Madras High Court
M/S.Victor Guedes Industria vs The Deputy Registrar Of Trade ... on 3 March, 2023
2023:MHC:1193
W.P.Nos.10332 & 10333 of 2016
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 03.03.2023
CORAM
THE HONOURABLE DR. JUSTICE ANITA SUMANTH
WP.Nos.10332 & 10333 of 2016 and
WMP.Nos.9136 & 9137 of 2016
WP.No.10332 of 2016
M/s.Victor Guedes Industria
E.Commercio S.A.
A company incorporated under the laws of Portugal
And having office at
Largo Monterroio
Mascarenhas #1, 1070-184 Lisboa
Portugal
Rep. herein by its Authorised Signatory
Govardhan Gajjal ... Petitioner
Vs
1.The Deputy Registrar of Trade Marks
Trade Mark Office
Anna Salai, Guindy Industrial Estate
Guindy, Chennai-600 032.
2.M/s.Galla Foods Pvt. Ltd.
No.12, Kodambakkam High Road
Chennai-600 034. ... Respondents
PRAYER: Writ Petition filed under Article 226 of the Constitution of India
praying to issue a Writ of Certiorarified Mandamus, to call for the records of
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the 1st Respondent pertaining to the impugned order dated 13.10.2014 passed in
Opposition No.776874 to Application No.1796011, Quash the same and
consequently, direct the 1st Respondent to take on record, the Evidence in
Support of Opposition filed by the Petitioner in Opposition No.776874 to
Application No.1796011 in Class 29.
AND
WP.No.10333 of 2016
M/s.Helmet Integrated Systems Ltd
Unit 3, Focus 4, Fourth Avenue
Letchworth HERTS SG6 2 TU
United Kingdom
Rep. By its Power of Attorney
Govardhan Gajjal ... Petitioner
Vs
1.The Deputy Registrar of Trade Marks,
Trade Mark Office
Anna Salai,
Guindy Industrial Estate
Guindy, Chennai
Tamil Nadu - 600 032.
2.Naveen Das ... Respondents
PRAYER: Writ Petition filed under Article 226 of the Constitution of India
praying to issue a Writ of Certiorarified Mandamus, to call for the records of
the 1st Respondent pertaining to the impugned order dated 23.10.2014 passed in
Opposition No.MAS-748031 to Application No.1708645, Quash the same and
consequently, direct the 1st Respondent to take on record, the Evidence in
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Support of Opposition filed by the Petitioner in Opposition No.MAS-748031 to
Application No.1708645 in Class 9.
(In both WPs)
For Petitioners : Mr.R.Palaniandavan
For Respondents : Mr.R.Subramanian (for R1)
Central Government Standing Counsel
Mr.R.Prem Kumar (for R2)
for M/s.King & Patridge
COMMON ORDER
These two Writ Petitions raise a common question of law and involve
similar factual matrices as well. Hence both are disposed by way of a single
order.
2. In W.P.No.10332 of 2016, the petitioner, Victor Guedes Industria E
Commercio S.A. (hereinafter referred to as ‘Victor’) is the proprietor of the
trade mark ‘Gallo’ claimed to have been originally adopted in or around 1919
for edible oil. The second respondent Galla Foods Pvt. Ltd. made an
application for the trade mark ‘Galla’ that came to be opposed by way of an
opposition before the first respondent/The Deputy Registrar of Trade Marks
(R1).
3. In W.P.No.10333 of 2016, the petitioner is Helmet Integrated Systems
Ltd. (hereinafter referred to as ‘Helmet’), a company registered under the laws
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of the United Kingdom and proprietor of the trade mark ‘Alpha’. It claims to
have adopted the mark in or around 1983 for protective equipment, such as
helmets and jackets. The second respondent Mr.Naveen Das had made an
application for the trade mark ‘Alphia’, for which the petitioner filed an
opposition before R1.
4. Barring the aforesaid factual difference, the legal issue arising for
determination is one and the same in both Writ Petitions. To the opposition
filed by the petitioners, counter statements were filed by the second
respondents and duly communicated to the authorised representatives of the
petitioners.
5. Victor sought a month’s extension to file evidence in support of its
opposition in TM56 dated 26.08.2011. Helmet, upon receipt of the counter also
sought an extension along similar lines as Victor. Both petitioners, by way of
abundant caution, also relied upon the evidences contained in the statements,
averments and counters set out in the notice of opposition.
6. This procedure aligns with Rule 50 of the Trade Marks Rules, 2002 (in
short ‘Rules’), which provides for the production of evidence in support of
opposition, the timelines in this regard and the procedure to be followed.
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7. In the case of Victor, since there was some delay in the receipt of
evidence dispatched from Portugal, it had applied for further extension of time
in TM56 after remitting the prescribed fee, on 28.09.2011. Due to the silence
of R1, an Interlocutory Petition had been filed on 21.10.2011 seeking
condonation of the delay in filing of evidence and requesting that the evidence
filed be taken on record. Helmet, on its part, filed evidence in support of
opposition on 12.01.2012. It also filed an Interlocutory Petition along similar
lines as Victor.
8. Both petitioners have received orders dismissing the Interlocutory
Petitions. The impugned orders are dated 13.10.2014 and 23.10.2014 and
proceed on the basis that R1 did not have the requisite statutory authority to
condone any delay in tendering of evidence.
9. It is the contention of the petitioners that R1 is vested with necessary
statutory authority to condone such delay on a proper interpretation of Rule 50
of the Rules read with Section 131 of the Trade Marks Act, 1999 (in short
‘Act’) Act. Not doing so would, according to the petitioners, be contrary to,
and militate against the provisions of Section 21 of the Act.
10. At this juncture, it would be relevant to extract the provisions of
Section 21 dealing with opposition to registration as below:
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21. Opposition to registration.—1 [(1) Any person may,
within four months from the date of the advertisement or re-
advertisement of an application for registration, give notice in
writing in the prescribed manner and on payment of such fee as
may be prescribed, to the Registrar, of opposition to the
registration.]
(2) The Registrar shall serve a copy of the notice on the
applicant for registration and, within two months from the
receipt by the applicant of such copy of the notice of opposition,
the applicant shall send to the Registrar in the prescribed
manner a counter-statement of the grounds on which he relies
for his application, and if he does not do so he shall be deemed
to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar
shall serve a copy thereof on the person giving notice of
opposition.
(4) Any evidence upon which the opponent and the applicant
may rely shall be submitted in the prescribed manner and within
the prescribed time to the Registrar, and the Registrar shall give
an opportunity to them to be heard, if they so desire.
(5) The Registrar shall, after hearing the parties, if so required,
and considering the evidence, decide whether and subject to
what conditions or limitations, if any, the registration is to be
permitted, and may take into account a ground of objection
whether relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant
sending a counter-statement after receipt of a copy of such
notice neither resides nor carries on business in India, the
Registrar may require him to give security for the costs of
proceedings before him, and in default of such security being
duly given, may treat the opposition or application, as the case
may be, as abandoned.
(7) The Registrar may, on request, permit correction of any
error in, or any amendment of, a notice of opposition or a
counter-statement on such terms as he thinks just.
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11. Rule 50 sets out the timelines for tendering of evidence, being within
2 months from service upon the opponent with a copy of the counter statement.
Rule 50(1) also states that the Registrar may, on request, enlarge the aforesaid
period, by a month. The opponent is permitted to state in writing, that he does
not desire to adduce evidence in support of opposition but intends to rely upon
the facts stated in the notice of opposition. This, both petitioners have done.
12. Rule 50(2) states that if the opponent does not take the benefit of the
time scheme under Rule 50(1), he shall be deemed to have abandoned his
opposition. Sub-Rule (3) of Rule 50 states that the application seeking
extension by one month as stated under Rule 50(1) shall be in Form TM-56, be
accompanied by necessary fee and filed before the expiry of a period of 2
months as stipulated under sub-Rule (1) of Rule 50.
13. Section 21, which deals with opposition to registration, states that
any person may, within 4 months from date of advertisement or re-
advertisement of an application for registration, oppose such proposed
registration. The Registrar is required to serve a copy of the opposition to the
applicant, who shall, within 2 months of receipt thereof, file a counter. If he
does not do so, he is deemed to have abandoned his opposition for registration.
Section 21(4) enables the opponent and applicant to submit evidence in support
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of application/counter respectively, to the Registrar, who shall hear them, if
they so desire.
14. The distinction put forth by the petitioners is that while the timelines
under Section 21(1) and (2) are statutorily enshrined, the timelines in regard to
the submission of evidence are, by virtue of Section 21(4), set out under the
Rules. Thus, there must be some weightage accorded to this difference, one
statutorily mandated, the other, by prescription, per the Rules.
15. That apart, a comparison is sought to be drawn between Rules 50 and
51 that deal with evidence in support of opposition, and application
respectively. Rules 50 and 51 are extracted below, in seriatim.
50. Evidence in support of opposition.—
(1) Within two months from services on him of a copy of the
counterstatement or within such further period not exceeding
one month in the aggregate thereafter as the Registrar may on
request allow, the opponent shall either leave with the
Registrar, such evidence by way of affidavit as he may desire to
adduce in support of his opposition or shall intimate to the
Registrar and to the applicant in writing that he does not desire
to adduce evidence in support of his opposition but intends to
rely on the facts stated in the notice of opposition. He shall
deliver to the applicant copies of any evidence that he leaves
with the Registrar under this sub-rule and intimate the Registrar
in writing of such delivery.
(2) If an opponent takes no action under sub-rule (1) within the
time mentioned therein, he shall be deemed to have abandoned
his opposition.
(3) An application for the extension of the period of one month
mentioned in sub-rule (1) shall be made in Form TM-56
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accompanied by the prescribed fee before the expiry of the
period of two months mentioned therein.
The trade marks rules, 2002
51. Evidence in support of application.—
(1) Within two months or within such further period not
exceeding one month in the aggregate thereafter as the
Registrar may on request allow, on the receipt by the applicant
of the copies of affidavits in support of opposition or of the
intimation that the opponent does not desire to adduce any
evidence in support of his opposition, the applicant shall leave
with the Registrar such evidence by way of affidavit as he
desires to adduce in support of his application and shall deliver
to the opponent copies thereof or shall intimate to the Registrar
and the opponent that he does not desire to adduce any evidence
but intends to rely on the facts stated in the counterstatement
and or on the evidence already left by him in connection with
the application in question. In case the applicant relies on any
evidence already left by him in connection with the application,
he shall deliver to the opponent copies thereof.
(2) An application for the extension of the period of one month
mentioned in sub-rule (1) shall be made in Form TM-56
accompanied by the prescribed fee before the expiry of the
period of two months mentioned therein.
16. Petitioners point out that though Rules 50 and 51 draw sustenance
from the rule making power under Section 157(2) (vii), while Rule 50 is
interpreted by the authorities to state that there is no power of condonation
vested in the authority, the authorities routinely condone delay in tendering of
evidence in support of application.
17. The answer, in my considered view, lies in the construction of Rule
51 that does not contain an equivalent of Rule 50(2) therein. Thus, even if
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there were to be no evidence tendered by the applicant within the time frame
stipulated under Rule 51(1), the application would survive, whereas, in the
same situation, an application for opposition would be deemed to have been
abandoned.
18. Legislature has thus made a conscious distinction between the two
categories granting a wider berth in the matter of an applicant, when compared
to an opposition. This position has been remedied in the 2017 Rules when
Rules 45 and 46, analogous to Rules 50 and 51 of the 2002 Rules, are brought
in sync with each other on all fronts with the addition of Rule 46(2) that states
that ‘if an applicant takes no action under sub-rule (1) within the time
mentioned therein, he shall be deemed to have abandoned his application.’
19. Several judgements are cited at the Bar, some in the context of the
Trade and Merchandise Marks Act, 1958 and the connected 1959 Rules. The
earliest decision cited is that of the Bombay High Court in the case of Kantilal
Tulsidas Jobanputra v. Registrar of Trade Marks and Ors1. The question that
arose was whether the provisions of Rule 53 of the 1959 Rules was mandatory
or directory.
1 1982 (2) PTC 127 (Bom.)
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20. The Bombay High Court held that the intention of the Legislature
was clear that the Rule was not a rigid one, and in genuine circumstances, the
authorities could well be persuaded to extend the time for filing evidence
beyond the period of 2 months provided.
21. The same view has been taken by the Full Bench of the Delhi High
court in Hastimal Jain Trading As Oswal Industries v. Registrar of Trade
Marks & Anr2 as well as the Gujarat High Court in Wyeth Holdings Corpn. and
Another v. Controller General of Patents, Designs & Trade Marks3 and Bausch
and Lomb Incorporated v. Union of India4.
22. A learned single Judge of the Delhi High Court though, has taken the
view that Rule 50 is mandatory, in the context of the present Act and Rules. In
coming to this conclusion, the Court bore in mind the observations of the
Hon’ble Supreme Court in the case of Chief Conservator (Wildlife) v. Nisar
Khan5 that ‘it is now well settled that when rules are validly framed, they
should be treated as part of the Act’.
23. At paragraphs 10 and 11 of the decision reported in SCC Online,
they referred to judgments in the case of Delta Impex V. Commissioner of
2 2000 (52 DRJ (FB)
3 2006 SCC Online Guj 620
4 2016 SCC Online Guj 2980
5 ((2003) 4 SCC 595)
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Customs6, Pranam Enterprises V. Commissioner of Sales Tax, New Delhi7 and
Union of India V. Popular Construction Co.8.
24. Though rendered in the context of revenue enactments, the
proposition is that where the Statute prescribes a maximum condonable period,
it is not open to the authorities under that Statute to extend the period for doing
an act beyond the prescribed period. The inference I draw that the time limits
imposed under Rule 50 would have the force of law and would have to be
strictly enforced.
25. Rule 50 is categoric to the effect that a request for extension of time
of one month should be filed within the initially granted two months period.
The extension is clearly stipulated as being for one month only. There is thus,
in my considered view, no avenue for discretion that vests in the Registrar to
extend the period thereafter.
26. There have been instances, though in the context of other
enactments, where this Court has had occasion to consider a request for
condonation of delay beyond the period of limitation stipulated under Statute.
27. In such cases and seeing as the power under Article 226 is wide, the
Hon’ble Supreme Court has, while emphasizing the necessity to impose self-
6 ((2004 DLT 209)
7 (111 (2004) DLT 743)
8 ((2001) 8 SCC 470
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restraint, left it open to the writ courts to examine the reasons that have caused
the delay beyond the maximum condonable period and interfere if sufficient
justification was available, in the opinion of the Court.
28. This situation does not arise in this case, as the petitioners have not
sought the intervention of the Court for condonation of delay itself but have
attacked the impugned orders on a legal principle, as to whether the Registrar
had the power to condone delay beyond the maximum condonable period.
29. There is yet another argument, touching upon Rule 105 extracted
below:
105. Extension of time.—
(1) An application for extension of time under section 131 (not
being a time expressly provided in the Act or prescribed by rule
79 or by sub-rule (4) of rule 80 or a time for the extension of
which provision is made in the rules) shall be made in Form
TM-56.
(2) Upon an application made under sub-rule (1) the Registrar,
if satisfied that the circumstances are such as to justify the
extension of the time applied for, may, subject to the provisions
of the rules where a maximum time limit is prescribed and
subject to such conditions as he may think fit to impose, extend
the time and notify the parties accordingly and the extension
may be granted though the time for doing the act or taking the
proceeding for which it is applied for has already expired.
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30. Rule 105 addresses applications for extension of time under Section
131 and excludes timelines provided under the Act or prescribed by Rule 79 or
80(4).
31. The Delhi High Court has, in the case of Surinder Corporation,
U.S.A. v. Hindustan Lever Limited & Anr9, held that Rule to be inapplicable, as
Rule 50 is specific to tendering of evidence and the timelines to be followed in
that regard. There is thus no necessity to go to Rule 105 at all as it does not
find any reference in Rule 50.
32. I agree, also for the reason that the request of the petitioners before
the authority was not in terms of Rule 105, but in terms of Rule 50 and, as an
alternative measure, Rule 53. One of the petitioners, Victor, has, incidentally
referred to Section 131 as well. However, in light of the fact that both Section
131 and Rule 105 are general in nature and Rule 50, one specific to opposition,
it is the latter Rule that would be attracted in this case and bind the authority
concerned.
33. The issues raised before the Full Bench in Hastimal Jain Trading As
Oswal Industries (supra) are as follows:
(a) Whether Rule 53 (2) of the Trade and Merchandise Marks Rules
1959 is directory or mandatory ?
9 2007 SCC Online Del 1018
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(b) Whether the Registrar's power to extend the time for filing
evidence in support of the opposition stands extinguished if an
application for extension of time is not filed or extension is not
granted before the expiry of the period of two months pre- scribed
under Rule 53 (1) of the Trade and Merchandise Marks Rules, 1959 ?
(c) What is the effect of Rule 106 of the said Rules on the exercise of
powers by the Registrar under Rule 52(2)?
34. Rule 53(2) of the 1959 Rules prescribed that evidence ‘shall’ be
tendered within two months, granting discretion to the Registrar for extension
of such time, if required. It was in this context that the Full Bench concluded
that Rule 53(2) was directory, as it contained an in-built measure for flexibility.
35. However, Rule 50(2) of the present Rules, in contra distinction to
Rule 53(2) of the 1959 Rules, does not contain the expansive language that
Rule 53(2) did, and no discretion has been granted to the Registrar to direct
otherwise than follow the prescription under the present Rule.
36. Following the dictum of the Hon’ble Supreme Court in
Ramachandra Keshav Adke (Dead) by Lrs. V. Govind Joti Chavare 10and
Jessel MR’s Taylor V. Taylor11, that where power is given to do a particular
thing in a particular way, then that thing must be done in that way only and all
other methods of performance are forbidden, the Delhi High Court in Surinder
10AIR 1975 SC 915
111875 (1) Ch D 426
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Corporation, U.S.A (supra) held that the provisions of Rule 50(2) are
mandatory.
37. The Intellectual Property Appellate Board has, in several matters,
viz., Asian Paints Limited Nirmal v. Assistant Registrar of Trade Marks and
Another12, Tata Motors Limited v. Cavincare Pvt. Ltd13, Merck KGaA,
Formerly known as E.Merck, v. Registrar of Trade Marks, Trade Marks
Registry and another14 and Pioneer Electronic Corporation v. Suse Electronics
and Ors15 followed the ratio of the Full Bench of the Delhi High Court in
Hastimal Jain Trading As Oswal Industries.
38. In M/s.H.I. Tamboli & Co., v. M/s.Urmin Products Pvt. Ltd. and
another16 the view taken is as against the petitioner following the decision in
Surinder Corporation, U.S.A.(supra). The decisions in Asian Paints Limited
Nirmal and Tata Motors Limited (supra) are prior to the decision in Surinder
Corporation U.S.A, whereas, the decisions in Merck KGaA, Formerly known
as E.Merck, and Pioneer Electronic Corporation (supra) are post that decision.
39. Though the decision in Surinder Corporation U.S.A. has been cited
before the Bench, they have preferred to go with the ratio of the Full Bench in
12 2005 SCC Online IPAB 48
13 2006 SCC Online IPAB 5
14 2008 SCC Online IPAB 129
15 Manu/IC/0022/2020
16 2012 SCC Online IPAB 82
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Hastimal Jain Trading As Oswal Industries in favour of the wider powers of
the Registrar.
40. One of the grounds upon which this conclusion has been arrived at is
the observation in the draft manual for Trade Marks Practice and Procedure in
which parity has been followed in the interpretation of Rules 50 and 51. After
noting the dichotomy in the decisions of the Gujarat and Delhi High Courts, the
manual states that ‘Thus law is still evolving. Till such time it is finally settled,
the Registrar will continue to adopt a uniform policy as per above decision of
the Gujarat High Court’.
41. The petitioners have also referred to judgments on the Rule of
procedure, urging that procedural Rules must be interpreted in conformity with
the Act and to further the cause of justice.
42. Reliance is placed upon judgments of the Hon’ble Supreme Court in
the case of Kailash v. Nankhu and others17 and Sushil Kumar Sen v. State of
Bihar18 as well as of Punjab & Haryana High Court in the case of, Balwant
Singh and another v. Firm Raj Singh-Baldev Kishen 19 and of Calcutta High
Court in the case of Rupendra Deb Raikut v. Ashrumati Debi and others20.
17 2005 4 SCC 480
18 1975 1 SCC 774
19 Civil Revision Petition No.697 of 1968 dated 17.10.1968
20 1949 SCC Online Cal 44
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43. Per contra, respondents have, in addition to the decisions in the case
of H.I.Tamboli & Co., and Surinder Corporation U.S.A, relied upon several
more decisions that are discussed briefly below.
44. In the case of Pidilite Industries Limited v. The Registrar of Trade
Marks and another21, the Circuit Bench of the Board at Ahmedabad preferred
to follow the view of the Full Bench of the Delhi High Court in the case of
Hastimal Jain Trading As Oswal Industries holding Rule 50(2) to be directory.
This decision, in fact, favours the petitioner, though it is placed on record by
the respondents.
45. In M/s.Mahalakshmi Products v. M/s.Surinder Engineering Works
and another22, the decision in Surinder Corporation U.S.A, was followed, as
has been by the Gujarat High Court in Torrent Pharmaceuticals Ltd.V. UCB23
46. In Allied Blenders and Distillers Pvt. Ltd. v. Intellectual Property
Appellate Board and Others24, a Division Bench of this Court considered
whether a notice of opposition to registration of a trademark may be issued
beyond the period prescribed under Section 21 of the Trade Marks Act, 1999.
21 2008 SCC Online IPAB 8
22 2012 SCC Online IPAB 87
23 2005 (31) PTC 14 Guj.
24 2010 (1) CTC 129
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47. Noting that the Trade Marks Act is a Special enactment, the Division
Bench observed that a person keen on opposing a registration is expected to be
vigilant and is to oppose registration in the prescribed manner in the prescribed
time and on payment of prescribed fee within the time stipulated. Paragraph 27
is relevant and is extracted below:
27. In the instant case, the Trade Marks Act, 1999 is a special Act. It
gives a special right to the parties who want their goods and services to
be protected by getting a registration of the trade mark. Anybody who is
keen to oppose any such registration has also to be vigilant and has to
oppose the registration in the prescribed manner, in the prescribed
time, and on payment of prescribed fee within the time provided for that
purpose. The counter statement is also to be filed in the prescribed time
and in the prescribed manner. The notice of opposition and the counter
statement are like the plaint and the written statement of the
proceeding. If the Special Act provides for specific time, manner and
fees for filing of the plaint, it has to be so done in compliance and the
requirements cannot be relaxed. Sub-section 21(7) of the Act provides
only for amendment of the notice of opposition and counter statement,
but that cannot be construed as a provision to cure any deficiency in
the requirement of Sections 21(1) and 21(2) of the Act. Section 131 and
Rule 53 can also not be pressed into service, since that Section will
apply only where time is not expressly provided under the statute and
Rule 53 is concerning the time for leading the evidence. It cannot apply
to filing of notice of opposition or the counter statement. Any other
interpretation will defeat the objective of the Act, and hence, cannot be
accepted.
The time scheme under the Act was thus held to be sacrosanct and inapplicable.
48. The aforesaid decision has been followed in Basmati Growers
Association House v. The Agricultural & Processed Food Products Export
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Development Authority (APEDA) and another25, in the context of the
Geograhical Indications of Goods (Registration & Protection) Rules, 2002,
specifically Rule 44 thereof, which is analogous to Rule 50 of the 2002 Trade
Marks Rules. While dealing with the question as to whether Rule 44 of the GI
Rules is mandatory or directory, the decision in Allied Blenders and Distillers
was applied and the decision came to be against that appellant.
49. In Aman Engineering Works v. Registrar Trade Marks, Trade Marks
Registry and Another26, a similar view was taken by the Delhi High Court
against that petitioner holding the Rule to be mandatory. To be noted that in
that case, the challenge by the petitioner was to orders passed by the Senior
Examiner of Trade Marks in Review Applications filed by the respondent that
had been allowed by the authority. Lastly, they rely upon a decision in Seiko
Cables of India v. Hattori Seiko Company Ltd. & Another27 to similar effect.
50. My attention is also drawn to the provisions of Section 131, that
provides for condonation of delay by the Registrar on an application in the
prescribed manner. Section 131 is extracted below:
131. Extension of time.—(1) If the Registrar is satisfied, on
application made to him in the prescribed manner and
25 2016 SCC Online IPAB 2
26 2022 SCC Online Del 3666
27 2002 (62) DRJ 640
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accompanied by the prescribed fee, that there is sufficient cause
for extending the time for doing any act (not being a time
expressly provided in this Act), whether the time so specified has
expired or not, he may, subject to such conditions as he may
think fit to impose, extend the time and inform the parties
accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the
Registrar to hear the parties before disposing of an application
for extension of time, and no appeal shall lie from any order of
the Registrar under this section.
51. My attention is specifically drawn to the portion in parenthesis in
Section 131(1) above, reading ‘not being a time expressly provided in this Act’.
Learned counsel for the petitioners would point out that enlargement of the
time sought for by the petitioners is not one provided ‘in’ the Act, but one
‘under’ the Act, such as, an extension provided under the Rules. The latter,
according to him, is elastic.
52. Upon a consideration of the arguments advanced, I am inclined to
hold against the petitioners. Though at first blush, some of the arguments
advanced by the petitioner appear attractive, the language of the Rule clearly
admits of no elasticity. The overwhelming view of the Courts, is also to the
effect that the application of Rule 50(2) is mandatory.
https://www.mhc.tn.gov.in/judis
W.P.Nos.10332 & 10333 of 2016
53. The judgments in the context of the 1958 Act and 1959 Rules are
distinguishable by apparent difference in language itself, the erstwhile Rule
expressly containing an enabling grant of discretion upon the Registrar.
54. I am of the view that there is no infirmity in the impugned orders and
the same stand confirmed. In both cases, the petitioners have, while breaching
the prescribed timelines, been cautious enough to rely upon the original
statement of facts and the contents thereto, while opposing the application for
registration of trademark. Rule 53 entitles an opponent to tender additional
evidence, for admission of which, discretion is granted to the authority. It is
left open to grant the Registrar, if he thinks fit to grant such leave, putting the
applicant to such terms as he may think fit.
55. These Writ Petitions are dismissed. Since the proceedings relate to
the year 2014, let matters be taken up forthwith and completed within a period
of sixteen (16) weeks from date of receipt of a copy of this order. No costs.
Connected Miscellaneous Petitions are also dismissed.
03.03.2023
Index : Yes / No
Speaking Order/Non-speaking order
Neutral Citation:Yes / No
sl
https://www.mhc.tn.gov.in/judis
W.P.Nos.10332 & 10333 of 2016
To
1.The Deputy Registrar of Trade Marks
Trade Mark Office
Anna Salai, Guindy Industrial Estate
Guindy, Chennai-600 032.
https://www.mhc.tn.gov.in/judis
W.P.Nos.10332 & 10333 of 2016
DR.ANITA SUMANTH, J.
WP.Nos.10332 & 10333 of 2016 and
WMP.Nos.9136 & 9137 of 2016
03.03.2023
https://www.mhc.tn.gov.in/judis
