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Judgment
Prabha Sridevan, Chairman
1 . The respondent applied for registration of the mark ""Taj"" and the device ""Taj Mahal"" in respect of rice for export to Australia under No. 515949 in
Class 30. It was advertised before acceptance in Journal No. 1106 dated 1-5-1996. The appellant opposed it. But the registration was ordered.
Therefore the aggrieved opponent has filed this appeal.
This is the second round of litigation. In the first round, the 2nd respondent had been granted registration of the mark by order dated 14-3-2000. The
appellant filed an appeal before the Delhi High Court in C.M. 370/2000. The learned Judge commented that the 2nd respondent had proceeded ""on a
weak wicket and.....had misdirected himself"". The matter was remanded for reconsideration by order dated July 31, 2000, allowing the parties to
supplement their pleadings.
3 . As it happened, the matter was heard by the same officer, and he again ordered registration. The proceedings are governed by the Trade and
Merchandise Marks Act,1958 (Act in short). The 2nd respondent thought that Section 55 of the Act applies to a person who had no place of business
within India and who was actually importing from India. It does not. This one factor really vitiates the entire order as we shall see hereafter. This
really clinches the case, so the grounds relating to 'prior user' or 'special circumstance' are really of no merit.
The basic facts are, one Sid Varma and Ms Praveen Varma partners of and trading as the respondent U.V. Enterprises (UV) in Australia applied
for registration of the impugned mark, for export of Basmati rice to Australia. UV claimed user from 15-1-1977. It was advertised before acceptance.
On 3-7-1996 the appellant New Bharat Rice Mills (NBR) filed notice of opposition. UV filed their counter. NBR filed its evidence in opposition. UV
then filed their evidence proved by the affidavit of one Deepak Varma. NBR filed its reply of evidence. We have already seen how the matter came
back on remand.
5 . The Registrar called upon the parties to file their additional pleadings as per the directions of the Hon'ble Delhi High Court. The amended pleadings
filed by the Appellant herein, is the amended notice of opposition. The respondent filed written submissions signed by one A. Sinha the counsel.
6 . The learned counsel for the appellant submitted that the impugned order was unsustainable and was based on no evidence, and suffered from a
wrong appreciation of law. He submitted that the affidavit of Deepak Varma cannot be accepted since he is not a partner of the respondent firm, or
an employee, but is admittedly only a shareholder. He submitted that in the advertisement the respondent had given an address for service which
meant that there was no place of business, but subsequently the affidavits and written submissions mentioned the address for service as a ""working
office"". He submitted that there was no such thing as a working office. He submitted that the respondent has adopted contradictory stands regarding
whether he was an importer of rice or exporter. He submitted that the facts show that respondent is an importer so Section 55 of the Act will not
apply. He submitted that written submissions cannot be construed as pleadings and if they are ignored, nowhere is there a plea of ""special
circumstance"" and the Registrar cannot go beyond the pleadings. He submitted that Section 33 of the Act too is not applicable, since there is no user
prior to 1998. He submitted that the respondent cannot rely on any evidence not produced along with the counter statement, and he most certainly
cannot rely on documents filed along with the registration application. He submitted that if those documents are ignored, then there is no proof of
usage. Even assuming without admitting that those documents can be looked into, Annexure R(colly) only show that some exporters exported Taj rice
to respondent. Then it is only those exporters who can claim user not the respondent. In 1977 there was a Control Order and rice could be exported
only through a canalizing agent viz. STC, and it was removed only in April 1977. The appellant on the other hand has produced evidence of user from
1-7-1978. Therefore even Section 33 of the Act can help only the appellant. The appellant submitted that the impugned order must be set aside.
The appellant relied on certain decisions which will be dealt with later.
8 . The learned counsel for the respondent submitted that the impugned order must be confirmed. He submitted that procedure was only a handmaiden
to justice, therefore the Registrar was perfectly justified in considering the affidavit filed by Deepak Varma and the evidence filed by him. He is the
son of the partners of the respondent firm and therefore was in the know of things, and he was also a shareholder. He relied on a paragraph from the
Bank Nationalisation case. He submitted that the respondent had filed documents to show that the respondent was using the mark ""Taj"" and the
device right from 1977. He submitted that the invoices and the bills of lading forming part of Annexure R(colly) cannot be brushed aside. He submitted
that the respondent was entitled to invoke the provisions of Section 55 of the Act. The exporters were exporting on behalf of the respondent. The
impugned order did not deserve interference.
The respondent relied on certain decisions which will be dealt with later.
1 0 . We have considered the pleadings, law and facts. The case was argued extensively and elaborately by both the counsel who also relied on many
decisions. But we feel that shorn of all the details it is a simple case in essence. The matter in a nutshell is this. A person who does not carry on
business in India and imports rice from India, has obtained registration of a mark by claiming that he is the exporter in India and the act of export is
use"" by him. This has been accepted by the Registrar.
The documents to show usage proof were filed in the High Court along with the objections which were signed by the advocate. It reads that Shri
Deepak Varma who is one of the shareholders of the respondent was competent to file the reply. The learned counsel for the respondent relied on a
passage from the Bank Nationalisation case where the Supreme Court observed that the shareholder can object to the Nationalisation.
We do not comprehend how that will apply to proceedings to which the Evidence Act applies. How can a shareholder speak of the ""usage proof?
We were informed that the said person was the son of Sid and Parveen Varma, and hence competent. Neither the affidavit filed before the registrar
nor the one filed before the High Court says that it is in that capacity that he has knowledge of the records. He could have deposed that his parents
are in Australia and are unable to file their affidavit and that he on their behalf was giving evidence. We may have accepted that. But the prime
witnesses have not given evidence. We have seen the annexure 'F' which is the affidavit filed by the Counsel for the respondent dated 2-9-1998,
annexure 'L' signed by the advocate after remand dated 27-9-2000, and the reply filed in the High Court dated 1-5-2002. In none of the documents is
there an affirmation that it is made on the basis of personal knowledge or that the person signing the document is speaking from the records. Then
these documents are only hearsay evidence and inadmissible.
1 3 . Pleadings are to be signed by the party and its pleader, if any. This is in accordance with Order VI, Rule 14 C.P.C. It is true that the procedure
of this Board is not strictly bound by the provisions of C.P.C. At the same time we do not think that there should be an extreme laxity in approach.
The proviso to Rule 14 says that pleadings may be signed by any person duly authorized by the party, in case the party is by reason of absence or for
other good cause unable to sign the pleading. Therefore, even if pleadings are signed by the Counsel it is not an incurable defect. But here there is
nothing to show why Sid Varma and his wife who are partners of the respondent chose not to sign even one affidavit on behalf of the respondent,
without giving any reason whatsoever for not signing. In the original counter statement (if we may call it that) which is the affidavit of Deepak Varma
we do not find any pleading regarding honest concurrent user.
The appellant filed a notice of opposition on 29.6.1996. In the Counter Statement filed by the respondent which was not signed by the party the
points taken are that their adoption was honest and prior to the adoption of the appellant and that it was senior and continuous, the respondent plead
continued, extensive and exclusive user in the business in domestic as well as foreign markets, they claim that the mark was capable of distinguishing
the goods, that the appellants are not the proprietors of the trade mark ""Taj Mahal"" and their adoption is fraudulent, not bonafide. Nowhere in the
counter statement that was originally filed, the respondent claims ""honest concurrent user"". In the annexure 'F' which is the affidavit filed by Shri
Deepak Varma there is no claim of ""honest concurrent user"". In the original order before the Registrar, the Assistant Registrar has only gone on the
basis of ""prior user"" of the respondent. It is only in the written submission that was filed by the respondent it is stated that it was user for sale of
Basmati rice in Australia only; and that it is a special circumstance and that there is no possibility of confusion, and is an honest concurrent user. We
have already referred to the pleadings that the respondents were ""selling goods bearing the said trade mark ....."" in domestic as well as in foreign
markets. The written submission that has been filed can only be taken as an argument and not as pleadings. Therefore, if any fresh plea is made it
ought to have been verified and signed by the party or the pleader. In AIR 1967 Mad 148 - T.J. Balaji Chettiar Vs. Hindustan Lever Ltd. Bombay it
was held that an affidavit filed under Rule 54 must be filed so as to fix the other side with a fair notice of the evidence. This applies to this case.
In the first counter statement in paragraph 6 it is stated that the trade mark was for export to Australia only. In the written submission it is pleaded
that from 1997-98 the respondent has imported Basmati rice with a registered trade mark. The respondent himself is unclear if he is importing rice or
exporting rice. Proprietorship of trade marks in Australia for import to Australia will be governed by the trade mark laws of that country. We are not
concerned with that.
1 6 . We are governed by the Trade mark laws in India i.e., The Trade and Merchandise Marks Act, 1958. The respondent had claimed that they
export rice and therefore entitled to invoke Section 55 of the Act. They have also claimed that there are documents to show user from 1997. We
would be justified in ignoring all the documents since they have not been marked by the proper person. The decisions in this regard were cited which
we will refer to in later paragraphs. But, let us see what the documents are. The documents are filed as annexure 'R' (Colly).
One is a letter dated 26.8.1998 by Shri Vishnu Eatables (India) Ltd. who call themselves rice exporters. This letter states that they have supplied
Taj brand Basmati rice to the respondent and the respondent is ""a regular buyer of Taj brand rice"" since 1977. From this it is clear that the export is
not by the respondent. They do not sell rice. It is only Vishnu Eatables which sells rice and it is also not clear who is the registered proprietor of the
Taj brand referred to in this letter. This letter does not establish user in India from 1977. In any case, it will be Vishnu eatables which can take
advantage of the Section 55 of the Act, and not the respondent.
The next letter is by JAC Bros. who are again exporters. They certify that they have supplied Taj brand Basmati rice to the respondent since
1980. This is of no use to the respondent since user from 1980 will not give respondent priority of user as the appellant has claimed user from 1-7-
1978. The respondent should prove user from prior to 1-7-1978.
The third letter is by Wastiram & Sons Private Ltd. who certify that they export Basmati rice with trade mark Taj to the respondent and the first
order was dated 15. 1.1977. Attached with this is a bill of lading which no doubt shows the date as 15. 1.1977 but the respondent is shown as
consignee and price is payable at destination. The sale takes place at Australia, the respondent being the importer. The respondent is not the exporter.
Further unless there is evidence to show that the Taj brand referred to in the bills of lading and the letters mentioned above belonged to the
respondent, these documents are of no use to prove prior user. If the letters had stated that they were exporting Taj Brand rice belonging to the
respondent, then they may help the respondent. Even then, there must be some explanation for Wastiram exporting the respondent's rice to the
respondents themselves. Sale is the transfer of goods from the seller to the buyer. The respondent is clearly the buyer of rice in Australia, so they can
not be the seller of the same rice from India. The weak explanation given on behalf of the respondent that all those exporters were exporting on their
behalf can not be accepted in the absence of pleadings and proof.
20 . The appellant in his evidence has produced through the partner of NBR, Om Parkash Khosla, the invoices of consignment bills, export bills, supply
orders in the name of the respondent or their sister concerns, advertisement through the trade magazines have also been marked. The appellant has
also marked the earliest certificate in TM No. 338004 dated 30th June 1978 and the mark with device in TM No. 387177 dated 3rd march 1982
associated with 338004. It is true their earliest evidence of user is from 1980, their explanation is that the records from 1978 is not available. But the
respondent has no better evidence to prove prior user in India as an exporter, and it is the respondent who should first prove that it is entitled to
registration. The burden is fixed on the applicant. This burden has not been discharged.
The appellant relied on the following decisions:
Burden
(i) AIR 1953 SC 357 -National Sewing Thread Co. Ltd. Chidambaram Vs. James Chadwick and Bros. Ltd. - The Registrar of Trade Marks,
Intervener.
This was cited to show that the burden of proving that the trademark is not likely to deceive or cause confusion is on the applicant.
(ii) AIR 1972 CAL 261 -Prem Nath Mayer Vs. Registrar of Trade Marks and another, also states that the onus is on the applicant.
In this case both the marks are identical, that is why the respondent insisted that they want the marks for export only. We have already held that there
is no export.
Section 12(3) of the Act
(i) 1981 PTC 1 -Shri Dalip chand Aggarwal and others trading as New Era Electric Works, Delhi Vs. M/s. Escorts Limited, New Delhi is regarding
the proper exercise of judicial discretion, since there is no absolute right to have the mark registered, and that public interest is also to be kept in mind.
(ii) AIR 1967 MAD 148 -T.J. Balaji Chettiar Vs. Hindustan Lever Ltd. Bombay considers how honest concurrent user should be proved. In that case
the Court found that the evidence was worthless and that affidavits filed under Rule 54 must be filed under such circumstances as will fix the other
side with a fair notice of the evidence. Otherwise it will not be evidence.
In this case evidence not filed in accordance with law.
Section 55 of the Act
(i) 1986 PTC 352 -Flower Tobacco Company Vs. State and Another
This states that user in respect of export only would constitute use for the purpose of the Act.
In this case respondent is not an exporter.
Prior User
(i) 1998 PTC (18) SC 297 -Manmohan Garg Vs. Radha Krishna Narayan Das deals with the importance of prior user.
There is no proof of prior use.
Pleadings
(i) AIR 1987 SC 1242 -Ram Sarup Gupta (dead) by L.Rs., Vs. Bishun Narain Inter College and others held that in the absence of pleadings evidence
cannot be considered.
(ii) AIR 1966 SC 735 - Bhagwati Prasad Vs. Chandramaul held that a plea even though not specifically made, yet covered by an issue by implication
may be relied on if it is satisfactorily proved by evidence. But it would be injustice to allow a party to rely upon a matter in respect of which the other
party did not lead evidence and had no opportunity to lead evidence.
Pleadings have been signed by neither the party nor the Counsel.
Mode of Proof
(i) AIR 1968 BOM 112 -Sir Mohammed Yusuf and another Vs. D and another held that even if entire document is proved it cannot amount to proof
of contents of document. The only person competent to speak of the content is the writer thereof and unless the writer is examined, the evidence of
contents is hearsay.
(ii) AIR 1993 DELHI 330 -Smt. Ram Jawai and others Vs. Smt. Shakuntala Devi and others
The person competent to speak must be examined to establish a contested fact.
(iii) AIR 1989 SC 1269 - Smt. Chandrakantaben J. Modi and Narendra Jayantilal Modi Vs. Vadilal Bapalal Modi and others
Entries in account books cannot be proved if nobody takes the responsibility of supporting the correctness of the entries in the account book.
(iv) VIII RPC 137. Apollinaris matter -In this case it was held that ""An importer of foreign goods cannot register as his own the trademark of the
foreign producer, whether the goods are produced by a course of manufacture or by a process of nature.
These decisions are in favour of the appellant, since the persons who ought to have spoken of user viz. Sid Verma and Praveen Verma who ought to
have given evidence have not come forward to do so and the Board would be justified in drawing adverse inference.
They have also relied on -
( i ) 1999 PTC 72 (DEL) -T.T.K. Prestige Ltd. And Another Vs. Har Prasad Gupta and Ors.
It was held that to defeat the right of the registered proprietor to use the mark, the user claimed should be prior to the use of the mark as well as date
of registration.
(ii) 1997 PTC (17) (DB) -K.L. Rajakrishnan Vs. Parthas Textiles, Kottayam is about judicial exercise of discretion by the Registrar.
(iii) Mohan Goldwater Breweries (Private) Ltd. Vs. Khoday Distilleries Private Ltd. & another was relied on to show the scope of Section 18 of the
Act which permits a person claiming proprietary interest and proposing to use the mark, without actually using the same.
Here respondent's user not proved.
The respondent relied on -
(i) 1970 SCC (1) 248 -Rustom Cavasjee Cooper Vs. Union of India was relied and it was urged that it was held a shareholder can maintain the
petition under Section 2 of the Act. The passage relied on does not help the petition.
(ii) AIR 1997 Bom 225 -Central Bank of India Vs. Tarseema Compress Wood Manufacturing Company and others
(iii) AIR 1959 SC 960 -Bhinka and others Vs. Charan Singh dealt with presumption under Section 79 of the Evidence Act.
This does not help the respondent.
(iv) AIR 1960 SC 142 -Corn Products Refining Co. Vs. Shangrila Food Products Ltd.
(v) 1997 PTC (17) -Bimal Govindji Shah Vs. Panna Lal Chandu Lal deals with the rights of a prior user.
(vi) PTC (Suppl) (2) 564 (Del) -L.D. Malhotra Industries Vs. Ropi Industries
This section saves vested rights. This means that the anterior use by a person of a trade mark is protected under law. This was the position at
common law. The common law rule was that a mark did not become a 'trade mark' until it had been publicly used as such by which title to a trade
mark could be acquired by the first proprietor of it (See GEC case (supra)). The 1958 Act recognized this principle of common law and embodied it in
Section 33.
On facts it appears to me that Ropies had a priority both in adoption of the mark and in the user thereof and therefore Malhotras were not entitled to
claim the mark as proprietors and apply for registration thereof. This is the crucial point in the case.
Section 33 of the Act can be invoked by a person who proves prior user not the respondent.
(vii) AIR 1995 DELHI 300 -N.R. Dongre and others Vs. Whirlpool Corporation and others was relied on to show the rights of a prior user.
(viii) 1995 PTR 233 -Pritam Das Vs. Anil Food Industries
Merely because the plaintiff has filed an application for registration of trade mark prior in time in the absence of anything to show that the said trade
mark was used by the appellant than the respondent.
(ix) AIR 1996 SC 3295 -Cycle Corporation of India Ltd. Vs. T.I. Raleigh Industries Pvt. Ltd. and others was relied on to show the rights of a user for
and on behalf of the registered proprietor. In this case there was a collaboration agreement.
In the case on hand there is no such proof.
(x) 2004 (28) PTC 347 (Del) -George V. Records, SARL Vs. Kiran Jogani & Anr.
( x i ) 2001 PTC 889 (Del) (DB) -Veerumal Praveen Kumar Vs. Needle Industries (India) Ltd. & Anr.
(xii) AIR 1963 SC 1882 -London Rubber Co. Ltd. Vs. Durex Products Incorporated and Anr was referred to, to support his case of honest and
concurrent user.
(xiii) Arbitration Law Reporter 1984 page 213 -Kores (India) Ltd. Vs. M/s. Khoday Eshwarsa & Son, and another was also relied on for the same
purpose.
These citations cannot help the respondent who is neither an exporter and who has not proved prior user.
Is the respondent an exporter? The reply filed by the respondent shows at Para b) that the respondent is a registered partnership firm having its
office at 9/5 Wharf Road, Gladesville, NSW 2111, Australia, and its address for service at C-559, Defence Colony New Delhi, Para (d) states that the
respondent has imported Basmati Rice into Australia from 1997-1998 with the registered trademark TAJ with the device Tajmahal. It describes the
bag containing the rice and the declaration it bears: - ""Importers and Wholesales
Taj Foods sales Pty. Ltd.
t/a U.V.Enterprises,
So the respondent is an importer in Australia. The respondent does not have a place of business in India. It is true that in the affidavit filed by Deepak
Varma, he has sworn that the office of the respondent is at Australia and a working office at New Delhi. This cannot be accepted. The proviso to
Section 18(3) of the Act requires the applicant to disclose an address for service within the territorial limits of the Trade Marks registry where the
application is filed, only if the applicant does not have a place of business in India. The advertisement in the Trade Marks Journal also refers to an
address for service which is the above Delhi address. Therefore the respondent does not have a place of business in India and the statement in the
affidavit that there is a ""working office"" is clearly an afterthought to bolster their claim that they are exporters. If the respondent does not have a place
of business in India and only imports rice from India, then Section 55 of the Act does not apply.
We must understand the purpose of Section 55 of the Act. There are situations where ""use of the mark"" is material under this Act and other laws.
There may be persons who export goods from India, who cannot therefore be said to ""use"" the mark in India. Then they will be denied the protection
of this Act and such other laws. So law creates a fiction under Section 55 of the Act. The law treats any act done in relation to the goods so exported
as if it is use within India, if it is done in relation to goods sold or otherwise traded in India. So the exporter selling goods under a mark can claim he is
using"" the mark within India by virtue of this legal fiction. The respondent cannot invoke this provision.
The words used in the section are ""goods to be sold"". The respondent buys rice from India, he is the importer. Of course he later sells the rice in
Australia. That is not relevant for us. The futile submissions made by the learned counsel that the exporters are his agents are all without basis. If the
respondent was the seller by himself through the agent, then the respondent cannot also be the buyer, because one cannot sell to oneself. The
respondent has obtained registration in Australia as an importer so the respondent buys rice sent from India to Australia. He cannot in the same breath
say that he also Exports rice. The Registrar after reproducing the section merely says that this constitutes ""use"". He has not understood the object of
Section 55 of the Act. There is a clear non-application of mind.
The issue of user is important in the law of trademarks. So the person applying for registration must give evidence of sale of the goods in India to
prove user. If he is an exporter he can not prove sale In India. But on that ground he cannot be denied registration of his mark. So the law says, ""We
will treat for the purposes of this Act, anything done in relation to the export of those goods as if it was sale here or user in the territory of India"". This
fiction is created only for this Act and cannot extend further. The trademark applicant should be the seller of goods from India, and the sale should
take place outside India. Here the respondent is the buyer of rice and not the seller, so Section 55 of the Act does not apply.
The Registrar totally failed to understand that the respondent is only an importer of rice in Australia and has no place of business in India. So all
the discussion whether the export constitutes ""special circumstance"" is in vain, and we really need not deal with them. There is no export trade by the
respondent from India.
28 . Has the respondent proved user? The proof of user in this case need not be considered, because the respondent is not an exporter and the alleged
user is irrelevant. But even the submission in this regard and the so called evidence do not help the respondent. The evidence filed speaks of use of
the mark from 15-01-1977. The words used are ""(usage proof already in your file)"". This evidence was not marked in the proceedings so the Registrar
ought not to have relied on it. The appellant has raised objection to this and submitted that if the Registrar had relied on documents that were not
produced as evidence, then any finding based on those documents cannot be accepted.
If we consider all the documents though not marked through the proper person nor by way of an affidavit as required under law, we find these
documents do not help the respondent. We have discussed this earlier where we have referred to the Annexure 'R' document. Therefore these
documents do not prove prior user. Section 33 of the Act protects the rights of a person who shows prior user. The rights of a person who proves he
has been using the mark but seeks registration later are saved if he proves that this use is prior to the use by a registered trade mark proprietor who
seeks to restrain his use, or prior to his date of registration whichever is earlier. Since prior use is not proved, Section 33 of the Act does not apply.
We have considered these documents though these documents have not been filed in accordance with law and deserve to be rejected outright. We
have also considered what had been stated in the written submissions, though they are not strictly pleadings in law.
Does Section 12(3) of the Act apply? Section 12(1) of the Trade Marks Act bars registration of the mark. Section 12(3) of the Act carves out the
exception. The exceptions could be honest concurrent user or other special circumstance provided of course there is no dishonesty. But these
circumstances have to be pleaded, they cannot be assumed by the Registrar to come to the aid of the person seeking registration. The only ground
pleaded in paragraph 13 of this counter statement is prior user which means the respondent has relied on Section 33 of the Act to claim registration.
After the remand it was open to the respondent to supplement its pleadings. The respondent chose not to file any counter statement but had filed
written submissions again signed by the Counsel and not the party. Here for the first time special circumstances are pleaded and the special
circumstance pleaded is sale of Basmati rice in Australia only and therefore it is claimed that there will not be any confusion.
The entire plea ought to be rejected for two reasons, (i) that the plea was not taken at the earliest juncture; (ii) the person claiming honest
concurrent user distinctly admits that the opponents trade mark is prior but that he had honestly adopted it and concurrently used it. The person who
claims to have priority of use stands on that ground of such priority, and has no need to plead honest use or concurrent use. The Assistant Registrar
failed to see that the former plea is destructive of the latter.
The use of Section 21(5) of the Act: The other grievous error made by the Registrar is regarding the scope of Section 21(5). Section 21(5) of the
Act deals with the powers of the Registrar. Sub-section (1) to (3) deals with the procedural steps to be taken once an opponent gives the notice. Sub-
section 4 deals with the manner in which evidence should be submitted by the opponent and the applicant. This shall be done ""in the prescribed
manner"". The Rule also provides for the manner in which the applicant can appeal with the Registrar evidence that it desires to have in support of its
application. Sub-section (5) deals with the hearing. The Registrar hears the party, considers its evidence and the Registrar decides whether the
registration is to be permitted and if it is to be permitted whether it should be subjected to conditions or limitations. This means the Registrar takes into
account all the objections taken by the opponent and other objections in law not relied on by the opponent to refuse registration. This does not give the
Register power to take a ground not pleaded by the applicant to allow registration but it gives the power to take a ground not pleaded by the opponent
to refuse registration since public interest is of greater importance than the individual interests of the party to the proceedings. The Assistant Registrar
here appears to harbour under the misapprehension that even if the applicant has not pleaded that his case comes under Section 12(3) of the Act, the
Registrar may invoke on his behalf such plea. It must be remembered that questions like honest concurrent user or any other special circumstance for
the purpose of Section 12(3) must not only be pleaded but proved by acceptable evidence. It is true that the Registrar may go beyond the pleadings
under Section 21 of the Act but it is only for the purpose of invoking his power to deny registration as claimed, even though such plea was not taken
by the appellant. This power does not allow him to go beyond the pleadings in favour of the applicant and grant registration on a ground not pleaded by
the applicant. The Registrar has exceeded his jurisdiction under Section 21(5) of the Act and found that there was special circumstance to justify grant
of registration.
Therefore we find that -
(a) the respondent is an importer carrying on business in Australia and therefore Section 55 of the Act does not apply;
(b) the respondent having furnished the address of service as required by the proviso to Section 18(3) of the Act cannot change his stand and claim
that they have a working office at Delhi;
(c) the evidence has not been filed as per Rule 54 of the Rules;
(d) written submissions signed by Counsel or a shareholder cannot take the place of pleadings signed by the party unless there is explanation for the
absence or inability of the party to sign the pleadings;
(e) ""other special circumstance"" under Section 12(3) of the Act must be pleaded and proved; in this case this has not been done;
(f) the Registrar cannot invoke Section 21(5) of the Act to plead a ground in favour of the trade mark applicant; and
(g) when there is no proof of prior user, the question of invoking Section 33 of the Act does not arise.
For all the above reasons, the appeal is allowed and the registration is set aside.