KANTILAL TULSIDAS JOBANPUTRA Vs. REGISTRAR OF TRADE MARKS

JUDGEMENT

(1.) THESE two appeals are preferred under sub-section (2) of section 109 of the Trade and Merchandise Marks Act, 1958, and can be conveniently disposed of by a common judgment as the controversy in both the appeals arise out of the refusal of the Registrar to grant extension of time for filing evidence in support of the opposition lodged by the petitioner for registration of a mark. It is necessary to set out a few facts to appreciate the grievance of the petitioner in both the proceedings. The petitioner and Chandulal Tulsidas Jobanputra and Manilal Tribhuvan Jobanputra were trading since the year 1957 in the name of Popular Pen & Clip Industries. On August 10, 1961, the Trade Mark 'REKHA' was registered in the name of the three partners in relation to the goods included in class 16. The partners were carrying on business in various goods including pens, ball-pens, clips, nibs and parts thereof. Chandulal Tulsidas Jobanputra retired from the partnership concern on December 7, 1964 and on his retirement the remaining two partners continued the partnership by entering into a fresh agreement dated December 8, 1964. The two partners by a Deed of Dissolution dated February 10, 1972 dissolved the partnership and the petitioner Kantilal Tulsidas became the sole proprietor of the business. The Trade Mark 'REKHA' was renewed by the petitioner for a period of seven years with effect from August 10, 1975. The respondent No. 2 Lion Pencils Pvt. Ltd. applied for registration of the trade mark 'REKHA' on August 7, 1973 by filing an application before the Registrar of Trade Marks. The respondent No. 2 sought the registration of the mark in respect of pencils including crayon pencils in class 16. The Registrar of Trade Marks informed the petitioner by letter dated February 24, 1975 about the application filed by the respondent No. 2. On August 12, 1976 the petitioner addressed a letter to respondent No. 2 protesting against the proposed registration of the mark on the ground that he is the registered holder of the identical mark. On September 3, 1976 respondent No. 2 replied to the letter sent by the petitioner and asserted his right to get the mark registered. The Registrar of Trade Marks, after consideration and perusal of the application filed by respondent No. 2 ordered that the application be advertised in the Trade Journal, and accordingly, on July 16, 1976, the application was advertised. On November 16, 1976 within the period of limitation, the petitioner lodged his notice of opposition. Thereafter on December 4, 1976, the respondent No. 2 filed a counter statement in which a preliminary objection was raised as to the maintainability of the opposition on the ground that the mark 'REKHA' was registered in the name of three partners and the petitioner had no right to claim exclusive ownership of the mark. The Registrar forwarded a copy of the counter statement alongwith a covering letter dated December 24, 1976 to the petitioner. By the covering letter, the attention of the petitioner was invited to Rule 53 of the Trade and Merchandise Marks Rules which provides that evidence in support of the opposition shall be filed within a period of two months from the date of service of the copy of the counter statement by the Registrar and on failure to take action within time, the opposition would be deemed to have been abandoned. The petitioner filed an application on February 17, 1977, for effecting change and claimed that in view of the dissolution of the partnership the registration of the mark should be entered exclusively in the name of the petitioner. The application came to be granted on August 6, 1977. In the meanwhile on March 23, 1977, the Registrar passed an order under sub-rule (2) of Rule 53 directing that the opposition be deemed to have been abandoned as the petitioner has failed to file evidence in support of the opposition within the stipulated time. The order was communicated to the petitioner on April 9, 1977 under a covering letter dated April 6, 1977. The order passed by the Registrar is under challenge in Miscellaneous Petition No. 926 of 1977 filed in this court on July 12, 1977. The petitioner, before filing Miscellaneous Petition No. 926 of 1977 is this court, filed an application for review under rule 115 on April 18, 1977 before the Registrar requesting that the earlier order dated March 28, 1977 should be reconsidered. The petitioner also filed an application seeking extension of time of filing of evidence. The review application and the application for extension set out in detail the reasons for not filing the evidence within time. It is claimed that the evidence was not filed within time because the petitioner was under an impression that unless the change is effected in the Register in his favour it would not be possible for him to succeed in the opposition. The review application was heard on July 5, 1977 and came to be rejected by an order dated July 7, 1977. The order was communicated to the petitioner on July 23, 1977. The Registrar while rejecting the review application, came to the conclusion that the earlier order was self-operating and there is not discretion left with the Registrar when the application for extension filed beyond the expiry of two months. The Registrar held that even assuming that time can be extended even after the expiry of the period the petitioner has made out no case for exercise of the discretion and on the contrary the petitioner is guilty of serious laches. The order passed on review application is challenged in Miscellaneous Petition No. 1511 of 1977 filed under sub-section (2) of section 109 of the Act. The petition was filed in this court on October 20, 1977. As both the proceedings arise out of a refusal to grant time, they are heard together and disposed of by a common judgment. Shri Tulzapurkar, the learned counsel appearing in support of the petitioners, submitted that the Registrar was in error in assuming that the period of two months cannot be extended in case the application for extension of time is not filed before the expiry of the period. The learned counsel submitted that provisions of rule 53 are clearly directory, the rule being a procedural one and the Registrar was in error in treating the rule as mandatory. The learned counsel further submitted that section 101 of the Act enables the Registrar to extend the time in cases where the period is not fixed by the provisions of the Act itself. Shri Tulzapurkar submitted that looking to the facts of the present case, the Registrar was clearly in error in not exercising the discretion in favour of the petitioner and extending time for filing evidence in support of the opposition. Shri Sethna, the learned counsel appearing on behalf of the Registrar, on the other hand contended that the appeal preferred against the original order has become infructuous because the earlier order merges in the order passed on the review application. Shri Sethna submits that the provision of Rule 53 are mandatory and the Registrar is left with no option but to declare that the opposition is deemed to have been abandoned in cases where the application for extension of time to file evidence is not made within two months. In view of these rival contentions, the question which requires determination in these two petitions is whether the provisions of Rule 53 are mandatory or merely directory and where the Registar was right in refusing to extend the time on the facts and circumstances of this case. Before adverting to the contentions urged by the counsel in support of their claims, it is desirable to have a look at the provisions of the Act for registration of a trade mark. Chapter III relates to procedure for and duration of registration and section 18 requires a person desirous of registering a trade mark to apply in writing to the Registrar in the prescribed manner. On presentation of such application, the Registrar is required to accept the same and direct that it should be advertised. Before the Registrar directs advertisement of the application, a preliminary inquiry is held to determine whether the application is properly presented and whether there is any bar to register the mark. Section 21 of the Act enables any person to give notice in writing in the prescribed manner to the Registrar of opposition to the registration. Such notice of opposition is to be given within three months from the date of advertisement of the application, but the Registrar is given power to extend the period by not more than one month. Sub-section (2) of section 21 provides that the Registrar shall serve a copy of the notice of opposition on the applicant, and within two months from the said date, the applicant shall send to the Registrar a counter- statement of the grounds on which he relies for his application. The sub-section (2) further provides that in case such counter-statement is not filed then the application shall be deemed to have been abandoned by the applicant. Sub-section (4) of section 21 requires the applicant and the opponent to submit evidence upon which they rely in support of their claim in the prescribed manner and within prescribed time to the Registrar. Section 101 enables the Registrar, on application being made to him, to extend the time for doing any act, not being a time expressly provided in the Act. The Registrar can extend the time even if the time specified has expired provided the Registrar is satisfied that there is sufficient cause. Section 133 enables the Central Government to make rules to carry out the purposes of the Act, and in pursuance of the powers conferred by this section. Rules have been published by the Central Government in the Gazette. Rule 51 onwards refers to the procedure for opposing the registration of a trade mark. Rule 51 provides for filing of a notice of opposition, while Rule 52 deals with the filing of a counter statement. Rule 53 requires to be quoted in detail as the main argument in these appeals centres round this Rule.

(2.) IT is hardly required to be stated that the mark of respondent No. 2 which has gone on the Register, should be removed and the inquiry should be held afresh to determine whether such mark should be registered or not. In the circumstances of the case, there will be no order as to costs.