P.K. Overseas vs Mahaveer Rice Traders

Z.S. Negi, J

The applicant has filed the above application for removal of trade mark '444' under No. 752954 in class 30, registered in the name of the

respondent, from the Register of Trade Marks or rectification of the Register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter

referred to as the Act). During the pendency of the application, the respondent filed the above four miscellaneous petitions for (i) direction by the

Appellate Board to the applicant to file the original invoices, in respect those for which copies have been filed, to prove its bona fide use of the

impugned mark, (ii) dismissing the rectification application, (iii) directing the applicant to file/produce the copy of the Assignment Deed on the basis of

which the applicant is claiming to be the subsequent proprietor of the registered trade mark and/or direct the Registrar of Trade Marks to provide the

file to the respondent for inspection and (iv) adjourning and/or cancelling the hearing of the present application to be taken up in accordance with date

of filing of similar applications before this Appellate Board.

Averment is made in the Miscellaneous Petition No. 185/2008 that the respondent, after scrutinizing the copies of documents and invoices filed by

the applicant along with the application, discovered that in some of the copies of invoices the impugned trade mark seems to be added subsequent to

their issuance and therefore originals thereof are required for the purpose of verification of those copies of invoices with the original invoices. It is

alleged that though the respondent in the counter-statement called upon the applicant to produce the originals of the invoices, the applicant has neither

filed any reply nor controverted the averment of the respondent nor even filed the original invoices. It is pointed out that as per provisions of Rule 12

of the Intellectual Property Appellate Board (Procedure) Rules, 2003, the original documents are required to be left in the Appellate Board for

inspection of the other party. In view of such provision it has become highly desirable and imperative that the applicant be directed to file the original

of those invoices for which copies are filed along with the application.

3 . By way of M.P. No. 198/2008, the petitioner seeks dismissal of the rectification application being premature and not maintainable. It is submitted

that the respondent's application for registration of trade mark was advertised in the Trade Marks Journal No. 1329 Supp (1) dated 15.4.2005 for

public objection and having no objection filed against the said advertisement, the certificate of registration dated 24.1.2006 was issued. Having regard

to the provisions contained in Section 47 of the Act, the rectification application filed by the applicant is premature as the statutory period specified in

that section has, at the time of filing of the rectification application, not elapsed. The petitioner has also raised objection that the applicant has not

disclosed the source of its knowledge about the registration of the respondent's/petitioner's trade mark.

The petitioner by way of M.P. No. 247/2008 is seeking direction of this Appellate Board, to the applicant to file/produce copy of the alleged

Assignment Deed on the basis of which it is claiming to be the subsequent proprietor of the registered trade mark and/or to the Registrar of the Trade

Marks, Trade Marks Registry, Delhi to provide the required files to the respondent for inspection. It is stated by the petitioner that it moved an

application for the inspection of files relating to the trade mark Nos. 455752 and 505287 but the office of the Registrar of the Trade Marks, Delhi has

not provided the files to the respondent for inspection to verify claim of subsequent proprietorship right of the applicant. It is submitted by the petitioner

that the applicant in the rectification application has though claimed to be the subsequent proprietor but neither filed the impugned Assignment Deed

nor any legal proceeding certificate from the Registry of Trade Marks, Delhi nor even indicated the date of Assignment Deed. It is further submitted

that the respondent in the counter-statement has called upon the applicant to produce the above mentioned documents for its verification but the

applicant has neither submitted any reply thereto nor controverted the respondent's averments nor filed the Assignment Deed.

In M.P. No. 248/2008, the petitioner states that the rectification application is filed on 16.10.2007; counter-statement thereto is filed on 6.2.2008 and

the application was ordered for final hearing on 18.9.2008 which stood adjourned to 14.10.2008 at the request of the respondent whereas there are

certain rectification applications, as mentioned in paragraph 4 of the petition, filed in February, 2004 by the respondent herein and wherein pleading and

evidence were competed in August, 2004 but the same have not been taken up for disposal. Submission is made in the petition that this Appellate

Board may issue appropriate direction that the cases be taken up in accordance with their date of filing and completion of pleadings and/or at least

first hearing be fixed up in accordance with the date of filing of the petition or petitions before the Appellate Board. Prayer is made to this Appellate

Board to adjourn and/or cancel the hearing of the rectification application and be taken up in accordance with the date of filing of the said application

before this Appellate Board.

6 . The answering respondent herein (the applicant in the rectification application) has not filed reply to the miscellaneous petitions. When the

miscellaneous petitions came up for hearing before us on 21.1.2009, Shri Ajay Sahani, learned Counsel for the applicant submitted that he is prepared

to argue the petitions without filing reply. We have heard the learned Counsel for both the parties.

7 . The learned Counsel for the petitioner submitted that on perusal of copies of certain invoices it is discovered that the trade mark '444' appears to be

interpolated subsequent to their issuance and for the purpose of verification of such doubtful copies of invoices by the petitioner, the original invoices

are required. He took us through certain invoices to prove his plea. The learned Counsel brought to our notice the provisions of Rule 12 of the

Intellectual Property Appellate Board (Procedure) Rules, 2003 which provided that the original documents are required to be left in the Appellate

Board for inspection by the other party. The learned Counsel submitted that the certificate of registration dated 24.01.06 was issued to the petitioner

whereas application for rectification dated 12.10.2007 was filed without having regard to the provisions of Section 47 of the Act. The statutory period

specified in that section had not elapsed on the date of filing of the application and as such the application is premature and not maintainable. It was

pointed out that the applicant is claiming to be the subsequent proprietor of the registered trade mark but there is no documentary proof produced by

the applicant to establish that it is the subsequent registered proprietor. He further pointed out that the respondent in the counter-statement has called

upon the applicant to produce the Assignment Deed but the applicant has ignored to file copy of the Assignment Deed and also not controverted the

averments made by the respondent in this regard. Learned Counsel for the petitioner brought to our notice also that this rectification application of

2007 has been listed for hearing whereas certain rectification applications of the petitioner filed in February 2004 and ripe for hearing in August 2004

have not been listed for hearing. The counsel earnestly prayed that the cases filed before the Intellectual Property Appellate Board ought to be listed

in accordance with the date of filing of such cases.

8 . The learned Counsel for the answering respondent herein (applicant in the rectification application) submitted that it is for the applicant to

substantiate its case before the Appellate Board. If the applicant does not produce the originals for the invoices, the Appellate Board can always draw

an adverse inference against the applicant. The learned Counsel for the answering respondent submitted that the rectification application is not filed

solely under the provisions of Section 47 of the Act but the application is made under other provisions of the Act and hence the instant miscellaneous

petition in this regard is mis-conceived and un-called for. The learned Counsel submitted that the miscellaneous petition seeking for direction of the

Appellate Board that the cases be listed or taken up in accordance with their date of filing and completion of pleadings and/or at least the first hearing

be fixed up in accordance with the filing of the cases before the Appellate Board, he has nothing to say as the applicant is remotely concerned with

the relief sought by the petitioner from the Appellate Board.

After hearing both the counsel and perusal of the documents, we are of the view that the applicant ought to have filed the originals of those invoices

for which copies have been filed in support of the application. Likewise the copies of Assignment Deed ought to have been produced by the applicant.

We are in agreement with the counsel for the petitioner that Rule 12 of the Intellectual Property Appellate Board (Procedure) Rules, 2003 provide that

the original documents are required to be left in the Appellate Board for inspection of the other party. With regard to the miscellaneous petition for

dismissing the application for rectification, we are in agreement with the submissions of the counsel for the answering respondent that the rectification

application is not filed solely under Section 47 of the Act but prima facie the rectification application is filed on the grounds of impugned registration is

made in contravention of the provisions of Section 9 (1) (a), 9 (2)(a), 11 (1 to 3), 11 (10),

12 and 18 (1) of the Act and as such the request of the petitioner is uncalled for. Regarding listing of cases, the practice adopted in the Registry of the

Appellate Board is that all cases usually be listed in accordance with the date of their filing before the Appellate Board. However, priorities were

given to those cases which were transferred from the various High Courts and wherein various miscellaneous petitions were filed for one relief or the

other. As such, while pursuing such practice those cases were listed and thereafter they went on to the next adjourned dates and the original cases

filed before the Appellate Board were inadvertently lost sight of.

The result is that M.P. No. 198/2008 is dismissed being devoid of any merit. The applicant (answering respondent herein) is directed to file the

originals of those invoices for which copies have been filed along with the rectification application and also file copy of Assignment Deed by which the

trademarks were assigned to the answering respondent. These documents be filed in the forenoon of 09.02.2009 before the Circuit Bench of the

Appellate Board sitting at New Delhi (in the IPO, Dwarka, New Delhi) so as to enable the petitioner to inspect the same in the afternoon of

09.02.2009. The Registry of the Appellate Board is directed to review the cases filed before 2005 and pending or not listed at all for hearing and

ensure that those matters are listed on the basis of their date of filing. The Miscellaneous Petition Nos. 185/2008, 247/2008 and 248/2008 are disposed

of with the above directions. However there is no order as to the costs.