Paragon Rubber Industries vs Pragati Rubber Mills

Z.S. Negi, J

1 . This appeal, under section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), is directed against the order

dated 25.10.2002 passed by the Deputy Registrar to Trade Marks, New Delhi whereby he dismissed the review petition of the appellant/review

petitioner. The Hon'ble High Court of Delhi has in pursuance of the provisions of section 100 of the Trade Marks Act, 1999, transferred the said

appeal, being C.M. (M) No. 158 of 2003 on its file, to the Intellectual Property Appellate Board and the Appellate Board renumbered the said appeal

as TA/332/2004/TM/DEL. The case of appellant/review petitioner is that it is a registered partnership firm of long standing repute, engaged in the

business of manufacturing and marketing vide variety of footwear including rubber chappals, hawai chappals, canvas shoes, soles, parts and fitting

thereof for the last about three decades. It is the largest manufacturer of hawai chappals in India under the trade mark PARAGON. The appellant is

the registered proprietor of trade mark PARAGON (label) under No. 323057-B dated 15.2.1977 in class 25, PARAGON (word) under No. 445530

dated 15.11.1985 in class 25, PARAGON CUSHION (label) under No. 445532 dated 15.11.1985 in class 25, PARAGON (word) under No. 456383

dated 3.7.1986 in class 25, PARAGON (word) under No. 467905 dated 19.02.1987 in class 01, PARAGON (label) under No. 467907 dated 19.2.1987

in class 01, PARAGON (word under No. 467908 dated 19.2.1987 in class 07, PARAGON (label) under No. 467911 dated 19.2.1987 in class 17,

PARAGON SAFARI (lebel) under No. 503258 dated 2.1.1989 in class 25, PARAGON with device LION (label) under No. 503259-B dated

2.1.1989 in class 25 and PARAGON SAFARI (word) under No. 503260 dated 2.1.1989 in class 25. All the registrations mentioned herein before

have been renewed from time to time and are valid, subsisting and conclusive. The appellant by virtue of long and continuous use of the aforesaid

registered marks, has the exclusive right to use the same to the exclusion of others. The appellant, owing to a long association with the above

mentioned trade marks, coupled with superior quality of goods under each of its trade mark, has built up an unparalleled reputation and goodwill which

is synonymous with the appellant and none else. The appellant claims to have extensively promoted and advertised its products under the marks

throughout the country over the period of past 27 years.

It is stated that the appellant, while inspecting the Trade Marks Journal No. 1195 dated 16.03.1999, came across at page 2682 of the said Journal an

advertisement of a trade mark PRAGATI as applied by the respondent No. 1 for registration under application No. 558684-B dated 17.09.1991 in

class 25 claiming user since April, 1977. Thereupon, the appellant filed notice of opposition opposing the registration of trade mark PRAGATI and the

respondent No. 1 on 20.11.2000 filed the counter-statement. The respondent No. 2 directed the appellant by letter dated 7.12.2000 which was

received by the appellant's attorneys in Mumbai on 21.12.2000, to file the evidence in support of opposition within two months from the date of receipt

of the said letter. However, the appellant could not file the evidence within the stipulated period up to 21.2.2001 and sought extension of time form

21.2.2001 to 21.4.2001 and again further extension of time up 21.2.2002. In the meanwhile, the respondent No. 2 passed and order dated 5.2.2002

thereby deeming the opposition to have been abandoned by reasons off operation of sub-rule (2) of rule 53 of the Trade and Merchandise Marks

Rules, 1959 (hereinafter referred to as the Rules); ordered the application to proceed for registration and further ordered the opponent to pay

proceedings cost of Rs. 50/- to the applicant/respondent No. 1 in pursuance of section 97(b) of the Act.

3 . Aggrieved by the order of abandonment passed by the respondent No. 2, the appellant/review petitioner filed a review petition on Form TM-57

dated 15.2.2002, along with affidavit evidence in the name of its partner with exhibits in support of opposition, on the grounds that the appellant

28.12.2001 once again sought further extension of time for two months from 21.12.2001 to 21.2.2002 to file evidence in support of its opposition and at

the time of passing the impugned order the said request ought to have been before the respondent No. 2 but in total disregard to the said request he

passed the impugned order. The appellant/review petitioner had made the said extension request accompanying with the requisite fee which was paid

by the bank to the respondent No. 2, therefore, he should have necessarily acted on the request either allowing or refusing it and communicated the

decision to the appellant before passing the impugned order, which he failed to do, and as such the respondent No. 2 erred in its action. The

appellant/review petitioner was at all times interested in filing the evidence and it was collecting the evidence material, which was filed along with the

review petition with request that same may be taken on record. It was submitted that there were several oppositions which were pending in the

Registry of Trade Marks wherein the parties sought time, several occasions for months and at times years together, and in such cases the Registrar

gave time and further time to the parties, even at occasions when extension of time is not asked for or taken. It was further submitted that the

appellant was desirous that its evidence be taken on record and had accordingly been collecting the evidence to prove its case. It did not desire to

delay the matter any further, which could be gauged from the fact that it had filed the evidence affidavit with exhibits. Further, its application seeking

to condone the delay in filing its evidence was already on the record, to which the respondent No. 2 had erroneously lost sight of and thus there was

an error apparent on the face of the record. The appellant/review petitioner after referring the ratio of decisions in the cases reported as (1982-PTC-

127), 200 PTC 24 (FB), AIR 1976 Supreme Court 1177 and AIR 1987 Supreme Court 1353, prayed that the review petition be allowed and the

evidence be taken on record under rule 53 of the Rules in the interest of equity and justice. However, after hearing both the parties, the respondent

No. 2 disallowed the review petition on 25.10.2002 observing that the repeated identical ground in all the request, for seeking extension of time for

more than one year, is obviously no valid reason and in view of the direction of the Full Bench of Delhi High Court in Hastimal Jain's case, there is no

error apparent on the face of the record in deeming the opposition to have been abandoned by the appellant/review petitioner Hence, the present

appeal.

The grounds of appeal are, inter alia that the respondent No. 2 being the court of first instance ought to have allowed the review petition and taken

the evidence on record, which was produced after an enormous amount of effort; that the respondent No. 2, ought to have appreciated the reason

given for the non-filing of the evidence and taken them on record; that the respondent No. 2 was wrong in holding that no valid reason was given for

seeking the extension of time for more than an year and in the absence of any communication rejecting the last extension request, he ought to have

allowed the review petition or alternatively, issued direction to the respondent No. 1 to proceed under rule 54 of the Rules; that the impugned order

does not contain a whisper nor does it cite nor distinguish the two judgments of the Supreme Court cited in the review petition by the appellant and has

miserably failed to take into consideration the principles laid down by the Supreme Court in those judgments and he further failed to consider the ratio

of judgments of Bombay High Court in Kantilal Jobanputra v. The Registrar, 1981 IPLR 93 and the Full Bench Judgment of Delhi High Court in

Hastimal Jain v. Registrar of Trade Marks, 2000(2) RCR(Civil) 399: 2002 PTC 24; that the respondent No. 2 ought to have taken into consideration

that it being the court of first instance should not have shut out the evidence on a technicality as such evidence would have facilitated the, tribunal not

only in giving the parties a fair chance of trial but would also assisted it in determining the issue in controversy between the parties; that the impugned

order is against facts and law and that the impugned order is bad in the eyes of laws and against the principles of natural justice and smacks of

injustice.

5 . The respondent No. 1 herein, a registered partnership firm engaged in the business of various kinds of foot wears, rubber chappals, soles and

straps thereof and/or such other allied goods, since long, has filed reply to the appeal on 17.6.2009. It is stated that the respondent No. 1 in the year

1977 honestly and bonafidely adopted a trade mark PRAGATI in respect of the aforesaid goods, knowing fully well that there was no such trade mark

in use/existence and therefore it started its use in respect of the said goods. The trade mark PRAGATI also forms a prominent part of its trade name

PRAGATI RUBBER MILLS and owing to its continuous use sinc its adoption, it has earned enviable goodwill and reputation in the markets to such

an extent that the customers identify the goods bearing the trade mark PRAGATI as those of the respondent No. 1 only and none else. In order to

acquire statutory rights, the respondent No. 1 made an application for registration of trade mark PRAGATI in class 25 which, as stated above, was

opposed by the appellant. The respondent No. 1 filed counter-statement on 20.11.2000, a copy of which was served on the appellant vide Trade

Marks Registry's letter dated 7.12.2000 (which as appellant's own admission was received on 21.12.2000 and accordingly the appellant was required

to file the evidence in support of opposition on or before 21.2.2001 but it failed to do so. The appellant appears to have sought extension of time up to

21.12.2001, without assigning any valid reasons and without endorsing a copy of Form TM-56 to the respondent No. 1, but in the meanwhile the

appellant failed to file the requisite evidence or rely on the facts and circumstance stated in the notice of opposition or seek further extension of time

beyond 21.12.2000 and as such the respondent No. 2 lawfully passed the abandonment order on 5.2.2002 and ordered to pay the cost to the

respondent No. 1.

The appeal came up before us for hearing on 6.10.2009 when Shri Abhai Pandey & Ms. Swathi Setia, advocates appeared for the appellant and

S/Shri Kamal Kishore Arora & Gaurav Arora, advocates appeared for the respondent No. 1.

7 . Learned counsel for the appellant, by taking us through the copy of impugned abandonment order at Annexure-E of the appeal, submitted that

when the impugned order was passed the appellant's request to condone delay was already on the record of the Registry of Trade Marks. The

Registrar of Trade Marks before passing the impugned abandonment order dated 5.2.2002 ought to have decided the pending request of the appellant

in the first instance and communicated to the appellant the decision arrived therein or alternatively the respondent No. 2 ought to have issued direction

to respondent No. 1 to proceed under rule 54 of the Rules as necessary action was already taken by the appellant. It is evident from the record that

such a request was made by the appellant date back to 28.12.2001 whereas the abandonment order was passed on 5.2.2002, i.e., when such request

was already pending for decision. Further, the respondent No. 2 while disallowing the review petition, has not recorded reason as to how there was no

error on the face of record when the abandonment order was passed without deciding the pending request dated 28.12.2001 of the appellant. On the

facts of the case and record on the subject, the abandonment order dated 5.2.2002 was arbitrary and unwarranted without first deciding the prior

request pending for decision.

Learned counsel for the appellant placing reliance upon the decision of Full Bench of Delhi High Court in Hastimal Jain trading as Oswal Industries

v. Registrar of Trade Marks & Anr., 2000 PTC 24 (FB), wherein it was held that rule 53(2) is merely director and not mandatory and the Registrar of

Trade Marks has power to extend time for filling evidence even though the period mentioned in rule 53 or the extended period thereof has expired and

even though an application for extension of time is made beyond that period, submitted that the Registrar ought to have extended the period up to

21.2.2002 as had been requested by the appellant. Learned counsel further submitted that the facts of present case squarely applies to the case of

Bayer Aktiengesellschaft Ltd. v. Rajasthan Petrosynthetics Ltd. and Others, 2004 (28) PTC 317 (Del.), wherein there was a delay by the petitioner in

filing the evidence in support of the opposition within the prescribed period of two months. The Registrar of Trade Marks by applying sub-rule (2) of

rule 53 of the Rules held by order dated 13. 7.1994 that the opposition filed by the petitioner is deemed to have been abandoned. In that case the

Hon'ble Delhi High Court applying the decision in the Hastimal Jain's case (supra) held that ""In that view of the matter, impugned order dated

13.7.1994 is quashed. The Registrar of Trade Marks is directed to proceed with the matter in accordance with law and dispose of opposition No.

DEL-6148 on merits."" Learned counsel also relied upon the decisions in Hindustan Lever Ltd. v. Sunrider Corporation & Anr., 2006 (32) PTC 287

(IPAB) and Tata Motors Limited v. Cavincare Pvt. Ltd. & Ors., 2006 (32) PTC 717 (IPAB) in support of his submission that the Registrar has the

discretion under section 131 of the Trade Marks Act, 1999 (corresponding section 101 of the Act) to extend the time for filing evidence in support of

opposition.

9 . Learned counsel relied upon the judgment of the Supreme Court in The State of Punjab and another v. Shamlal Murari and another, AIR 1976

Supreme Court 1177, to submit that in this case the breach of non-compliance can be corrected without injury to a just disposal of the case by allowing

application for extension of time ; the Registrar ought not to have enthroned the regulatory requirement into a dominant desideratum, after all the

Registrar as a tribunal is to do justice not to wreck this end product on technicalities. He further submitted that the Apex Court in Collector, Land

Acquisition, Anantnag and another v. Mst. Katiji and others, AIR 1987 Supreme Court 1353, observed that by refusing to condone delay can result in

a meritorious matter, like appellant's case on hand here, being thrown out at the threshold and cause of justice being defeated. The appellant is facing

a situation as observed by the Apex Court in the case referred to hereinbefore.

Learned counsel for the appellant submitted that the observation made by the respondent No. 2 in disallowing the review petition that the stereo

type repeat of ground is obviously no valid reason is erroneous. The appellant's bona fide intention and sincerity to file the evidence could be gauged

from the fact that as soon as the evidence was collected, the same was filed without any further delay. The appellant was neither sitting tight nor any

malafide can be imputed on its part. The Registrar is enjoined upon to grant extension of time or condone delay where he is satisfied that sufficient

cause has been shown to him. The Courts have held that the expression sufficient cause is to be liberally construed so as to advance substantial justice

when no negligence or inaction or want of bona fide is imputable to the party. The learned counsel relied upon the unreported order of this Appellate

Board passed on 1.8.2008 in Condonation of Delay Application No. 5/2008 in S.R. No. 355/2007/TM/IPAB [Nisar Enterprises v. Vikash Fashion

Clothing (P) Ltd. and Others] to fortify his submission.

One other hand learned counsel for the respondent No. 1 vehemently opposing the appeal reiterated the preliminary objection of respondent No. 1

that many of averments are made in the appeal and many of the documents are filed with, the appeal, which were not pleaded and filed earlier at the

stage of opposition proceedings which is not permissible at the appellate stage. Placing reliance upon the decision in Avinash Hansraj Gajbhiye v.

Official Liquidator, M/s. V. Pharma (P) Ltd., AIR 2006 Supreme Court 1317, learned counsel submitted that no ground was made out that the

additional material was not within the knowledge of the appellant at the time of passing of the original order, therefore; these additional

evidence/documents cannot be taken on record at this stage. The next preliminary objection is that the present appeal cannot be entertained as no

appeal lies in case the review is rejected. He relied upon the judgments in Rekha Mukherjee v. Ashis Kumar Das & Ors., 2005 (3) Civil Court Cases

337 (S.C.) and Shanker Motiram Nale v. Shiolalsing Gannusing Rajput, 1993 STPL (LE) 18072 SC, in support of his submission. Learned counsel

drew our attention to paragraph 24 of the of the reply of respondent No. 1 to submit that the appellant malafidely tried to smuggle few documents

along with its affidavit dated 13.2.2002 to the review petition under some unknown provision of law even without endorsing a copy to the respondent

No. 1.

Learned counsel for the respondent No. 1 submitted that the appellant has not given sufficient cause to the satisfaction of the Registrar of Trade

Marks while seeking extension of time for filing evidence in support of the opposition procedural prescriptions. He submitted that the appellant has not

endorsed copies of the extension applications made by it and thereby deprived the respondent No. 1 of its right to oppose such applications. Refuting

the averment of appellant in the review petition that alternatively the respondent No. 2 ought to have called upon the respondent No. 1 to proceed to

comply with rule 54 of the Rules, submitted that the Registrar is not entitled, without having compliance of requirement of rule 53 of the Rules made

by the opponent, to call upon the applicant to proceed under rule 54 of the Rules. He submitted that whether the Registrar issues any order or not, the

opposition is deemed to be abandoned on the expiry of the extended period. Therefore, the Registrar has lawfully passed the impugned order dated

5.2.2002. The appellant's review petition is against the order dated 5.2.2002 for payment of cost to the respondent No. 1, which payment has not been

made by the appellant. Further, Learned counsel by referring to paragraph 7.23 from the book Trade Marks & Passing-off (4th edition) authored by

P. Narayanan, which states that review petition can be entertained only on the basis of one or more of the grounds (i) on the ground of discovery of

new and important matter or evidence, which after exercise of due diligence, was not within the applicant's knowledge, or could not be produced by

him at the time when the decree was passed or order made, or (ii) on account of some mistake or error apparent on the face of the record, or (iii) for

any other sufficient reason, submitted that the review petition of the appellant were not at all covered by any of the aforementioned grounds. Learned

counsel placing reliance upon the decisions in Pitamber Kanhayalal Khattar v. Sadanand Harishchandra Honawar, 2007(5) RCR(Civil) 217: 2007 (1)

Civil Court Cases 712 (Bombay) and Mohinder Pal Sali v. Punjab State Electricity Board, Patlala & Ors., 2005(4) S.C.T. 40: 2006 (1) Civil Court

Cases 359 (P&H), submitted that power to review cannot be exercised on the ground that the decision was erroneous on merits as that is the province

of a Court of appeal. He referred to the judgment of the Supreme Court in S. Bagirathi Ammal v. Palani Roman Catholic Mission, 2008(1) RCR(Civil)

290: 2008(1) R.C.R. (Rent) 16: 2007(6) R.A.J. 591: 2008 (2) CivCC 526 (S.C.) wherein it was held that ""... An error contemplated under the Rule

must be such which is apparent on the face of the record and not an error which has to be fished-out and searched. In other words, it must be an

error of inadvertence. It should be something more than a mere error and it must be one which must be manifest on the face of the record.... Under

the guise of review, the parties are not entitled rehearing of the same issue but the issue can be decided just by a perusal of the records and if it is

manifest can be set at right by reviewing the order....

Learned counsel submitted that the statutory provision dealing with extension of time to do a thing contains the precondition that the Registrar

should be satisfied, on application made to him in the prescribed manner, etc., that there is sufficient cause for extending the time but in the appellant's

application did not contain any valid/convincing reason for extending the time sought for. Even the judgment of Full Bench of Delhi High Court in

Hastimal Jain's case (supra) the court has added a special clarification to say that the Registrar has to exercise his powers judicially and for valid

reasons. Relying upon the judgment of Delhi High Court in Sunrider Corporation, U.S.A. v. Hindustan Lever Ltd. & Another, 2007 (35) PTC 388

(Del.), learned counsel submitted that the Registrar has no power to extend time for filing of affidavit evidence in support of opposition beyond eth

period of three months. He further submitted that while deciding the appeal on hand, the provisions of the Trade Marks Act, 1999 and rules made

thereunder will apply. In the Sunrider Corporation's case the Assistant Registrar had by invoking rule 50(2) of the Rule passed order dated 20.2.2004

stating that by not filing evidence within the prescribed time by the respondent No. 1, the opposition was deemed to have been abandoned. In appeal

against the order of Assistant Registrar, this Appellate Board set aside the impugned order and directed the Registrar to give an opportunity to the

appellant to file evidence in opposition. On the writ petition against the said order of this Appellate Board, the Delhi High Court has observed that by

virtue of section 159 of the Trade Marks Act, 1999, all the proceedings pending on the date on which the Act came into force, would be dealt with

under that Act and not under the Act. The present appeal was pending at the time of coming into force of the provisions of Trade Marks Act, 1999

and, therefore, it is required to be dealt with under provisions of the Trade Marks Act, 1999 and rules made thereunder. This judgment is from the

jurisdictional High Court and binding on the Appellate Board in relation to cases before the Bench of the Appellate Board sifting at Delhi. Having this

in view, the Registrar has no power to extend the time beyond three months and the appeal is liable to dismissed at the threshold.

We have carefully heard both the parties and perused the records. The central issue that falls for our consideration is whether the Registrar has

power to extend time for doing any act under the Act. As has been observed by the Delhi High Court in the Sunrider Corporation's case (supra) that

It is an admitted position that by virtue of Section 159 of the 1999 Act, all the proceedings pending on the date on which the Act came into force, i.e.

15.09.2003, would be dealt with under the 1999 Act and not under the 1958 Act"", we would first see the, provisions provided for extension of time and

procedure, etc. in the Trade Marks Act, 1999 and the rules made thereunder. Section 131 of the Trade Marks Act, 1999 provide as under:-

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 this 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.

(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.

The manner of submission of evidence and the time therefore under sub-section (4) of section 21 and the manner of making an application under sub-

section (1) of section 131 of the Trade Marks Act, 1999 are respectively prescribed in rule 50 and rule 105 of the Trade Marks Rules, 2002 which

read as under:-

Evidence in support of opposition. - (1) Within two months from services on him of a copy of the counterstatement 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 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 under this sub-rule and intimate the Registrar 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 TM-56 accompanied by the prescribed

before the expiry of the period of two months mentioned therein.

Extension of time. - (1) An application for extension of time under section 131 not being a time expressly provided in the Act or prescribed by

rule 79 or by sub-rule (4) of rule 80 or a time for the extension of which provision is made in the rules) shall be made in Form TM-56.

(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 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

proceedings for which it is applied for has already expired.

15 . From the plain reading of the provisions of rule 50 as extracted above, it is abundantly clear that the opponent is required either to file his evidence

in support of opposition in the prescribed manner within two months from the service on him of copy of counter-statement or within such further

period not exceeding one month in the aggregate as the Registrar and the applicant in writing that he does not desire to adduce evidence in support of

his opposition but he intends to rely on the facts stated in the notice of opposition. The Registrar has the limited power to extend the time for filing the

evidence not exceeding one month in the aggregate on request made by the opponent on Form TM-56 and thus the opponent has maximum three

months time from the receipt of copy of counterstatement, for filing affidavit evidence. In brief, the time available for the opponent to file his evidence

is two months from the date of receipt of copy of counterstatement, which is further extendable, on a request made on Form TM-56, not exceeding

one month in the aggregate. A clear provision is made under sub-rule (2) of rule 50 that if an opponent takes no action under sub-rule (1) of rule 50

within the time mentioned therein he shall be deemed to have abandoned his opposition. Sub- rule (3) of rule 50 makes it clear that the application for

extension of the period of one month mentioned in sub-rule (1) of rule 50 shall be made in Form TM-56 accompanied by the prescribed fee before the

expiry of two months mentioned therein. The extension of time under section 131 of the Act can be sought n case where the time for doing any act is

not expressly provided in that section or the rules made thereunder and that too on showing a sufficient cause to the satisfaction of the Registrar. In

the present appeal, the appellant/opponent, in its own admission was required to file evidence on or before 21.2.2001 but it could not file the evidence

within that time and had sought extension of time from 21.2.2001 to 21.4.2001 by filing Form TM-56 dated 22.2.2001 and again on 13.04.2001,

2.7.2001, 4.9.2001, 11.10.2001 and lastly on 28.12.2001 sought extension of time up to 21.2.2002 and in the meantime the respondent No. 2 passed

order dated 5.2.2002. The appellant filed the first Form TM-56 about two months after the expiry of two months period mentioned sub-rule (1), of rule

50 which is against the provisions of rule 50 of the Trade Marks Rules, 2002. There is difference of dates of filing of Form TM-56, mentioned by the

appellant and the dates mentioned in the impugned order. The impugned order states that on perusal of the requests for extension of time, filed by the

petitioners/opponents, on 23rd February, 2001, 18th April, 2001, 9th July, 2001, 13th September, 2001, 16th October, 2001 and 3rd June, 2002 covering

the period of more than one year indicate the same reason identically repeated stereo typed in all the requests as reproduced below:-

That the opponents are collecting the material evidence from their records to be incorporated in their affidavit of evidence in support of opposition

under rule 53.

Since the appellant has not disputed about the dates mentioned above by the respondent No. 2 in his impugned order, we are relying upon the said

dates to be admitted as born from records with the Registry of Trade Marks. The admitted position is that the appellant neither filed evidence in

support of its opposition within the period of two months mentioned in sub-rule (1) of rule 50, nor intimated the Registrar and the respondent No. 1 in

writing that it does not desire to adduce any evidence but intend to rely on the facts stated in the notice of opposition nor sought extension of time

before the expiry of the aforesaid period of two months. Therefore, the legal fiction of abandonment created by the statute automatically came in to

play on the expiry of 21st day of February, 2001. It is clear that the appellant has not complied with the requirements of rule 50 within times. It is an

undisputed position that rule 50 of the Trade marks Rules, 2002 has been validly made by the Central Government in exercise of powers conferred on

it by section 157 of the Trade Marks Act, 1999 and where the rules has been validly made the same should be treated as part of the Act. In the case

of Chief Forest Conservator (Wild Life) and other v. Nisar Khan, 2003(2) RCR(Civil) 205: AIR 2003 Supreme Court 1867, the Apex Court has held

that ""It is now well-settled that when rules are validly framed, they should be treated as a part of the Act."" The purport of section 131 is that the

Registrar may extend the time for doing any act under the Act if application is made to him in a prescribed manner and accompanied by the

prescribed fee, with such conditions as he may think fit to impose, if he is satisfied that there is sufficient cause for extending the time. In the present

case there, we have no opportunity to peruse the grounds mentioned in the Form TM-56 but from the above extracted ground, it is evident that no

sufficient cause has been given by the appellant for extension of time. The appellant might have made certain attempts or put efforts to collect the

evidence from the records, even details of those attempts or efforts have not been mentioned to satisfy the Registrar that the appellant is making

genuine efforts and deserve extension of some more time, which is if within his powers. In the present case sufficient causes not material to be

considered as the Form TM-56 was filed on 23.2.2001 after the expiry of two months period. Even if assuming that the same was filed within time,

the Registrar could have on sufficient grounds being shown, extended the time till 21.3.2001 whereas the appellant has not filed evidence till the order

of abandonment was passed on 5.2.2002. The averment made by the appellant that the respondent No. 2 ought to have decided its pending application

before passing abandonment order has no merits as the abandonment is by the deeming fiction created by the law and when the opposition itself is not

surviving, there is no question of passing any order in respect of application filed in connection with the opposition.

1 7 . There is a difference of language employed in rule 53 of the trade and Merchandise Rules, 1959 framed under the Trade and Merchandise

Marks Act, 1958 and rule 50 of the Trade Marks Rules, 2002 framed under the Trade Marks Act, 1999. In view of the changed provisions, the case

laws relied upon by the appellant will be of no help to him. The contrasting provisions under the above referred two Acts have been discussed in the

Sunrider's case. After extracting paragraph 19 of the Full Bench judgment of Delhi High Court in the Hastimal Jain's case (supra), the learned Judge

in the Sunrider Corporation's case (supra) contrasted as under:-

From the above extract, it is apparent that the Full Bench was of the view that Rule 53(2) of the 1959 Rules was not mandatory, but merely

directory. The Full Bench observed that although the word ""shall"" was used in Rule 53(2), that by itself would not indicate that the provision was

mandatory. It came to this conclusion specifically because of the expression ""unless the Registrar otherwise directs"" used immediately after the word

shall"". It is in this context that the Full Bench was of the view that the legal fiction created by the word ""shall"" was not absolute as it was limited by

the words ""unless the Registrar otherwise directs"". Consequently, the Full Bench was of the view that the provisions of Rule 53(2) were not

mandatory but directory.

The learned counsel for the respondent No. 1 has urged before this court that Rule 50(2) of the 2002 Rules must also be interpreted in similar

fashion as being directory and not mandatory. This argument has to be rejected. The reason being that the provisions of Rule 53 of the 1959 Rules and

Rule 50 of the 2002 Rules are materially different. First of all, in sub- rule (1) of Rule

50 of the 2002 Rules, the following words have been inserted:-

or within such further period not exceeding one month in the aggregate thereafter as the Registrar may on request allow.

These words are missing in Rule 53(1) of the 1959 Rules and, therefore, the decision in Hastimal Jain (supra) would not apply to the facts of the

present case. The second difference is that the expression ""unless the Registrar otherwise directs"" appearing in Rule 53(2) of the 1959 Rules is

missing from Rule 50(2) of the 2002 Rules. For this reason also, the decision of the Full Bench in Hastimal Jain's case would not apply to the present

case. The Full Bench had placed great reliance on the expression ""unless the Registrar otherwise directs"" to indicate that the provision was directory

and not mandatory and secondly that the Registrar had discretion in the matter. But these words are missing in the new avatar of this rule which is to

be found in Rule 50 (2) of the 2002 Rules. The new Rule 50 (2) simply and plainly states that if an opponent takes no action under sub-rule (1) within

the time prescribed therein, he shall be deemed to have abandoned his opposition. The Registrar has no role to play and no discretion in the matter.

The entire basis of the Full Bench decision in Hastimal Jain's case is that the Registrar had been given discretion in the matter as indicated by the

words ""unless the Registrar otherwise directs"". This discretion is missing in Rule 50 under the 2002 Rules.

The High Court of Delhi while considering the question whether the Registrar of Trade Marks has the power to extend the time for filing the

evidence affidavit in support of an opposition beyond the maximum period of three months prescribed under rule 50(1) of the Rules in Sunrider

Corporation's case (supra) has observed as under:-

'15. In Ramachandra (supra), the Supreme, court observed that in Taylor v. Taylor, 1875 (1) Ch. D 426, Jessel M.R. adopted the rule that where a

power is given to do a certain thing in a certain way, the thing must be done in that way or not at all and that other methods of performance are

necessarily forbidden. The Supreme Court further observed that this rule had stood the test of time. In that very case [Ramachandra (supra)], the

Supreme Court placing reliance on Craies on Statute Law, 7th Edn. observed that with regard to the question as to whether a provision was

mandatory or directory, no uniform rule could be laid down as to whether mandatory enactments should be considered directory only or obligatory with

an implied nullification for disobedience. The Supreme Court further observed that it is the duty of Courts of justice to try to get at the real intention of

the legislature by carefully attending to the whole scope. Such intention of the legislature is, therefore, to be ascertained upon a review of the

language, subject-matter and importance of the provision in relation to the general object intended to be secured, the mischief, if any, to be prevented

and the remedy to be promoted by the Act. Considering the provisions and making a comparative study of the old and the new Act as well as the old

and the new rules, it is more than clear that specific words have been introduced in the new provisions and/or removed from the old provisions. Such

additions and deletions are significant and bring out the true intention of the legislature. For instance, Rule 53 of the 1959 Rules did not prescribe any

maximum period of extension of time. Whereas Rule 50 of the 2002 Rules specifically provides for extension of time not exceeding one month in the

aggregate. This introduces a clear stipulation that the Registrar's powers to grant extension of time are limited to one month in the aggregate beyond

the two months prescribed under the said Rule. This limitation was not there in the earlier Rule, but it is definitely there in Rule 50 of the 2002 Rules.

The second instance is that the words ""unless the Registrar directs"" have been consciously deleted from sub-rule (2) of Rule 53 in its new incarnation

in Rule 50(2). It is obvious that the legislature wanted to make the provision mandatory and did not want to give any discretion to the Registrar in this

connection. The object is apparent that the delays be cut down in deciding the application for registration of a trade mark.

It is, therefore, quite clear that the answer to question No. 1 is that the Registrar does not have the power to extend the time for filing of evidence

affidavit in support of an opposition beyond the maximum period of three months prescribed under rule 50(1) of the Trade Marks Rules, 2002 ...

The judgment of Supreme Court in Collector, Land Acquisition, Anantnag's case (supra), is not applicable to the present case as the facts are

distinguishable. There is no material on record to show that the appellant has a meritorious case. Even if the appellant has meritorious case, it can use

that merit in an alternative remedy which is open to the appellant under the Trade Marks Act, 1999. In the light of the above, we are unable to see any

infirmity in the impugned order dated 25.10.2002. In view of the position, we need not advert to the merits or demerits of the submission made by the

respondent and the applicability of the case laws relied upon by it. The result is that we find no merits in the appeal and accordingly the appeal is

dismissed. However, there shall be no order as to costs.