Madras High Court
Ramesh Chandra Sahoo vs West Bengal State Food Processing And on 5 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2025:MHC:1293
(T)CMA(GI)No.2 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 05.06.2025
CORAM:
THE HONOURABLE MR. JUSTICE SENTHILKUMAR
RAMAMOORTHY
(T)CMA(GI)No.2 of 2023
Ramesh Chandra Sahoo ...Appellant
-Vs-
1.West Bengal State Food Processing and
Horticulture Development Corporation Limited,
2nd Floor, Mayukh Bhavan,
DF Block Sector-I, Salt Lake City,
Kolkata – 700 091, West Bengal.
2.Patent Information Centre,
Department of Higher Education Science and Technology,
West Bengal State Council of Science and Technology,
3rd Floor, 26B, DD Block,
Salt Lake, Sector I,
Kolkatta – 700 064.
3.The Registrar,
Geographical Indications Registry,
Intellectual property Office Building,
Industrial Estate, GST Road,
Chennai – 32. ...Respondents
Prayer: Appeal filed under Section 31 of the Geographical Indications
of Goods (Registration and Protection) Act, 1999, to set aside the
above stated Impugned order dated 31.10.2019 of Deputy Registrar of
1/22
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(T)CMA(GI)No.2 of 2023
Geographical Indications. b. to direct the Ld.Deputy Registrar of
Geographical Indications to take on record the Appellant's Evidence in
Support of Rectification and decide the same in accordance with law.
For Appellant : Mr.T.Sundaranathan
for Mr. Suvendra Kumar Panda
For R1 & R2 : Mr.S.Majumdar
for M/s.Arul Gnana Prakash
For R3 : Mr. K.Subbu Ranga Bharathi,
CGSC
ORDER
Background
This appeal is directed against the order dated 31.10.2019
allowing interlocutory petition No.1 of 2019, which was filed by the
first and second respondents herein (the contesting respondents).
2. By such interlocutory petition, the contesting
respondents requested the Registrar of Geographical Indications to
treat the rectification application of the applicant as abandoned under
Rule 44(2) of the Geographical Indications of Goods (Registration and
Protection) Rules 2002 ('GI Rules').
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3. The contesting respondents submitted an application
for registration of GI on 18.09.2015. Such application was advertised
in the GI Journal on 14.07.2019 and registration was granted on
14.11.2017. The appellant herein applied for rectification of the entry
relating to such registration on 13.02.2018 under Section 27 of the
Geographical Indication of Goods (Registration and Protection) Act
1999 ('GI Act'). In response to such rectification application, the
respondents herein filed a counter statement on 13.06.2018, and such
counter statement was received by the appellant on 16.06.2018. By
virtue of Rule 66 of the GI Rules, Rules 44 to 51 which deal with
opposition proceedings, are made applicable mutatis mutandis to
rectification proceedings. Consequently, the applicant was required to
adduce evidence within two months from the receipt of a copy of the
counter statement or inform the Registrar and the counter party in
writing that he does not desire to adduce evidence in support of the
rectification application but intends to rely on the facts stated in the
rectification application.
4. In the case at hand, the appellant applied for extension, in the
first instance, on 13.08.2018, and, thereafter, requested for a second
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extension by application dated 11.09.2018. Evidence in support of the
rectification was lodged with the Registrar subsequently on
29.10.2018. The interlocutory application requesting that the
rectification application be deemed abandoned was filed in the above
facts and circumstances and such application was allowed by the
impugned order. Hence, the present appeal.
Counsel and their contentions:
5. Learned counsel for the appellant referred to the key dates
and events, as narrated above, and contended that the appellant had
taken action within the time limit specified under Rule 44(1) of the GI
Act and that the request for extension was acceded to. In support of
this contention, learned counsel referred to hearing notice dated
26.07.2019 fixing the hearing of the rectification application on
06.09.2019. He further submits that the interlocutory application was
filed thereafter on 03.08.2019. Therefore, learned counsel submits
that it cannot be said that the appellant abandoned the rectification
application in terms of Rule 44(2) of the GI Rules.
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6. His next contention is that the GI Act makes a distinction
between abandonment of proceedings at the instance of the Registrar
and deemed abandonment by the applicant or opponent concerned.
By drawing reference to Section 14(2) and Rule 44(2), learned counsel
submits that the said provisions provide for deemed abandonment of
the application or opposition, as the case may be, by the party, but not
an abandonment of the proceedings. By contrast, by reference to
Section 16(3) and Section 57(3), he points out that these provisions
enable the Registrar to treat the application as abandoned after
providing notice to the party concerned.
7. He further contends that Section 64(1) of the GI Act enables
the Registrar to grant extension of time for doing any act unless the
time for such act is expressly provided in the Act. As regards the time
limit for adducing evidence in support of the rectification application,
learned counsel submits that the GI Act does not expressly specify a
time limit. Since the Registrar granted the extension requested for by
the appellant by fixing a date for hearing the rectification application,
he submits that even an appeal by the respondents against such order
is not maintainable.
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8. By relying on Section 65 of the GI Act, learned counsel also
contends that the Registrar is empowered to call upon an applicant,
who defaulted in the prosecution of an application, to remedy the
default within the time specified, and to treat the application as
abandoned if the default is not remedied within such time. In spite of
the existence of such enabling provision, learned counsel submits that
the Registrar failed to exercise his power and instead erroneously
allowed the application to treat the rectification application as
abandoned. For all these reasons, learned counsel submits that the
impugned order calls for interference.
9. In response to these contentions, learned counsel for the
contesting raises the preliminary objection that the appeal is not
maintainable. According to learned counsel, the impugned order was
issued under Section 64(1) of the GI Act. Consequently, he submits
that an appeal is expressly barred under Section 64(2) thereof.
10. Without prejudice to this preliminary objection, learned
counsel proceeded to deal with the appeal on merits. His first
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contention on merits is that Section 64(1) is not applicable in cases
where specific provision is made in the rules fixing the time limit.
After referring to Rule 66 which makes Rules 44 to 61 of the GI Rules
applicable to a rectification application, learned counsel invited my
attention to Rule 44 and pointed out that Rule 44(1) expressly
stipulates that the maximum permissible extension beyond two
months cannot exceed one month in the aggregate.
11. With regard to extension under Section 64, he pointed out
that the application for extension is required to be made under Rule
83 in FORM GI-9. By referring to Rule 83, learned counsel pointed
out that it enables the filing of an application for extension of time
provided time is not expressly provided for such purpose either under
the GI Act or the GI Rules. In this case, learned counsel submitted that
the application for extension was made in FORM GI-9 by invoking
Rule 83. By virtue of the time limit being prescribed expressly in Rule
44(1), including in respect of maximum permissible extension, learned
counsel submitted that Section 64(1) cannot be invoked.
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12. In support of these contentions, learned counsel referred to
and relied upon the judgment of the Delhi High Court in Sunrider
Corporation v Hindustan Lever Limited and another, 2007 SCC
Online Delhi 1018, particularly paragraphs 9 to 15 thereof. With
specific reference to the said paragraphs, learned counsel pointed out
that the Court dealt with Section 131 of the Trade Marks Act 1999 (the
TM Act) and Rule 50 of the Trade Marks Rules 2002 (the TM Rules
2002), which are in pari materia with Section 64 of the GI Act, and
held categorically that the said provision would not apply to cases
wherein the time limit, including the maximum permissible extension,
is prescribed in the applicable rules. By relying on the judgment of the
Intellectual Property Appellate Board (the IPAB) in Basmati Growers'
Association v Agricultural and Processed Food Products Export
Development Authority (APEDA) and another 2016 SCC Online IPAB
2, particularly paragraphs 19 to 24 thereof, learned counsel submitted
that the IPAB considered the judgment of the Delhi High Court and
several judgments of the Supreme Court before concluding that Rule
44 of the GI Rules is the same as and identical to Rule 50 of the TM
Rules 2002 and that the opposition shall be deemed to have been
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abandoned in the event of non-compliance with the time limit
prescribed under Rule 44(1) of the GI Rules.
13. Without prejudice to the contention that Section 64(1) of the
GI Act is inapplicable, learned counsel submitted that the appellant
failed to explain the delay and that this was noticed in the impugned
order by recording that delay had not been satisfactorily explained. In
this regard, he submitted that no interference is warranted with the
exercise of discretion by the Registrar in concluding that delay had not
been properly explained.
14. As regards the contention that the issuance of a hearing
notice should be construed as grant of extension, learned counsel
pointed out that, even prior to the hearing notice, the contesting
respondents had addressed communications dated 18.12.2018 and
03.01.2019 to the Registrar stating that the appellant herein failed to
comply with the mandatory requirements of Rule 44(1) of the GI Rules
and, therefore, the application ought to be deemed to be abandoned.
The last contention of learned counsel was that Section 65 of the GI
Act is only applicable to applications for registration of GI and not to
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applications for rectification. He also submitted that the said provision
cannot be invoked in respect of matters expressly provided for in the
GI Act or the GI Rules. Since the filing of evidence in support of a
rectification application is expressly dealt with in the GI Rules, learned
counsel submitted that Section 65 cannot be pressed into service.
Discussion, Analysis and Conclusion:
15. The preliminary objection with regard to the maintainability
of the appeal is dealt with first. By relying on Section 64(2) of the GI
Act, it was contended by learned counsel for the contesting
respondents that the present appeal is not maintainable. Section 64
reads as under:
“64. Extension of time.—(1) If the
Registrar is satisfied, on application made to
him in the prescribed manner and
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 the 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.
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(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.
”
As is noticeable, sub section (1) enables the Registrar to extend time
for doing any act for which time is not expressly provided in the Act.
In this case, two applications for extension of time were filed by the
appellant. The first application dated 07.08.2018 was not disposed of
earlier but appears to have been considered and granted up to
15.09.2018 in the impugned order. As regards the second application,
the appellant has addressed a communication dated 23.09.2024 to the
Registrar requesting for a copy of the order passed on the application
under Section 64(1). Till date, no separate order under Section 64(1)
has been placed on record by the adversaries. If an order allowing or
rejecting an application for extension of time had been issued, the
import of Section 64(2) is that no appeal would lie therefrom.
16. As stated earlier, by the impugned order, an application by
the contesting respondents seeking an order treating the rectification
application as abandoned was allowed. Consequently, the rectification
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application of the applicant was effectively rejected. Section 31 of the
GI Act enables any person aggrieved by an order or decision of the
Registrar to appeal to this Court. Undoubtedly, the impugned order
qualifies as an order or decision of the Registrar and, in the absence of
any provision excluding an appeal against such order, an appeal is
maintainable under Section 31. In view of this conclusion, the merits
of the appeal are required to be dealt with.
17. On merits, I first propose to examine whether further
extension of time was permissible under the GI Act and Rules. The
appellant relied on Section 64(1) as the basis for seeking further
extension. As is noticeable from the text of Section 64(1), it enables the
Registrar to extend the time for doing any act for sufficient cause, if
time for such act is not expressly provided in the statute. Rule 83 was
framed pursuant to the rule making powers conferred by Section 87 of
the GI Act. The said rule is as under:
“83. Extension of time.- (1) An application for
extension of time under section 64 (not being
a time expressly provided in the Act or a time
for the extension of which provision is made
in the rules) shall be made on Form GI- 9.
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(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.”
On perusal of Rule 83, it excludes applications for extension of time
under Section 64 if time is expressly provided either in the statute or
in the rules. It further provides that such application is required to be
made in Form GI-9. Although it appears prima facie that Rule 83 goes
beyond the scope of Section 64(1), the validity of Rule 83 is not under
challenge in these proceedings. It should also be noticed that the
appellant applied for the second extension by invoking Rule 83 and
lodged the application in Form GI-9. When these aspects are
considered holistically, the conclusion that follows is that Section
64(1) cannot be invoked in this case because Rule 44(1) is applicable.
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18. Rule 44 is as under:
“44. Evidence in support of opposition by the
opponents-(1) Within two months from
service on him of a copy of the counter-
statement 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 forthwith 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 GI-9 accompanied by
prescribed fees before the expiry of the period
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of two months mentioned therein.”
Thus the time limit of two months in Rule 44(1) for adducing evidence
in support of the rectification application was applicable to the
appellant with the option of seeking an extension for a further period
not exceeding one month in the aggregate. If reckoned from the date
of receipt of the counter statement by the appellant, the two month
period expired on 16.08.2018 and the maximum permissible
extension would be up to 15.09.2018. In these circumstances, the
Registrar would have been justified in rejecting the second application
for extension as not being in conformity with Rule 44(1). As noticed
earlier, however, no order appears to have been passed on the
applications for extension. This leads to the next issue as to whether
the legal fiction in Rule 44(2) is attracted.
19. In order to trigger the legal fiction under Rule 44(2), the
rectification applicant should not have taken action under sub-rule (1)
thereof within the time mentioned therein. In such event, the statute
prescribes that the applicant is deemed to have abandoned the
application. The admitted position is that the appellant applied for
extension on two occasions. The first letter was issued on 07.08.2018,
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seeking an extension of two months. This letter was clearly issued
before the lapse of two months from the date of receipt of the counter
statement, The second letter seeking an extension of one month was
issued on 07.09.2018. These letters unequivocally indicate the
appellant's intention to prosecute and not abandon the rectification
application. As concluded earlier, the appellant could not have
requested for extension beyond 15.09.2018 and, therefore, the
application dated 07.09.2018 for extension of one month was liable to
be rejected or disposed of by granting extension only up to 15.09.2018.
Nonetheless, it cannot be said that the appellant/rectification
applicant did not take any action under sub-rule 1 of Rule 44. Since
such non-action is a condition precedent for triggering the legal fiction
under Rule 44(2), I conclude that the legal fiction is not applicable in
the case at hand. Even otherwise, it flies in the face of reason to
conclude, whether by resort to legal fiction or otherwise, that a person
seeking extension of time to adduce evidence in support of his
application has abandoned the same. The consequences of the
application not being abandoned by virtue of the legal fiction falls for
consideration next.
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20. Learned counsel for the appellant relied on Section 65,
which is titled 'abandonment'. He contended that the Registrar is
empowered under this provision to issue notice and call upon an
applicant to remedy the default in prosecution of the application
under the GI Act, and to treat the application as abandoned if the
default is not remedied within the time specified. In response to this
contention, learned counsel for the contesting respondents submitted
that Section 65 only applies to an application for registration and not
to a rectification application. Section 27 of the GI Act enables the filing
of an application for rectification. As noticed above, Section 65 deals
with defaults in prosecution of an application and there is nothing in
the text or context of Section 65 that limits its applicability to
applications for registration by excluding applications for rectification.
Therefore, I conclude that Section 65 also applies to applications for
rectification.
21. The second contention of learned counsel for the contesting
respondents, in this regard, is that this provision is not applicable to
situations wherein the statute contains an express provision to deal
with default. According to learned counsel, Rule 44 expressly deals
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with default in filing evidence in support of a rectification application
within the prescribed time limit. If the legal fiction in Rule 44(2) had
been duly triggered, I would have accepted the contention of learned
counsel for the contesting respondents on this issue. As concluded
earlier, the legal fiction was not triggered in this case in view of the
appellant having taken action under Rule 44(1). Neither Rule 44 nor
the other applicable rules deals with a situation wherein the time limit
to adduce evidence has elapsed, but the legal fiction is not applicable.
As a corollary, Section 65 becomes applicable and the Registrar was
empowered to inform the appellant about the default in lodging
evidence in support of the rectification application and that, therefore,
the Registrar would treat the rectification application as abandoned in
terms thereof. The record shows that such a course of action was not
adopted. If such notice had been received, the course of action open to
the appellant would have been to request that he be permitted to
proceed with the rectification application without any evidence in
support thereof.
22. On examining the impugned order, it is noticeable from the
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discussion in paragraphs 39 to 48 thereof that the interlocutory
application of the contesting respondents was allowed on the ground
that Rule 44 is mandatory and that non-compliance leads to the
rectification application being deemed to be abandoned. While
drawing such conclusion, the Registrar did not examine whether the
applications for extension qualify as actions under Rule 44(1). In
addition, the contention of the appellant that Section 65 is applicable
was noticed in paragraph 34 of the impugned order, but the operative
portion of the order contains no discussion with regard to the
applicability or otherwise of Section 65. For all these reasons, the
impugned order cannot be sustained.
23. Hence, the impugned order is set aside and the matter is
remanded to the Registrar for reconsideration on the following terms:
(i) The appellant shall prosecute the rectification application
without adducing any evidence in support thereof on the basis of the
rectification application and any documents filed along with the same.
(ii) The contesting respondents are permitted to adduce
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evidence within two months from the date of receipt of a copy of this
order.
(iii) After providing a reasonable opportunity to the appellant
and the contesting respondents, a speaking order shall be issued
within six months from the date of receipt of a copy of this order.
(iii) For the avoidance of doubt, it is made clear that no opinion
has been expressed on the merits of the rectification application.
05.06.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation : Yes / No
cda
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To
1.Patent Information Centre,
Department of Higher Education Science and Technology,
West Bengal State Council of Science and Technology,
3rd Floor, 26B, DD Block,
Salt Lake, Sector I,
Kolkatta – 700 064.
2.The Registrar,
Geographical Indications Registry,
Intellectual property Office Building,
Industrial Estate, GST Road,
Chennai – 32.
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SENTHILKUMAR RAMAMOORTHY, J.
cda
05.06.2025
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