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Judgment
Prabha Sridevan, J
1 . This appeal has been filed against the order passed by the Learned Assistant Registrar of Trade Marks dated 18th December 2008, dismissing the
Opposition BOM-52375 and allowing the registration to proceed Application No. 551792 in Class 5. The appellant is the manufacturer of health care
products including pharmaceuticals and medicinal preparations. The appellant claimed that they have a significant presence in India and abroad. On
30th May, 1991 one Duphar B.V. filed an application for registration of the trade mark LUVOX in Class 5 for treatment of mental disorders under
application No. 551792. It was advertised in the Trade Marks Journal dated 16th February, 1998. This was opposed by the appellant and the notice of
opposition is dated 7.4.1998. It was served on the applicant's attorney. Section 21(2) of the Trade and Merchandise Marks Act, 1958 (in short 'Act')
provides for filing of counter statement upon receipt of notice of opposition and Rule 52 (old Rules) provides for filing of affidavit of evidence by the
opponent after receipt of applicant's affidavit. According to the appellant, Counter Statement was received from the respondent herein and not Duphar
B.V. who was the applicant for registration. This Counter Statement was filed on 18.9.1998 and served on the appellant on 14.12.1998. The appellant
learnt that the respondent has filed a Form TM 16 for amending the name of the applicant and filed documents to support the same. According to the
appellant the respondents did not file any documents. The appellant sent message to the Registrar of Trade Marks on 15.3.1999 that they have not
received a copy of the TM-16 and they cannot offer any comments. Thereafter on 12.10.1999 the Registrar forwarded the copy of TM-16. This letter
shows that the company Duphar B.V. had changed its name to the name of the present respondent. On 18.12.2008 the impugned order was passed.
When the trade mark application was filed it was filed by M/s. Duphar B.V. This is seen from the advertisement in the Trade Mark Journal
(Exhibit-B) published on 16. 02.1998. The appellant herein filed Notice of Opposition on 07.04.1998. We are informed by the learned counsel for the
respondent that the name of the respondent herein underwent a name change and therefore on 04.06.1998 a TM-16 was filed for change of name
from Duphar B.V to Solvay Duphar B.V. It is not clear even from the impugned order, what happened to this TM-16. Even the learned Counsel for
the respondent is unable to tell us the fate of this TM 16. On 18.09.1998 another TM-16 was filed for change of name from Solvay Duphar B.V. to
Solvay Pharmaceuticals. Along with this, the counter statement was filed. This was apparently ordered on 16.09.2004, but the parties were not
informed of this and in the impugned order it is stated so. In the meantime, the appellant had filed application for extension of time to file his evidence
and had also stated that the TM-16 may be dealt with on its merits. It is seen from the impugned order that ""the intimation regarding TM-16 is allowed
was not communicated to the parties
3 . When the opposition proceedings were taken up, the counsel for the appellant raised two objections (i) that the original application is in the name of
Duphar B.V. whereas TM-16 was filed for change of Solvay Duphar B.V. to Solvay Pharmaceuticals B.V. (ii) He also submitted that when there is
nothing to show the change of name of the respondent, the counter statement filed by a third party ought not to have been received and the application
must be treated as abandoned. However, the Registrar refused to consider any of these objections and granted registration to the respondent.
Against this the appeal has been filed.
4 . The learned counsel for the respondent placed before the IPAB, the counter statement to this appeal along with evidence. The learned counsel for
the appellant submitted that this evidence cannot be taken on record since it was not filed before the Registrar and the entire proceedings was vitiated
by irregularity.. He prayed that the matter may be remanded.
5 . The learned counsel for the respondent submitted that the appellant had knowledge of all that happened and even this evidence had been produced
before the Registry and vehemently contended that two TM-16's were filed (i) on 04.06.1998 and the other on 18.09.1998 and the appellant having
failed to file his evidence and he cannot now seek any indulgence.
We find from the impugned order that neither of the two objections raised by the appellant have been answered. The impugned order is that
'It is correct to say that the intimation regarding TM-16 was not communicated to the parties.'
Thereafter by the impugned order it is the appellant who has been treated as the party in default. It is as if the appellant to whom the order regarding
change of name was not communicated should have raised objection. It is the Trade Marks registry which ought to have considered whether two TM-
16 applications that have been filed form a continuous change so that the change of name from Duphar B.V. to Solvay Pharmaceuticals B.V. is
complete. The Registry should also have seen that notice of the change has been duly intimated. The appellant who has received the counter
statement from a third party would naturally not be bound to file the evidence in accordance with Rule 52 (old Rules). We called for the records and it
was clear that the appellant's response has been asked first for TM 16. The appellant had also made an endorsement that TM 16 may be ordered in
accordance with law and once it has been ordered it is the duty of the Registry to communicate the same granting time to the appellant to file his
evidence from the date on which the name change has been recorded in this case. It must be remembered that the counter statement was not filed by
the original party Duphar B.V. but by the successor in interest, that is, two name changes had been undergone. Therefore the reply to the counter
statement was dependent on the Registrar ordering the TM 16. If so, time for filing evidence must run from the date on which Counter Statement is
duly entertained, if served on the person within the notice period. These orders are quasi judicial in nature and the principles of natural justice cannot
be forgotten.
7 . We are not satisfied with the manner in which these opposition proceedings has progressed. The records from the Registry are before us. It is
seen from the records that there is nothing to show that the Tm-16 was filed on 04.06.1998 and no orders were passed. Even the learned counsel for
the respondent had no knowledge of when that change of name was ordered. Without ordering the first TM-16, the 2nd TM-16 could not have been
entertained. However, the 2nd TM-16 had been entertained and it was ordered on 16.09.2004. It was not communicated to the appellant who
therefore had no occasion to file his evidence. It goes without saying that if the Registry did not accept the 2nd TM-16, the counter statement would
not have been taken on file at all and the matter would have been abandoned at that stage. After recording the fact that the TM-16 had not been
communicated to the appellant, the Registrar could not have heard the opposition proceedings. We think there was a failure of principle of natural
justice in not giving the opponent an opportunity to file his evidence. In the first place, Registry erred in not communicating the fact that both the TM-
16 had been allowed and the counter statement has been taken on file and giving an opportunity to the appellant thereafter to file his evidence. In
these circumstances, we have no alternative to set aside the impugned order and send the matter back to the Registrar to deal with it from the stage at
which the Registry received the counter statement. The appellant shall have three months from the date of receipt of this order and thereafter the
respondent will have time to file his evidence in accordance with law and the Registrar shall pass appropriate orders. If the registration certificate has
been already issued it shall stand cancelled and the respondent must surrender the certificate. No costs.