Delhi High Court
Mr. Manish Agarwal vs The Regisrar Of Trade Marks And ... on 7 July, 2022
$~9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 7th July, 2022
+ W.P.(C)-IPD 10/2021 & CM APPL. 12180/2020
MR. MANISH AGARWAL ..... Petitioner
Through: Mr. Deepankar Mishra, Advocate (M-
9716746496)
versus
THE REGISRAR OF TRADE MARKS AND ORS...... Respondents
Through: Mr. Prakhar Singh & Mr. Mohan
Vidhani, Advocates for R-2.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. The present writ petition arises out of the impugned orders dated 26th
February, 2020, passed by the Registrar of Trade Marks, New
Delhi/Respondent No.1 (hereinafter "Respondent No.1"), whereby it
admitted the evidence in support of oppositions filed by M/s APJ Satya
Knowledge LLP/Respondent No.2/Opponent (hereinafter "Opponent"). The
Petitioner/Applicant - Mr. Manish Agarwal (hereinafter "Applicant") filed
four applications bearing numbers 2493063, 2493064, 2493065 and
2493069 in Classes 16, 35, 36 and 35 respectively, for the trademarks
'SATYA GROUP' in black and white, and in colour logo form. The said
applications were filed on 11th March, 2013 with the Trademark Registry,
Delhi. The said marks are represented as under:
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2. The marks were advertised in Trademark Journal No.1850 dated 21st
May, 2018. Oppositions were filed by Opponent, through its trademark
attorney based in Mumbai. The said oppositions were served upon the
Applicant who filed his counter statements under Rule 44 of the Trademark
Rules, 2017 (hereinafter "TM Rules"). According to the Applicant, the said
counter statements were filed on 19th January, 2019.
3. The evidence in support of the oppositions under Rule 45 of the TM
Rules was to be filed within two months from the time of service of the
counter statements upon the Opponent. The copies of the evidence and the
exhibits had to be delivered to the Applicant and the Registrar had to be
intimated in writing. However, the counter statement is stated to have been
served upon Opponent on 7th June, 2019 and as per the Applicant, the
evidence ought to have been filed by 7th August, 2019, which was not done.
4. The Opponent, however, claims that it filed the evidence in support of
the oppositions within time. It was filed electronically on 5th August, 2019
and a receipt for filing was generated. However, it is conceded by the
Opponent that a wrong title had been given to the evidence which was filed
on their behalf, i.e., though the documents filed were evidence to the
oppositions under Rule 45, they had wrongly been titled in the cover letter
as being filed under Rule 47. A hard copy was then received in the Registry
on 13th August, 2019.
5. The Applicant however, disputes this position, as according to him,
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the evidence was neither filed nor served upon him, which is a mandatory
stipulation under Rule 45.
6. Assuming that the oppositions would have been abandoned, the
Applicant did not file any evidence in support of its applications under Rule
46 of the TM Rules. It is the case of the Applicant that upon receiving a
show cause notice dated 24th January, 2020, on 1st February, 2020, the
Applicant came to know of the evidence in support of oppositions being
filed. The said notice stated that the Applicant's applications were liable to
be treated as abandoned, as the Opponent had filed the evidence in support
of oppositions and the Applicant had not filed his evidence in support of
applications.
7. The Applicant thereafter, participated without prejudice, in a hearing
before Respondent No.1, where the Opponent was directed to supply the
copies of the evidence in support of oppositions to the Applicant within 1
week. A copy of the said order was also not available at the time of filing of
the present petition. Pursuant to this order, the Opponent is stated to have
refiled its evidence in support of oppositions by way of letters dated 28th
February, 2020.
8. It is this order of Respondent No.1 and the actions of the Opponent,
that are impugned in the present writ petition.
9. The present writ petition was first listed before the Court on 10th
June, 2020, on which date, after brief submissions being made on behalf of
the parties, Respondent No.1 was directed to file an affidavit confirming the
date of filing of evidence in support of oppositions. Respondent No.1 was
also directed to upload the impugned order. The directions issued on the said
date read as under:
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"4. The Court has perused the records. It seems there
is some mis-match as to the actual documents, which
were filed on 5th August, 2019 as the Petitioner states
that only a Power of Attorney was filed, but
Respondent No. 2 submits that the evidence was filed
on the said date.
5. In view of this position, the Registrar of Trademarks
is directed to file an affidavit giving the exact details of
the dates when the evidence in support of the
oppositions was filed in respect of all four of the
Petitioner's trademark applications. The Registrar of
Trademarks shall produce on record a certificate from
the IT Department as to what was the exact document
filed on 5th August, 2019. Let the affidavit be filed
within four weeks.
6. It is the further case of the Petitioner that on 26th
February, 2020 when the matter was taken up before
the Registrar of Trademarks, an order was passed
directing the Respondent No. 2 to supply copies of the
evidence to the Petitioner again. It is submitted that the
said order has not been uploaded by the Registrar of
Trademarks. The Registrar of Trademark is directed to
upload the order dated 26th February, 2020 within a
week."
10. The Office of the Registrar of Trademarks, thereafter, filed an
affidavit dated 13th August, 2020, of Mr. Vikram Singh, Examiner of
Trademarks and Legal Section In-charge, Trademarks, annexing therewith
certain documents. The said affidavit stated that the proceedings on 26th
February, 2020 were handwritten and counter signed by advocates for both
parties. The said affidavit also stated that the impugned order was uploaded
on 11th June, 2020. On the next date before the Court, i.e., 6th October,
2020, after perusing the affidavit filed on behalf of Respondent No.1, it was
found that the same was not satisfactory and, further directions were issued
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to Respondent No.1 to answer specifically the following questions:
"9. It is noticed that even as on today, the evidence
purported to have been filed under Rule 45/Rule 47 by
the Respondent/Opponent is not available online on the
TMR's website. This Court is of the opinion that the
affidavit of the Registrar of Trade Marks is clearly not
in compliance with the order passed by this Court on
10th June, 2020. It is the duty of the Registrar of Trade
Marks to comply with the order both in letter and in
spirit. The dates on which the exact evidence was filed
by the opponent had to be clarified in the affidavit,
which the affidavit clearly does not. Under these
circumstances, it is deemed appropriate to direct that
the affidavit shall be filed by Shri. Hoshiar Singh, the
Head of Trademark Registry, Delhi office, after
enquiring into the matter fully, within a period of two
weeks giving the following specific details:
a) Whether any documents were uploaded on
behalf of the Opponent in all four oppositions
under Rule 45, and if so on which date and how
many pages were there?
b) Whether any documents were uploaded on
behalf of the Opponent under Rule 47 in all
four oppositions, and if so on which date and
how many pages were there?
c) Whether the evidence by way of affidavit of
Mrs. Kalpana Umakanth running into 12 pages
in all the four opposition proceedings was
uploaded online on 5th August, 2019 or not and
if so what is the proof thereof?
d) Reason, if any, as to why the Certificate
issued by Mr. Chandrakant S. Uchil, Assistant
Registrar of Trade Marks & GI, Mumbai
working as System Administrator describes the
number of pages uploaded on 5th August, 2019
as being one page each and not the 12 pages
which are annexed with the said Certificate.
e) The provision of law under which purported
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online filing on 5th August, 2019 has been
considered by the Trade Marks Registry."
11. Pursuant to the said order, the affidavit dated 3rd November, 2020 was
filed on behalf of Respondent No.1 by Mr. Hoshiar Singh, Head of the
Trademark Registry. As per the said affidavit, the answers to the queries
were that the evidence was filed online under Rule 47 along with a
document titled Annexure 1 on 5th August, 2019. Upon scrutiny by the
Registry, it is stated that the title of the Annexure-1 was noticed as being
'Evidence in support of oppositions under Rule 45' and the Registry
accordingly uploaded the evidence under Rule 45 and treated the same as
evidence under Rule 45. It has been stated that the TM Rules are silent on
dealing with documents filed under incorrect headings. Physical copies of
the evidence along with the said documents, were also received in the
Trademark Registry, Delhi on 13th August, 2019. According to the
Trademark Registry, the evidence filed contains 14 pages as uploaded,
however, the physical copy which was received contains 66 pages. The
remaining queries were also answered as under:
"The Answer to query A:
It is stated that the opponent initially filed evidence
online in support of oppositions by way of affidavit
under rule 45 on 05/08/2019 and submitted physical
copies of the evidence in support of opposition by way
of affidavit under rule 45 along with several documents
on counter/ by post which was received by office on
13/08/2019. The documents received by office on
13/08/2019 were uploaded by the office as evidence
affidavit under rule 45 (TOP) and annexure 1. The
documents uploaded under rule 45 contained 14 pages
including 1 page of covering letter, 1 page of stamp
paper and 12 pages of affidavit. The document
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uploaded against annexure 1 under rule 45 contained
66 pages for application no. 2493064, 2493065,
2493069 and 65 pages for application no. 2493063....
Answer to query B:
It is stated that the documents were uploaded by the
opponent online on 05/08/2019 against the head
Evidence affidavit under rule 47 (TOP) containing 3
pages namely, 1 page covering letter and 2 pages of
power of attorney. The documents uploaded under
annexure 1 under rule 47 contained 13 pages including
1 page stamp paper and 12 pages of affidavit. In fact,
the documents which were uploaded online by the
opponent as evidence affidavit under rule 47 (TOP)
which contained 3 pages namely, covering letter and
power of attorney. Document uploaded against
annexure 1 under rule 47 contained 13 pages, one
page of stamp paper and 12 pages of affidavit under
rule 45.
It is stated that the evidence by way of affidavit of Mrs.
Kalpana Umakanth running in to 12 pages excluding
stamp paper in all the four opposition proceedings
were uploaded online on 5th August2019. The certified
copies of the same were submitted with the earlier
affidavit filed by the Registry. In the said affidavit of
Mr. Chandrakant S Uchil which shows the number of
pages to be one (1), may be read as one document
containing 12 pages. The affidavit of Mr. Chandrakant
S Uchil explaining the issue regarding the number of
pages is Annexure RA -1.
Answer to query D:
It is stated that the documents uploaded on 05/08/2019
was uploaded as evidence affidavit under rule 47 and
annexure 1 under rule 47 contained one document
each. The document uploaded under rule 47 is one
document containing 3 pages namely one page
covering letter and 2 pages of power of attorney. The
documents uploaded under annexure 1 rule 47 is one
document containing 13 pages namely, one page stamp
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paper and 12 pages of affidavit. The explanation
regarding the pages has been answered in query C as .
Annexure RA -1.
Answer to query E:
It is stated that; online filing on 5th August, 2019 has
been considered by the Trade Marks Registry as per
rule 14 of the Trade Marks Rules, 2017 which reads as
under:
"Rule 14: Service of documents. - (1) All applications,
notices, statements, papers having representations
affixed thereto, or other documents authorised or
required by the Act or the rules made there under,
served, left or sent, at or to the Trade marks Registry
or with or to the Registrar or any other person may be
delivered by hand or sent through the post by a prepaid
letter or may be submitted electronically in the manner
as laid down by the Registrar.
(2) An application or arty document so sent shall be
deemed to have been made, served, left or sent at the
time when the letter containing the same would be
delivered In the ordinary course of post.
(3) In proving such sending, it shall be sufficient to
prove that the letter was properly addressed and put
into the post.
(4) After the filing of an application in the Trade
Marks Registry, any person while making any
correspondence relating thereto shall furnish the
following particulars, namely;-
(a) the application number or numbers, if any;
(b) the date and place of filing;
(c) the appropriate class or classes, as the case may
be, in relation to which the application is filed;
(d) an address for communication; and
(e) the concerned agent's code, if any, and the
concerned Proprietor's code, if allotted.
(5) The Registrar after informing the public In the
Journal may accept applications, notices, statements,
or other documents online through the gateway
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provided for this purpose, or in case of documents not
requiring the payment of a fee, through e-mail to a
designated email address for the purpose."
On 05/08/2019 the Respondent No.2 filed by way of e-
filing 'Evidence under Rule 47'. However when the
documents which were filed on 05/08/2019 under the
head Evidence under Rule 47 were scrutinized, it was
revealed that in actual they were Power of attorney
under the head evidence under rule 47 and annexure
under rule 47 contained the "Evidence in support of
evidence under Rule 45" of Trade Marks Rules
201T.The first page of the documents so filed starts
with the heading "EVIDENCE BY WAY OF
AFFIDAVIT IN SUPPORT OF OPPOSITION U/S
21(4); RULE 4S"in all the four matters. That in order
to decide the matter on merits and in good faith and
bona fide, without any intention of raising a technical
error and forcing the party to run from pillar to post,
Trade Marks Registry took the documents on record.
Thereafter on 13/08/2019 the Respondent No.2 again
filed physically /By- Post, Evidence in support of
opposition under rule 45 of the Trade Marks Rules
2017, in all the four matters.
It is humbly stated that the rules and regulations do not
expressly provide for dealing with documents filed
under a wrong/ different head as in the present case.
The Registry, exercises due care and caution and upon
scrutiny, in the event that it finds that there is an error,
as in the present case, if the documents therein are
descriptive enough the Registry takes them on record
under the appropriate head."
12. This Court has heard the matter from time to time.
13. On the one hand, the stand of the Applicant is that there is a clear
doubt as to whether the evidence was filed within time. Mr. Siddhant Goel,
ld. Counsel for the Applicant submits that the evidence was not even served
upon the Applicant. To support this contention, he makes the following
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submissions:
(i) Section 21(4) of the Trademarks Act, 1999 (hereinafter "Trademarks
Act") specifically provides that the evidence has to be filed in the
prescribed manner and within the prescribed time. The same should
be read along with Rule 45 (1) of the TM Rules, to interpret the
prescribed manner and time as 2 months, with service to the Applicant
and Registry.
(ii) Since the period for filing of the evidence is mandatory and is not
condonable, the oppositions should be taken to have been abandoned.
The same is the usual practice of the Trademark Registry, as per
various orders in other matters.
(iii) Vehement reliance is placed on Rule 112 of the TM Rules as per
which if there is any detriment that would be caused to any party, the
Registrar cannot exercise the discretion even to obviate the
irregularities in any procedure.
(iv) Rule 14 (3) of the TM Rules provides the manner in which service is
to be effected and as per this provision, if the letter was put in post, it
is sufficient. In this case, the evidence was put in post for being
delivered to the Applicant only on 9th August, 2019, after the time of
2 months had expired. Thus, the deeming provision has to be
triggered.
(v) In fact, the portal of the IPO does not permit or accept online filing
once the time for filing has expired and that explains why the physical
filing was done by the Opponent.
(vi) Reliance is placed upon Surinder Corporation v. Hindustan Level
Limited & Anr., 2007 (35) PTC 388 (Del), to submit that the
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Registrar has no discretion to even condone the delay. Though, the
said judgment was under the old Rule 50 of the Trade Marks Rules,
2002, wherein 2+1 (i.e., a maximum period of 3) months was the
period for filing of evidence in support of oppositions, the ld. Single
Judge had held clearly that there is no discretion of the Registrar to
extend the period for filing the same.
(vii) Since, there is no discretion vested in the Registrar to condone the
delay, following similar provisions under the Patents Act, 1970, the
delay cannot be condoned. Reliance is placed on Nippon Steel
Corporation v. Union of India [W.P. (C) 801 of 2011, decided on 8th
February 2011].
14. It was, thus, submitted on behalf of the Applicant that the oppositions
ought to be deemed to have been abandoned, as per Section 23 (1) of the
Trademarks Act, and the registration certificates ought to be issued in favour
of the Applicants.
15. On the other hand, Mr. Vidhani, and (Late) Mr. Amarjit Singh, ld.
Counsels on behalf of Opponent, made the following submissions:
(i) Reliance is placed upon the online filing and mere inadvertent error in
the title given to the document which was filed by the Opponent, to
submit that evidence under Rule 45 was filed in time.
(ii) The online filing happened on 5th August, 2019. The physical filing,
however, happened on 13th August, 2019, though, the same is stated
to have been dispatched in time. The filing on 5th August, 2019 is also
supported by the report provided by Respondent No.1.
(iii) Since there is a limit of 5 MB on the document to be uploaded on the
Trademark Registry website, the Opponent had no choice to dispatch
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the documents physically, which were received on 13th August, 2019.
(iv) In any event, under Rule 45 (1) of the TM Rules, once the filing is
made, there is no specific timeline fixed for service of the copy on the
Applicant and in any case, the same is ought to be done
simultaneously so long as it is done immediately or within a
reasonable time after the filing.
16. After having perused the records and the specific stand of Respondent
No.1, this Court is of the opinion that the legal position in terms of Rule 45
is clear that there is a two months period for filing of the evidence in support
of oppositions. However, in the present case, since Respondent No.1 itself
submitted that the evidence was filed under Rule 45 on 5th August, 2019
and at best, there must have been some delay in the dispatch of the final
documents which were received on 13th August, 2019, this is not a case
where the evidence can be held to have not been filed under Rule 45. There
is some doubt as to why the evidence were not served upon the Applicant
initially, and some documents were finally served in hardcopy upon the
Applicant only on 17th August, 2019, as per the Opponent's affidavit.
However, the doubt which has arisen here cannot result in a situation where
the legal rights of the parties are prejudiced in a manner so as to render the
oppositions themselves as having been abandoned.
17. Thus, in view of the peculiar facts of this case and the submissions
made by the parties, and especially, the categorical stand of Respondent
No.1 being that the evidence was filed on 5th August, 2019, this Court is
unable to hold that the evidence was not filed in time. Accordingly, the
evidence in support of oppositions are directed to be taken on record. The
rebuttal evidence in support of the applications under Rule 45 be now filed
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by the Applicant within the timelines prescribed under Rule 46 of TM Rules.
Upon the filing of the evidence in support of the applications, the
oppositions shall proceed for hearing. An endeavour shall be made to
dispose of the oppositions within a period of six months from the filing of
the evidence in support of the applications.
18. However, under these circumstances where the applications of the
Applicant have been delayed for a long period due to the confusion created
on behalf of the Respondents and improper filing made by them, the
evidence in support of oppositions are taken on record subject to costs of
Rs.5,000/- in each of the applications i.e., a total cost of Rs.20,000/- to be
paid by the Opponent, within one month.
19. The present writ petition, along with all pending applications, is
disposed of in the above terms.
20. Copy of today's order be supplied to the Trademark Registry
(Address: Trademarks Registry, New Delhi, Boudhik Sampada Bhawan,
Plot No. 32, Sector 14, Dwarka, New Delhi-110078; Email: cgoffice-
[email protected], [email protected]).
21. The digitally signed copy of this order, duly uploaded on the official
website of the Delhi High Court, www.delhihighcourt.nic.in, shall be treated
as the certified copy of the order for the purpose of ensuring compliance. No
physical copy of orders shall be insisted by any authority/entity or litigant.
PRATHIBA M. SINGH
JUDGE
JULY 7, 2022
DJ/Rahul/MS
Signature Not Verified
Digitally Signed
Signing Date:11.07.2022
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