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Judgment
Syed Obaidur Rahaman, Technical Member
1 . The miscellaneous petition has been filed by the petitioner/respondent in connection with ORA/42/07/TM/DEL under section 151 of the CPC
seeking directions of the Hon'ble Board, inter-alia, (a) that the evidence in absence of the pleading may not be considered and/or (b) that the applicant
be directed to amend the petition; (c) pass any other order/orders as deemed fit and proper in the matter.
2 . The fact of the case is that the respondent submits that the petition is pending adjudication. This Appellate Board may peruse both the Form A and
the statement of the case filed by the applicant. There is no mention of any details of the registration or filing of pending application in the Trade
Marks Registry by the applicant. The proper procedure was that the applicant ought to have mentioned the details of registration in the main petition.
It is submitted that if the said registration were to be relied upon by the applicant, they ought to have mentioned in the petition itself. The details of
registration do not find mention either in the petition or in the statement of the case. Non-mentioning of the same in the pleadings would prevent the
applicant from relying on the same in evidence.
3 . The learned counsel appearing on behalf of the respondent in reply submits that the applicant has not mentioned the details of the registration in the
body of the cancellation petition or the rejoinder or affidavit filed by the applicant and hence the applicant cannot rely upon the said registrations. It is,
however, pertinent to note that the applicant has filed copies of registration certificates as well as pending applications along with the cancellation
petition, with specific reference to the same in the list of documents immediately following the cancellation petition and the statement of case. The
applicant has also listed all the registrations that it intends to rely upon in its affidavit in reply/rejoinder filed in October, 2007. Hence the respondent's
objections in the application under reply, raised belatedly after waiting for nearly a year, are denied as false and hence are liable to be dismissed in
limine. In view of the above, it is prayed that the Hon'ble Board may dismiss the application under reply with costs.
The matter came up for hearing before this Appellate Board on 24.11.2009 at the circuit bench sitting at Delhi. Learned counsel Shri Shailen Bhatia
appeared for the petitioner/respondent and learned counsel Shri S.K.Bansal appeared on behalf of the respondent/applicant.
We have heard the submissions of both counsel. In view of the above submissions and fact of the case, we are of the view that the submission
made by the learned counsel for the petitioner is acceptable. We hereby allow the miscellaneous application in terms of the prayer (b) of the said
application with costs of Rs.5000/-The applicant is directed to amend the petition in terms of prayer (b). The miscellaneous petition No. 98/2008 is
allowed with the condition that the miscellaneous petitioner to pay cost of Rs.5000/- to the respondent.
(Syed Obaidur Rahaman) Technical Member
Z. S. Negi, Chairman
6 . I had the benefit of reading the above Order dictated by the Learned Technical Member. However, I am unable to agree with the conclusion
arrived at by the Learned Technical Member for the reasons given hereunder:
The respondent, in the rectification application, has filed the present miscellaneous petition under section 151 of the Code of Civil Procedure, 1908
praying mainly that the Appellate Board may direct (a) that the evidence in absence of the pleading may not be considered, and/or (b) that the
applicant be directed to amend the petition. Learned counsel (Shri S.K. Bansal) for the respondent while vehemently opposing the miscellaneous
petition submitted that there is no provision under which such a petition can be filed by the respondent and he further submitted that it is for applicant
to determine what particulars in support of its rectification application is to be included and what not, and it is unwarranted for the respondent to
approach the Appellate Board to direct the applicant to amend the application for rectification. Learned counsel for the respondent by taking us
through paras 8 and 9 of the rectification application and para C-2 of the rejoinder affidavit dated 12th November, 2007, submitted that it is very
apparent that the applicant has given the details of registration and craved leave to rely on them. He also submitted that the applicant has not raised
any objection, which are raised in the miscellaneous petition, in its counter-statement dated 8.9.2007 and that the present miscellaneous petition has
become infructuous in view of the Order dated 27.6.2008 passed by this Appellate Board. Further, on the facts and circumstances stated in paras 1
and 2 of the reply to the miscellaneous petition, it is clear that the miscellaneous petition is filed with the sole view to delay the final hearing of the
rectification application.
8 . As regards the miscellaneous petition on hand, it is pertinent to note that the Appellate Board is not bound by the procedure laid down in the Code
of Civil Procedure, 1908. Sub-section (1) of section 92 of the Trade Marks Act, 1999 provide that the Appellate Board shall not be bound by the
procedure laid down in the Code of Civil Procedure, 1908 but shall be guided by the principles of natural justice and subject to the provisions of the
Trade Marks Act, 1999 and the rules made thereunder, the Appellate Board shall have powers to regulate its own procedure including the fixing of
places and times of its hearing. The Intellectual Property Appellate Board (Procedure) Rules, 2003, made by the Appellate Board in exercise of the
powers conferred on it by section 92 of the said Act, do not contain any provision which provide for amendment of rectification application, that too
amendment at the instance of the respondent. Learned counsel (Shri Shailen Bhatia) for the applicant has not brought to our notice any provision
which empowers the Appellate Board to direct the applicant in rectification application to amend its application at the instance of the respondent to the
rectification application. It is also pertinent to note that the applicant has in sub-para (e) of para 8 of the application and statement of case averred that
the applicant also has statutory rights in the form of prior registrations/pending applications in India and to trade marks that includes ""PP"" and in sub-
para (f) of the said para the applicant, while referring to civil suit bearing No. 19 of 2005 before the High Court of Delhi against the proprietor of the
impugned mark, has craved leave to refer to and rely upon documentary evidence filed in such proceedings in respect of use, promotion and well-
known character of PP trade marks as may be required in support of its contentions herein. Likewise in para 9 of the application and statement of
case, the applicant has, stated amongst others, that the applicant craves leave to refer to and rely upon details of the said registrations and/or
applications at the appropriate stage of the present proceeding. The applicant has, along with the application, filed a list of documents, along with
documents (pages 1 to 701) which include certificate of registrations and Additional Representations (pages 605-626).
The respondent has, while replying to the rectification application, not specifically assailed the contents of paras 8 and 9 of the application or raised
any objection/ preliminary objection in its counter-statement dated 8.9.2007. Further, the applicant has in the rejoinder affidavit dated 12th November,
2007 in para C-2 has set out the registration numbers of its trade marks in various classes; stating that the deponent crave leave to refer to and rely
upon copies of certificates for use in legal proceedings in respect of the said registrations. This Appellate Board has also allowed to take certain
additional documents on record vide Order dated 27.6.2008 by observing that the averment of the applicant at para 3 of the miscellaneous petition that
no prejudice whatsoever would be caused to the respondent as the same already form part of the record of the Trade Marks Registry as well as the
Hon'ble Delhi High Court has neither been specifically refuted by the respondent in its reply nor controverted during the course of arguments; we are
of the opinion that the additional documents would be of assistance in deciding the controversy between the parties. It is imperative that in order to
have a fair trial, the party should state the essential material facts so that the other party may not be taken by surprise. In view of the foregoing, I am
of the opinion that the application already contains mention about the registered trade marks and applications pending for registration, though not
elaborated in detail, and in case they are relied upon in evidence, the respondent should not be taken by surprise. However, the details of registrations
with classes under which they are registered have been specified in the rejoinder affidavit and also copies of certain legal proceeding certificates along
with other documents have been filed by the applicant with the leave of the Appellate Board. All these form part of the pleadings and as such the
opposite party /applicant herein would not be taken by surprise. The applicant has also craved leave to refer and rely upon them as evidence at the
appropriate stage of proceeding. Order VI, Rule 17 of the CPC provides that ""The Court may at any stage of the proceedings allow either party to
alter or amend his pleadings in such manner and on such terms as may be just,...."" (emphasis supplied) but even there is no such parallel or analogous
provision provided in the Trade Marks Act, 1999 or rules made thereunder. Here the request to direct the applicant to amend the application is made
by the respondent.
In view of the above, I am led to conclude that the miscellaneous petition on hand is devoid of any merit and as such it deserves to be dismissed.
Accordingly, the miscellaneous petition is dismissed. However, there shall be no order as to costs.
1 1 . As the Members of the Bench differed on the issue as to whether the miscellaneous petition praying that the evidence in the absence of the
pleading may not be considered and/or that the applicant be directed to amend the petition be allowed or not, I, the Chairman of the Appellate Board,
in pursuance of the provisions of sub-section (6) of section 84 of the Act, refer the point of difference for opinion to the Vice-Chairman of the
Appellate Board so that the point is decided by the opinion of the majority of the Members who have heard the case, including those who first heard it.
Hon'ble MS. S. Usha ... Vice Chairman
The above miscellaneous petitions were heard by the then Hon'ble Chairman and the Technical Member and on 30.7.2010, an order was passed.
As there were two different views, the Hon'ble Chairman had directed the matter to be listed before the third Member, viz., the Vice Chairman as per
Section 84(6) of the Trade Marks Act, 1999. The matter was therefore listed before me for hearing.
1 3 . The respondents in the original rectification application filed Miscellaneous Petition Nos. 98 & 99/2008 in ORA Nos. 42 & 43/2007 respectively
seeking directions from this Board to the applicant that the evidence in the absence of the pleadings may not be considered or to amend the application
for rectification. The grounds on which the Miscellaneous Petition was filed were that when there was no mention of any application
registered/pending in the pleadings, the applicants cannot, therefore, rely on the same. The rectification application is based on frivolous and false
grounds. The applicant cannot lead evidence not pleaded. If they are to rely, the proper procedure would be to amend the pleadings. The applicant has
filed some registration certificates not supported by any pleadings which has caused grave injustice to the respondent. In the counter statement, the
respondent could not comment upon, as no details were available. The applicant cannot seek change the course of litigation without amendment of
pleadings.
The applicant herein filed their counter to the Miscellaneous Petition stating that the Miscellaneous Petition has become infructuous in view of the
order of this Board in M.P. No. 37/08 dated 27.06.2008. The applicant has given the details of the registration and the pending applications in the
cancellation application and the certificates mentioned by their respondent in the Miscellaneous Petition do not tally. The applicant had only mentioned
certain registrations that were cancelled. The applicant further prayed for the dismissal of the Miscellaneous Petition with costs.
Learned Counsel for the petitioner/respondent submitted that pleadings are the basis for any action under the Code of Civil procedure as well as
under the Trade Marks Act. The counsel then relied on the provisions of Order VII, R3 CPC & stated that the details of the immovable property
ought to be given in the pleadings. The pleadings are to be in conformity with the provisions of Rule 48 of the Trade Mark Rules. In the statement of
case filed along with the Form I application for rectification, the averments are vague and not clear. The applicants have stated that they are group
companies but not clear as to how they are related.
The counsel then relied on the judgment reported in Babu Ram Sethi v. Registrar of Trade Marks & Anr. [2009 (41) PTC 217 (DEL)] which
arose out of a Civil case between these parties. The learned judge of the Hon'ble High Court disagreed the contention of the plaintiffs/applicants that
their mark PP by itself is a distinctive letter mark and is entitled to protection against passing off. The Court further observed that the added material
in the form of ""Buildwell"" or 'Mall' or ""Shopping mall"" or ""Prime Properties"" are sufficient to distinguish the defendants' mark from that of the
Plaintiffs. The counsel, therefore, submitted that the applicants mark was not distinctive.
1 7 . The counsel then brought to my notice 2 registration under Nos.507596 & 1197456 both in Class 14. The user claimed in the application No.
507596 for a label mark was from 01/04/1980 and the other under No. 1197456 for a word mark from 01.01.1993. Nothing has been pleaded as to
how the use is claimed since 1993 and also regarding assignment.
Abubakar Abdul Inamdar v. Harun Abdul Inamdar [ (1995) 5 SCC 612] & Maghar Singh v. Gurmel Singh and Ors. (2003(135) PLR 636) were
relied on to state that any amount of evidence filed cannot be considered if not supported by proper pleadings.
If it is found in the later stage that the facts are not pleaded properly there will be delay in the proceedings, till the pleadings are amended. In order
to avoid the delay, this Miscellaneous Petition is filed. The evidence which were allowed to be taken on record cannot be considered if pleadings are
not amended.
20 . In reply, the counsel for the respondent raised a doubt as to under which provision this petition has been filed. The registration mentioned were all
within the knowledge of the petitioner. When they are aware of the registration then there is no need for any amendment. The petitioner has been
filing miscellaneous petition after miscellaneous petition only to delay these proceedings.
The petitioner company was incorporated in the year 2004 and the use claimed is for the year 1994 which is a false user. The user is a wrong one
and so the petitioner is delaying the matters from being heard. The counsel then relied on two judgements i.e, Karamchand Appliances Pvt. Ltd Vs
Godrej Sara Lee Ltd [2008(37) PTC 696 (IPAB)] and Jabbar Ahmed Vs Prince Industries [2003(26) PTC 576 (Delhi)]. The counsel submitted that in
an application for rectification, the onus is on the applicant to discharge in order to succeed. In the instant case, the respondent who is the applicant
will have to discharge the burden and if he does not do so, he will suffer. Therefore, if the pleadings are not properly done the applicants will face the
consequence, which is not for the respondents to seek amendment, which is only to delay the matter.
2 2 . In the order dated 30.7.2010, the then Hon'ble Chairman has decided the miscellaneous petitions against the petitioner/respondent with a finding
that the applications already contain mention about the registered trade marks and pending trade marks, though not in detail and that in case, they are
relied on, the respondent/applicant will not be taken by surprise. The Technical Member on the other hand, had decided the miscellaneous petition in
favour of the petitioner/respondent observing that the submissions made by the petitioner were acceptable and allowed the miscellaneous petitions with
costs of Rs.5000/-.
I have heard and considered the argument of both the counsel.
24 . In general amendments are allowed in the pleadings to avoid multiplicity of litigations. A party is not allowed to set up a new case. Normally, the
court should allow a party to amend his pleadings to put forth his entire case either in support of the cause of action or in challenge to the claim made
and party who seeks to amend the pleadings is required to give valid reasons for not taking the said plea earlier. The court may reject a plaint if there
are such grounds, but cannot insist on amending the plaint. Amendment shall be refused if it is not necessary to decide the real issue between the
parties.
Amendment if allowed can be only affording any opportunity to the other side. If the other side cannot be compensated or placed in the same
position, then such amendments cannot be allowed. No doubt, amendment can be allowed at any stage.
In the instant case, the petitioner has sought for amendment of the respondents application for rectification. During the course of arguments a
specific question was put to the counsel as to under what provision the application was filed and the answer was under Section 151 CPC - inherent
powers. Tribunals do not have inherent powers. This Board is not bound by the Code of Civil Procedure, but is guided by the principles of natural
justice. As observed earlier, the amendment can be allowed or directed suo motu by the courts only if it is necessary to decide the dispute between the
parties.
2 7 . The counsel relied on two judgements 1995 SCC ( 5 ) 612 (Supra) & 2003(135) PLR 636 (Supra) where it was held that no amount of evidence
would be a substitute to pleadings. In these cases, there was no plea and therefore, the courts refused to look into the evidence. In the case on hand, it
is for the applicant i.e. the respondent to have filed this miscellaneous petition if aggrieved, for no proper pleadings. We find force in the arguments of
the respondents counsel that the onus is on them to discharge the burden in an application and not for the petitioner, and if the pleadings are not clear
they would suffer.
Above all these, it has been observed by the Hon'ble High Court in P.P.Buildwell Pvt. Ltd. Vs Central Govt. of India Through Ministry of Industry
and Anr. [2010 (44) PTC 404(Del.)] that
Mr. Shailen Bhatia draws the attention of this Court to an order dated 10th February 2009 passed by the IPAB whereby it was directed that all the
rectification applications filed by the Petitioners, as well as the ones filed by the P.P.Jewellers, should be clubbed and heard together. That order,
however, was not implemented in view of the subsequent developments. This Court directs that the Petitioners rectification applications which have
been restored, will be listed by the IPAB along with pending rectification applications of P.P. Jewellers and be heard together by the IPAB.
in view of the above, when the rectification application filed by the applicant herein and the rectification application filed by the respondent herein
are clubbed together, the counter statement which gives the details will help the petitioner for clarification.
For the reasons stated above, I am of the opinion that the pleadings need no amendment and therefore, the Miscellaneous Petitions are dismissed.
These matters were listed before the Hon'ble Vice-Chairman in view of the split decision of the then Bench consisting of Hon'ble Shri Z.S.Negi,
then Chairman and Hon'ble Shri Syed Obaidur Rahaman, then Technical Member. These orders are dated 30. 07.2010. The matters were heard by
the Vice-Chairman and by order dated 28-06-2020 (Page 6 of 7) www.manupatra.com Sushant Kumar barick 20.01.2012 M.P.Nos. 98 & 99/2008
were dismissed and M.P.Nos. 124 & 125/2009 were allowed. Therefore, the majority decisions in these four miscellaneous petitions are as follows:
(i) M.P. No. s 98 & 99/2008 are dismissed
(ii) M.P.Nos. 124 & 125/2009 are allowed