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Judgment
Z.S. Negi, J
These appeals are against the orders, dated 12th July, 2000 of the Assistant Registrar of Trade Marks, Delhi whereby application No. 439189 for
registration of trade mark of the appellant was refused and Opposition No. DEL-7554 of the respondent No. 1 was allowed, and by order dated 17th
July, 2000, and in opposition No. DEL-7557, in view of order dated 12.7.2000 in opposition No. DEL-7554, passed order to treat the same as
infructuous.
The appellant M/s. Abdul Mujeeb Abdul Wajid Private Limited, New Delhi claims to carry on the business of manufacture, sale and export of
smoking tobacco for hukka included in class 34 and established in the trade since the year 1979. The appellant stated to have bonafidely and honestly
adopted on 18.6.1985 the trade mark 'SHESHA ALTAIN' with a device of two hukkas tied with pipe in respect of goods of its manufacture and sale.
The smoking tobacco for hukka manufactured and sold by the appellant bearing the aforesaid trade mark have come about to be identified and
recognised by the purchasing public and members of the trade with the goods of the appellant exclusively. This trade mark has since 18.6.1985 been
continuously and extensively used and widely advertised by the appellant. The appellant has, for the purposes of marketing of its goods, adopted an
artistic label which was original and registered as copyright under No. A-51185/91. The appellant filed an application No. 439189 on 18.6.1985 for
registration of trade mark 'SHESHA ALTAIN' (label) consisting of the mark 'SHESHA ALTAIN' along with the device of two hukkas tied with pipe
in class 34 in respect of smoking tobacco for hukka. At the time of filing application, the user claimed was as proposed to be used. This application
was accepted for registration with a disclaimer of word ""SHESHA"" and disclaimer of the device of two hukkas except as substantially shown in the
representation and advertised in Trade Marks Journal No. 1016 dated 1.10.1991 at page 894.
The respondent company, Ahmed Mohamed Saleh Baeshen & Co., a company organised and existing under the laws of Saudi Arabia gave notice
of opposition No. DEL-7554 alleging themselves to be proprietors of trade mark SHEESHA BRAND (label) in Arabic and English in respect of
tobacco, tobacco paste, chewing tobacco and tobacco used in cigars and cigarettes excluding tobacco used for hukka and had made application No.
412285 on 22.10.1983 for registration of trade mark under class 34 on the ground of use of their mark in India for the last 25 years and by virtue of
extensive registrations, long-standing and continuous use enjoyed by their said trade mark internationally including India; claimed that they are entitled
to exclusive proprietors rights therein and the said trade mark has become distinctive of the products and business of their company. Mrs. Saud
A.M.S. Baeshen, Ahmed Abu Baker Baeshen, Mohd. Abdul Kader M.S. Baeshen and Ahmed Abdul Kader M.S. Baeshen, a partnership trading as
Ahmed Mohamed Saleh Baeshen & Co. under the laws of Saudi Arabia also gave notice of their opposition No. DEL-7557, alleging themselves to be
the proprietors of trade mark with words 'SHEESHA BRAND' along with the device of the holder of hukka on a label in respect of smoking tobacco
for hukka, cigarettes, chewing tobacco, tobacco raw or manufactured, mach box (not being of precious metal), snuff, beedies, smokers articles, cigars,
tobacco paste and tobacco products, which is registered in several countries of the world and the registration of the said trade mark was applied in
India in class 34 under application No. 466762 dated 29.1.1987 claiming user of mark in India since 1966. In both the opposition notices it is stated that
registration of mark under application No. 439189 would be in violation of various provisions of the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the Act). It is alleged that the use of impugned mark by the appellant would lead to an inevitable confusion and deception
among the traders and also among the consuming public who include all types of people covering illiterates too. Both application Nos. 412285 and
466762 of respondents were accepted with disclaimers and advertised in the Trade Marks Journals. The respondent No. 1, subsequently, claiming to
be the registered proprietors of an identical trade mark under No. 412285 as of 22.10.1983 in class 34, filed an interlocutory petition dated 5th May,
2000, which was allowed by the Assistant Registrar of Trade Marks, New Delhi.
The appellant filed counter statement on 17.6.1993 and respondent No. 1 filed evidence in April, 1994 in support of their opposition. The appellant
also filed evidence in support of their application and the respondent No. 1 herein filed their reply evidence under Rule 55 of the Trade and
Merchandise Marks Rules, 1959. The Registrar of Trade Marks set down 8th May, 2000 as the date for hearing the matter and communicated to the
parties vide letter dated 13.4.2000. Respondent No. 1 moved an interlocutory petition on 5.5.2000 (by annexing a copy of amended notice of
opposition) seeking permission to amend the notice of opposition to treat Section 12(1) of the Act as an additional plea to the grounds of notice of
opposition and it is stated that the Registrar of Trade Marks without issuing notice of the said interlocutory petition to the appellant and without giving
any opportunity to the appellant to file reply to the interlocutory petition proceeded to hear the arguments not only on merits of the case but also on the
interlocutory petition. The decision of the opposition proceedings dated 8.5.2000 was taken by the Registrar of Trade Marks on 12th July, 2000
whereby the registration of application No. 439189 was refused and the opposition of respondent No. 1 allowed. The Assistant Registrar of Trade
Marks by his order dated 17th July, 2000 ordered that the opposition No. DEL-7557 be treated as infructuous. Aggrieved by the orders dated the
12.7.2000 and 17th July, 2000 of the Assistant Registrar of Trade Marks, these appeals have been filed before the High Court of Delhi as C.M.(M)
No. 709 of 2000 and C.M.(M) No. 710 of 2000, respectively. The High Court of Delhi in pursuance of Section 100 of the Trade Marks Act, 1999
transferred the same to the Intellectual Property Appellate Board and this Board numbered the appeals as TA/170/2003/TM/DEL and
TA/171/2003/TM/DEL, respectively. A stay petition No. CM 1885 of 2000 in CM (M) 709 of 2000 also filed in the High Court of Delhi has also been
transferred and numbered by the Board as M.P. No. 14 of 2006 in TA/170/2003 TM/DEL.
Since both the appeals are arising out of the order of the Assistant Registrar of Trade Marks, New Delhi, dated 12.7.2000 and dated 17.7.2000 and
the parties in the appeal are same and the grounds of appeals are similar, these appeals, by consent of both the counsel, were taken up for joint
disposal.
At the hearing of appeal, Shri Amarjeet Singh, Advocate represented the appellant and Shri Sanjay Jain, Advocate represented respondent No. 1.
The learned Counsel for the appellant contended that the Registrar of Trade Marks erred in allowing the interlocutory petition of respondent No. 1 for
amendment of notice of opposition without issuing notice of said petition to the appellant and without affording any opportunity to the appellant to file
reply thereto and not only proceeded to hear arguments on merits of the opposition but also on the interlocutory petition dated 5th May, 2000. Even no
separate and speaking order was passed by the hearing officer. He further contended that the hearing officer was not justified by taking into
consideration the disclaimed portion of the trade mark while determining the distinctiveness of the appellant's mark. It is also contended that there was
no evidence produced by respondent No. 1 to show the user of 25 years and the sale invoices relate to sales made out of India. Further, the approach
of the hearing officer in deciding the objections of the respondent No. 1 under Sections 9, 11(a), 12(1) and 18(1) of the Act was absolutely mechanical
and also he fell into an error of fact and law, by not dealing with the evidence produced on record by the appellant, while deciding the objections of the
respondent No. 1. The learned Counsel for the appellant also contended that the hearing officer failed to appreciate that the appellant was entitled to
set up the plea under Section 12(3) of the Act only in the case where Section 12 (1) created the prohibition to the registration of their trade mark but in
the absence of any such objection raised in the notice of opposition, the appellant was deprived of the valuable right to set up the claim for registration
of trade mark SHESHA ALTAIN under Section 12(3) of the Act. Reliance is placed by the learned Counsel on a series of decisions in support of his
contention. The learned Counsel for the appellant submitted that the order dated 12.7.2000 and dated 17.7.2000 respectively passed by the Assistant
Registrar of Trade Marks, New Delhi be set aside. Opposition Nos. DEL-7557 and DEL-7554 may be disallowed and the application No. 43189 may
be allowed to proceed for registration.
On the contrary, the learned Counsel for respondent No. 1 refuted the contentions of the learned Counsel for the appellant. He contended that the
Assistant Registrar of Trade Marks has rightly allowed the interlocutory petition to amend the notice of opposition and has rightly taken the
certification into consideration and allowed to maintain objection under Section 12(1) of the Act. The appellant has availed of the defence of Section
12(3)/33 of the Act in paragraphs 5 in Forms TM-6 (counter-statements to opposition Nos. DEL-7557 and DEL-7554). He further contended that the
Registrar of Trade Marks have all the powers of a Civil Court for the purposes, amongst others, of receiving evidence under Section 97 of the Act
and as the certification was a public document, the same had to be taken into consideration by the hearing officer. The learned Counsel submitted that
the order of the learned hearing officer is based on cogent reasons and is in accordance with the applicable law and the opposition was allowed after
due consideration of all aspects of the case, including the disclaimed portion of the trade mark.
Section 22 of the Act empowers the Registrar of Trade Marks to permit correction of any error in/amendment of an application at any time before
or after acceptance of an application for registration under Section 18 or a notice of opposition/counter-statement under Section 21. Section 21 of the
Act deals with opposition to application for registration. Sub-section (5) of that section provides that 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. This provision shows that in allowing an application and deciding
an opposition the Registrar is not confined to grounds of opposition taken by the opponent but he is free to act any further grounds. This section does
not precisely provide the nature of permissible corrections/amendments; therefore, the tribunal has to fall back on the provisions for amendment
contained in the Code of Civil Procedure. Sections 152 and 153 of that Code deals with the wide powers of the court to allow amendments. Rule 17 of
Order VI of the Code provides for amendment of pleadings to which courts have given liberal construction. The amendment may include substitution
of an amended document in place of the original and by amendment new matter can be added. In Tildeslev v. Harper (1878) 10 Ch. D. 393, it was
observed that leave to amend ought not to be refused unless the court was satisfied that the party applying was acting mala fide or that by his blunder
had done some injury to the other side which could not be compensated by payment of costs or otherwise.
The above rule of law, which been well established and often accepted as correct has been approved by the Supreme Court in Pirgonda Hongonda
Patil v. Kalgonda Shidgonda Patil MANU/SC/0002/1957 , and the learned Judges observed as under:
All amendments ought to be allowed which satisfy the two conditions (a) of not working injustice to the other side, and (b) of being necessary for the
purpose of determining the real questions in controversy between the parties...amendment should be refused only where the other party cannot be
placed in the same position as if the pleading had been originally correct, but the amendment would cause him an injury which could be compensated
in costs. It is merely a particular case of this general rule that where a plaintiff seeks to amend by setting up a fresh claim in respect of a cause of
action which since the institution of the suit had become barred by limitation, the amendment must be refused, to allow it would be to cause the
defendant an injury which can not be compensated in costs by depriving him of a good claim. The ultimate test therefore, still remains the same; can
the amendment be allowed without injustice to the other side, or can it not?
There is no doubt that the Registrar has ample power to allow amendment of the notice of opposition including the introduction of a new ground in
his discretion but the discretionary power must be exercised judiciously. The Assistant Registrar has not exercised his powers judiciously. The matter
was set down for 8.5.2000 for hearing and parties were informed by notices dated 13.4.2000 and the respondent No. 1 on 5.5.2000 sought to add a
new objection under Section 12(1) in the notice of opposition by annexing an amended notice of opposition, which amendment the Assistant Registrar
allowed in the hearing on 8.5.2000 without giving a reasonable opportunity to the appellant to file reply or to set up his defence under Section 12(3) of
the Act. Though the respondent No. 1 has not specifically raised objection under Section 12(1) of the Act, the appellant has in his counter-statement
has said that the mark he has sough for registration is registerable under Section 12(3)/33 but the defence under Section 12 (3) has not at all been
considered by the Assistant Registrar. Accepting of an amended notice of opposition annexed to the petition, a before the allowing the interlocutory
petition, does not appear to be a normal practice of the tribunal. The contention that no reasonable opportunity was afforded to file reply/set up
defence under Section 12(3) is sustainable as has the reasonable opportunity given to the appellant, it would have enabled him to strengthen his
defence against this specific subsequent objection.
However, the Assistant Registrar ought to have given notice of interlocutory petition to the appellant in compliance of the principles of natural
justice. Without complying with the principles of natural justice the Assistant Registrar thus recorded in his order ""I find that the instant interlocutory
petition of the opponent is genuine and it deserves to be allowed. I, therefore, allow the same and thus the opponents are very much entitled to
maintain their objection under Section 12(1) of the Act by virtue of the said registration in their name."" Such a suo motu decision-without giving a
reasonable opportunity to be heard to the other side-is bad in law. The learned Counsel for appellant, in support of his contention, placed reliance on
the cases of Goverdhan Bang and Jt. Family of Kaniram Laxminarayan v. Govt. of the Union of India, Owning G.I.P. and N.S. Railways AIR 1953
HYD 212 (Vol. 40, C.N. 101), A.M.S. Parmasiva Mudhaliar v. A.M.S. Manirathina Mudhaliar and Anr. AIR 1983 NOC 200 (MAD) and Modi
Spinning and Weaving Mills Co. Ltd. and Anr. v. Ladha Ram and Co. MANU/SC/0012/1976 . These cases are not required to be discussed as these
will be of not much help to him by reason of difference of facts therein and the issue before us is whether the Assistant Registrar has exercised his
discretionary power to allow or disallow amendment judiciously?
The respondent No. 1 has claimed that their mark has continuously been in use in India for the last 25 years. The Assistant Registrar has also
observed in his order that the respondent No. 1 are the prior adopter and user of the trade mark SHESHA BRAND for the last 25 years. Form the
evidence filed by the respondent No. 1, it is observed that the respondent No. 1 is an importer-importing tobacco products from India and they have
neither sold tobacco products in India nor manufactured tobacco products in India. In Annexure-III of the evidence in support of opposition, they have
furnished a chart showing yearly (1971-72 to 1992-93) import from India in Indian rupees. In Annexure-IV certain copies of invoices and Bill of
Lading (1978-79 to 1992-93) which show the No. of packages/cartons of tobacco products purchased (bearing the word mark 'SHESHA BRAND'
and device of respondent No. 1) from firms from Calcutta. It may be pointed out here that user claimed in support of the applications (Nos. 412285
dated 22.10.1983 and 466762 dated 29.1.1987, respectively, referred to in the notices of opposition) must be with reference to user in this country, but
we are do not see any such evidence available on record. It is not clear from the impugned order as to under what arrangement the exporting Indian
firm used such mark on the invoices.
In view of the above, we do not consider it necessary to consider other contentions of the learned Counsel for the appellant. We are of the opinion
that the appeals have some merits.
Accordingly, the appeals are allowed and the orders of the Assistant Registrar are set aside. The matter is remanded back with a direction to the
Assistant Registrar to decide the matter afresh in accordance with law. As the main appeals have been allowed M.P. No. 14/2006 becomes
infructuous.
However, there will be no order as to costs.