1988 in Class-5 in respect of pharmaceuticals, medicinal and veterinary preparations, all being goods falling in Class-5 and the same was advertised in Journal No. 1024 on page No. 1344 and in Journal No. 1076 on page No. 14 respectively; the registration of the Trade Mark "CONAZ" has been duly renewed and is valid and subsisting. In view of the registration of the said Trade Mark, the statutory rights are vested exclusively in respondent No.3. It has been stated that the respondent No.3 came to know that the petitioner intended to use the deceptively similar Trade Mark only when an advertisement of the said Mark appeared in the Trade Marks Journal No. 1112 dated 1st October 1995 at page 1949 and therefore, this Trade Mark "CONAZOLE" was prepared to be used by the petitioner and therefore, the respondent No.3 immediately initiated the opposition proceedings against the petitioner opposing the registration of the Mark "CONAZOLE". It has also been then stated that the respondent No.3 received the petitioner's counter statement on 10th January 1997 and the respondent No.3 was entitled to file its evidence in support of the opposition within two months of the receipt of the counter statement pursuant to Rule 53 of the Trade and Merchandise Marks Rules, 1959 and therefore, the evidence could be filed on or before 11th March 1997, but the case of the respondent No.3 is that its official handling the Trade Mark matters was on leave and hence there was a delay in filing the evidence in support of the application of the opposition and an application in the appropriate form for extension of time for filing the evidence was filed in the Trade Marks Registry, at Ahmedabad, on 21st March 1997 and in fact the affidavit in support of the opposition was forwarded to the Trade Marks Registry, at Ahmedabad by the respondent No.3 vide its letter dated 30th April 1997. The Registry, vide its letter dated 9th May 1997 acknowledged the receipt of the evidence filed and confirmed having taken the said evidence of respondent No.3 on record. A copy of this letter dated 9th May 1997 has been placed on record as Exh. "A" with this affidavit-in-reply dated 4th February 1998. It is also the case of the respondent No.3 that the Registry Vide its letter dated 9th May 1997 also informed the petitioner that the evidence of the respondent No.3 in support of the opposition had been taken on record and the petitioner was called upon to file its evidence in support of the application. The respondent No.3 has then stated that the petitioner with a view to frustrate the opposition proceedings, filed the interlocutory petition on 26th May 1997 contending that the respondent No.3's opposition be treated as abandoned as evidence was not adduced within the period of two months and in response to this interlocutory petition, the respondent No.3 filed its reply and placed reliance on the decisions of the Delhi High Court and Bombay High Court wherein according to the respondent No.3, it was held that the provisions of Rule 53 (2) dealing with the evidence were directory and not mandatory. It is then stated by the respondent No.3 that the Tribunal by its letter dated 20th August 1997, addressed to the parties, fixed the hearing in respect of the interlocutory petition on 29th September 1997 and after hearing as aforesaid, the respondent No.2 passed an order rejecting the contention of the petitioner and dismissed the interlocutory petition and directed the petitioner to file the evidence under Rule 54 of the Trade and Merchandise Marks Rules. On behalf of the petitioner Company, a rejoinder affidavit dated 13th February 1998 has been filed. During the course of arguments, while making reference to the Trade Marks Journal, it was pointed out that the pharmaceutical preparation, "CONAZ" was advertised before acceptance under Section 20(1) (Proviso), at item Nos. 481, 461 November 23, 1987 - Wochardt Ltd., Poonam Chambers, Dr. A.B.Road, Worli, Bombay 400 038 and again at item No. 497, 076 - September 1, 1988 and, "CONAZOLE" at item No. 488075 - March 28,1988 in Trade Marks Journal No. 1112 - October 1, 1995.

(3.) With the pleadings available on record as aforesaid when the matter came up before the court on 6th May 1998, no one appeared on behalf of the petitioner and on that date, the Court (Coram: S.K.Keshote, J.) after hearing the learned Counsel for respondent No.3, dismissed the Special Civil Application by a detailed order and vacated the ad-interim relief which was operative so far. Against this Judgment and order dated 6th May 1998 whereby the Special Civil Application had been dismissed, the petitioner preferred Letters Patent Appeal No. 786 of 1998 and after hearing both the sides, the Division Bench set aside the order passed by the learned Single Judge and allowed the appeal and directed that the matter will go back to the learned Single Judge and the learned Single Judge will decide the same in accordance with law on its on merits. The reasons and the grounds on which the Letters Patent Appeal was allowed may be seen from the following parts of the Division Bench's order dated 9th September 1998 which are reproduced as under:- "Having heard the learned Counsel for the parties, we are of the opinion that the appeal deserves to be allowed. The learned Single Judge has held that the petition was not maintainable. It is, no doubt, true, as submitted by Mr. Sahani that at various places observations have been made by the learned Single Judge considering the merits of the matter as also the scheme of the Trade and Merchandise Marks Act, 1958 and the Trade and Merchandise Marks Rules, 1959 and in the light of the facts and circumstances, the learned Single Judge observed that in such cases, ordinarily, a party should not invoke Art. 226 of the Constitution of India and the Court may not interfere if such petitions are filed. At the same time, however, it cannot be gainsaid that the learned Single Judge has held the petition to be not maintainable. To that extent, in our opinion, the learned Single Judge was not right. In our judgment, there is a clear distinction between non- tenability and non entertainability of a petition by the Court in exercise of the powers under Art. 226 and/or 227 of the Constitution of India. The former relates to maintainability and goes to the root of the jurisdiction of the Court and a party is prevented at the threshold stating that he cannot enter the doors of the Court. The letter relates to discretion of the Court to exercise extraordinary jurisdiction in favour of a party. When the respondent contends that the Court may not entertain the petition, he concedes to the jurisdiction of the Court to entertain a petition. The Court is also satisfied that it has power to entertain the petition. A Court may, however, refuse to entertain a petition when it is of the view that though it has a power to entertain such petition and also to grant relief, on the facts and in the circumstances of the case, it is not inclined to grant such relief in favour of the petitioner. In our opinion, in the instant case, it cannot be said that the petition was not maintainable. To that extent, therefore, the order passed by the learned Single Judge suffers from legal infirmity and cannot be upheld. Mr. Sahani, drew our attention that looking to various paragraphs, it is clear that even on merits, the learned Single Judge has found substance in the contentions raised on behalf of respondent No.3. We express no opinion on that question as according to us, when the petition is maintainable, it has to be decided considering the facts and circumstances and the merits of the matter. Only on that ground the appeal deserves to be allowed."