AI Structured Summary
Not yet generated for this judgment
Judgment
Z.S. Negi, J
M/s Devans Modern Breweries Ltd. has preferred the above appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the
Act) against the order dated 09.06.1999 passed by the Deputy Registrar of Trade Marks, Chennai in the opposition to application No. 557307B in
class 32 whereby he did not take the notice of opposition on record by stating that the same was time barred and void ab initio.
The brief facts of the case is that on 28.08.1991 M/s McDowell & co. Ltd., filed an application No. 557307B in class 32 for registration of trade
mark GOLD RIBAND and the said application was advertised, before acceptance under the proviso to Sub-section (1) of Section 20 of the Trade
and Merchandise Marks Act, 1958, in the Trade Marks Journal No. 1193, dated 16.02.1999 at page 2457. Thereafter, the appellant herein filed Form
TM-5 dated 22.03.1999 before the Registrar of Trade Marks, Calcutta but the Registrar of Trade Marks, Calcutta returned the Form TM-5 to the
attorneys of the appellant by letter dated 20.05.1999 with the advise that the Form TM-5 be filed together with Form TM-44 with the Registrar of
Trade Marks, Chennai as the jurisdiction is Chennai and not Calcutta. Accordingly, the attorneys of the appellant sent the Form TM-5 along with Form
TM-44 by registered post dated 4. 06.1999 to the Registrar of Trade Marks, Chennai. The Registry of Trade Marks, Chennai, by letter No. TOP/3557
dated 16.08.1999 informed the attorneys of the appellant that the prescribed fee in respect of request on Form TM-5 has not been paid. In this context
the Registry drew the attention of the appellant's attorneys to Rule 11(4) and (5) of the Trade and Merchandise Marks Rules, 1959 and has stated that
besides non-compliance of the said rule, the Form has not been filed before the time prescribed therefore and thus the request on Form TM-44 along
with the copy of TM-5 filed at that office was by then time barred in terms of the above referred rules. Further, the Registry has requested the
appellant's attorneys to show cause within 21 days as to why the aforesaid notice of opposition filed on 09.06.1999 (without fees) should not be treated
as void ab initio. On receipt of the letter dated 16.08.1999 from the respondent No. 1, the appellant sent by registered post a letter dated 20.08.1999
stating the complete facts of the matter in chronological order. Thereafter, respondent No. 1 appointed a hearing in the said matter and issued hearing
notice through letter No. TOP/17503 dated 03.01.2008 fixing the hearing before him on 6. 02.2008 at 11.00 A.M. The hearing held on 06.02.2008 in
the Trade Marks Office, Chennai and the appellant's notice of opposition was not taken on record and was declared as time barred as well as void ab
initio. By letter No. TOP/3750 dated 15. 05.2008, the Deputy Registrar of Trade Marks, Chennai communicated the impugned order to the attorneys
of the appellant, the relevant portion of which reads as under:
With reference to the above, I am to inform you that in view of Deputy Registrar's order dated 09.06.1999, the opposition to application No. 557307B
in class 32 cannot be taken on record and time barred and void ab initio.
3 . The appeal filed by the appellant has not been numbered as the Registry of this Appellate Board felt that before the proposed appeal is taken on
record by allotting appeal number, the maintainability of the appeal is required to be determined by the Appellate Board. Hence, the matter came
before us on 26.03.2009 for determination of maintainability of the proposed appeal filed by the appellant.
Shri Sudarshan Kumar Bansal, Advocate appearing for the appellant, stressed that the order dated 09.06.1999 of the Deputy Registrar
communicated to them by letter dated 15.05.2008 is an order or decision of the Registrar within the meaning of Section 91 of the Act as the same
affects the rights of the appellant. He contended that the jurisdiction for filing notice of opposition is the place where the branch office of the Registrar
is situated, as contained in the advertisement published in the Trade Marks Journal. Undoubtedly, any person who is interested or who intends to
oppose the registration by filing an opposition has to rely on the jurisdiction of Registrar as shown in the advertisement published in the Trade Marks
Journal and accordingly to file notice of opposition with the jurisdictional Registry and in the present case the jurisdictional Registry as per the
advertisement appearing in the Trade Marks Journal is Calcutta. It is absolutely unjust that the appellant should be made to suffer for the wrong
committed by the Trade Marks Registry by mentioning wrong jurisdiction in the aforesaid advertisement. Even otherwise, there are neither latches nor
negligence on the part of appellant as the attorneys of the appellant have immediately taken action to file the notice on Form TM-5 along with Form
TM-44 with the Registrar of Trade Marks, Chennai.
5 . Before entering into the discussion, it would be worthwhile to refer to the judgment of the High Court of Delhi in the case of Ratan and Company
v. Assistant Registrar of Trade Marks as reported in (Suppl) (1) PTC 635 Del., wherein the Court had occasion to consider the expression 'from any
order or decision of the Registrar under this Act' occurring in Sub-section (2) of Section 109 of the Trade and Merchandise Marks Act, 1958. The
analogous provision contained in the Trade Marks Act, 1999, which repealed the Trade and Merchandise Marks Act, 1958, is Sub-section (1) of
Section 91 of the repealing Act. The Court after referring to similar provisions contained in other statutes, observed as under:
To my mind the object of Section 109(2) of the Act is to give a right of appeal to a party aggrieved by some order which affects his right or liability.
The words "" from any order or decision of the Registrar under this Act"" though very wide do not interlocutory orders, which are merely procedural or
processual and do not affect the rights and liabilities of the parties. The legislature could not have intended that the parties should be harassed with
endless expense and delay by appeals from such procedural orders. It is open to a party to set forth the error, defect or irregularity, if any, in such an
order as a ground of objection in his appeal from the final order in the main proceedings.
The Court went on to further observe as under:
A decision means a concluded opinion. It is an authoritative answer to the question raised before a court. It is the settlement of controversy submitted
to it. Decision implies the exercise of a judicial determination as the final and definite result of examining a question. An order granting extension of
time is not of such a nature. It is not such a decision as to give the aggrieved person a right to appeal. It is just a procedural order in aid of the
proceedings.
Applying the ratio of the above judgment we are of the opinion that the contents of letter dated 15.05.2008 of the Deputy Registrar of Trade Marks,
Chennai, though however short and not supported by reasons, is an order communicated to the attorneys of the appellant because by that letter the
Deputy Registrar has intimated its concluded opinion and such a concluded opinion or decision affects the right of the appellant/opponent to oppose the
registration sought for by the applicant/respondent. The contents of communication dated 15.5.2008 is a definitive decision of the first respondent to
the effect that the notice is time barred and void ab initio. The letter itself says that 'in view of the Deputy Registrar's order dated 9. 6.1999' implying
thereby that the Deputy Registrar has after exercising his/her judicial determination has come to the conclusion that the opposition to application No.
557307B in class 32 cannot be taken on record as time barred and void ab initio. Prima facie, we are of the view that the instant appeal is maintainable
under Section 91 of the Act. We, therefore, direct the Registry of this Appellate Board to take the appeal on record.