SARDAR GURUDAS SINGH BEDI Vs. UNION OF INDIA

JUDGEMENT

(1.) Rule. Heard forthwith. Respondents 4 to 6 though served, have put in no appearance. An application was filed by the Respondent No. 6 for registration of their word mark "volga Ice cream" and label mark "volga ice cream". The advertisement was published under clause 3 in Journal No. 1331 dated 1. 6. 2006 at Page 1080 by the Registrar of trade marks. It was made available to the public on 4th October, 2005. The stipulated period of time for filing the objection in Form TM 44 was on or before 1. 1. 2006. The Form TM 44 dated 3. 1. 2006 was actually presented on 6. 1. 2006. Respondent Nos. 1 to 3, as TM-44 form was not filed within the period of limitation, refused to accept it. It is this refusal according to the petitioner which has given a cause of action to the petitioners to file the present petition. Section 21 of the Trade Marks Act, 1991, hereafter referred to as Act, prescribes, the time period for filing Opposition to registration. The express language used in the section, is three months from the date of advertisement or re-advertisement. The section also contemplates that such application also can be considered by the Registrar within such further period not exceeding one month in aggregate on an application made to the Registrar in prescribed manner. The respondent No. 1 has framed Rules which are known as Trade Mark Rules, 2002 which hereinafter shall be referred to as Rules. We are concerned with Rule 47 (6). Rule 47 (6) literally read enables extension of time for filing application for opposition in Form TM 44 provided the application is made before the expiry of period of three months. The validity of this rule is the subject-matter of this petition.

(2.) With that, a few essential facts: petitioner's case is that he is in the business as manufacturers and merchants inter alia of confectionery chocolates, toffees, sweet meat, flour and preparations made from cereals and other products and is trading in the name and style of Volga Confectionery Works. The merchandise is sold within the country and even exported outside. In or about 1967, the petitioner adopted and commenced the use of trade mark, volga. It is derived from its trading name viz. Volga Confectionery works. According to the petitioner, the petitioner is the proprietor of the name and mark Volga, on account of his original adoption, long, extensive and continuous use in relation to the said goods. The 4th, 5th and 6th respondent applied for registration of the mark consisting of the word Volga' before the second respondent. The goods of the petitioner and the 4th, 5th and 6th respondents are similar in nature, so also is the class of purchasers. Instead of opposing, the application for registration, as the petitioner's application for registration of name and mark was filed on 28th April, 1976 and which was numbered as 313131 and advertised in Trade Mark Journal No. 751 dated 16th September, 1980 at page No. 581 and which was pending registration, respondent No. 2 ordered publication of advertisement of the label mark of the 4th, 5th and 6th respondent Any person desirous of opposing the registration, has to lodge the notice of opposition within the period of three months from the date of advertisement of the application for registration or within such period not exceeding one month in aggregate which the Registrar may grant. The petitioner on 3. 1. 2006 came across the advertisement of the label mark Volga Ice Cream and accordingly on the same day, forwarded an application in form TM 44 seeking extension of one months time to file notice of opposition and requested to accept the same. The same was not accepted as set out in Paragraph 6 of the Petition. As the petitioner's application was not accepted, petitioner on 5th January contacted his trade mark agent and authorised him to apply for extension of one month. The same was forwarded on 6th January. The respondent No. 3 endorsed a remark on the covering letter that the application by the Petitioners is time barred and cannot be taken on record. It is the case of the Petitioners that Rule 47 (6) as framed is ultra vires section 21 of the Act. On behalf of the respondent Nos. 1 to 3 mr. Barve, Assistant Registrar of trade marks has filed an affidavit. We will deal only with the essentials in the said affidavit. It is firstly pointed out that the application for registration by the petitioner in Form TM 44 was treated as abandoned as the same was incomplete having not complied with the procedure of payment of registration fee of Rs. 90/- along with Form TM-11 as per the procedure then existing. The petitioner applied for extension of time for filing the opposition only on 6. 1. 2006. This is after the period contemplated. In these circumstances, the petitioner cannot be said to be a person aggrieved, as his application was time barred. It is admitted that though the mark was published in trade mark Journal dated 1. 6. 2005, it was made available to members of public only on 4. 10. 2005. Subsequent thereto, respondent Nos. 1 to 3 have registered the mark of respondent No. 6. Based on these facts, the issues in controversy can now be decided.

(3.) Considering what has been set out, the real controversy which is required to be answered is the scope of Rule 47 (6). The issue therefore, to be answered now be formulated as under: "is Rule 47 (6) of the Rules, ultra vires section 21 of the Act of 1999 -