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Judgment
S. Usha, Technical Member
This appeal has arisen out of the order dated 10.04.2007 passed by the Deputy Registrar of Trade marks dismissing the opposition No. DEL-
201337 and allowing the application No. 793931B to proceed to registration of the trade mark 'MARSHALL' in class 7.
The respondent No. 1 filed an application for registration of the trade mark 'MARSHALL' under application No. 793931B on 05.03.1998 in class 7
in respect of industrial and domestic sewing machines and parts therefore (except needles) for sale in India and export claiming user since 26.02.1998
under the Trade Marks Act, 1999 (hereinafter referred to as the Act). The said application was advertised in the Trade Marks Journal No. 1327
Suppl. (5) dated 31.01.2005 at page No. 1173. The above Trade Marks Journal was made available to the public on 15.04.2005. The Trade Marks
Journal was despatched on 10.06.2005 which was received by the appellant's counsel on 14.06.2005.
The appellant herein, opponent before the Registrar of Trade Marks filed the notice of opposition on 25.07.2005. The Registrar of Trade Marks
issued a show cause notice on 23.03.2006 asking for an explanation as to how the notice of opposition could be taken on record when it was time
barred. The appellant had sent their explanation stating that the Trade Marks Journal though was made available to the public on 15.04.2005 was
received by the appellant's counsel only on 14.06.2005 and that the notice of opposition was filed on 25.07.2005. The appellant along with the reply to
the show cause notice had also filed Form TM-44 with the requisite fee on 03.04.2006. The Deputy Registrar of Trade Marks without accepting the
same had fixed the hearing on 12.07.2006.
The Deputy Registrar of Trade Marks passed an order dismissing the notice of opposition No. DEL 201337 and allowing the application No.
793931 B to proceed to registration. Aggrieved by the said order, the appellant / opponent is before us on appeal.
The matter was taken up for hearing in the Circuit Bench at New Delhi on 13.03.2008. Shri M.K. Miglani assisted by Shri D.K. Dingra learned
Counsel appeared on behalf of the appellant and Shri Sanjeev Singh learned Counsel appeared on behalf of respondent No. 1.
Learned Counsel for the appellant mainly contended that the date of despatch of the Trade Marks Journal by the Registry was 10.06.2005 which
was received on 14.06.2005. Though the Trade marks Journal was dated 31.01.2005, it was made available to the public only on 15.04.2005. Even
assuming that the date of availability was to be considered to calculate the period of limitation, it fell due only on 15.08.2005 and that the notice of
opposition was filed on 25.07.2005 which was well within the prescribed time. He further contended that on receipt of the show cause notice he had
filed Form TM-44 to condone the delay of 10 days i.e. from 15.07.2005 to 25.07.2005.
Learned Counsel for the appellant also submitted that he had produced the postal registration No. 4483 dated 10.06.2005 received by him on
14.06.2005 before the Deputy Registrar for consideration and the same was not considered by the Deputy Registrar. The same was also produced
before us to prove his bonafide. The learned Counsel also drew our attention to the impugned order where the Deputy Registrar had not given any
reasons for his finding except proceeded to say that the notice of opposition and the Form TM-44 had been filed after an inordinate delay and that no
such relief could be granted. The Deputy Registrar had proceeded stating that the TM-5, i.e. the notice of opposition was dismissed as it was time
barred.
The learned Counsel for the appellant relied on various judgments in support of his claim:
AIR 1952 Travancore-cochin 77 Pavunny Ouseph v. The Registrar of Trade Marks was relied on to support his claim that the period of limitation
starts only on the date of receipt of the Trade Marks Journal and that the appellant had received the Trade Marks Journal on 14.06.2005 and that the
period of limitation was to be calculated from that date and time was until expiry of three months.
2006 (33) PTC Bombay (DB) Sardar Gurudas Singh Bedi v. Union of India and Ors. was relied on to support his contention that the Registrar had
powers to extend the period even beyond the expiry period.
2007 (34) PTC 716 (IPAB) Donaldson Filtration Deutschland GmbH v. Assistant Registrar of Trade Marks was relied on to support the contention
that the procedural law should be interpreted to be directory and that the Registrar had the power to extend time even after the expiry of the period of
three months.
The learned Counsel for respondent No. 1 in reply to the contention of the counsel for the appellant contended that the Trade Marks Journal was
sent to one Mr. D. Kumar Dhingra whereas the notice of opposition on Form TM-5 had been filed by one M/s Legal Matrix where no explanation had
been given by the appellant for the same, i.e. how the two Shri D. Kumar Dhingra and Legal Matrix are related. He further contended that the notice
of opposition had been filed by a person who is no way related to the matter. He also contended that the appellant / opponents before the Registrar of
Trade Marks had not stated the date of availability of the Trade Marks Journal in the notice of opposition. He also contended that the Form TM-44 for
condonation of delay had been filed by a different counsel. Learned Counsel for respondent No. 1 thus based his arguments only on technicalities.
We have carefully heard the counsel on both sides and have gone through the documents filed.
The main issue that arises for consideration is whether the Registrar erred by not accepting the notice of opposition filed in Form TM-5 and the
Form TM-44 filed within the prescribed time.
Section 21(1) of the Act provides that
Opposition to registration.-(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for
registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed
manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.
On a plain reading of the provision of Section 21 of the Act, it is clear to mean that the notice of opposition should be filed within three months from
the date of advertisement of an application or within a further time not exceeding one month. This period may be extended by a maximum period of
one month. Date of advertisement is the date on which the journal is available to the public, which will be certified by the Registrar.
Rule 47(6) of the Trade Marks Rules, 2002 reads as under:
Notice of Opposition.-(1) XXX
(2) XXX
(3) XXX
(4) XXX
(5) XXX
(6) An application for an extension of the period within which a notice of opposition to the registration of a trade mark may be given under Sub-section
(1) of Section 21, shall be made in Form TM-44 accompanied by the fee prescribed in First Schedule before the expiry of the period of three months
under Sub-section (1) of Section 21.
(7) XXX
On a plain reading of the provisions of Sub-rule (6) of Rule 47 it is clear that an application for extension of the period on Form TM-44 has to be made
before the expiry of the period of three months which rule will clearly make the rule ultra vires of Section 21.
Here in this case in the interest of justice while dealing with procedural law, it is worthwhile quoting the observations of the Apex Court in State of
Punjab and Anr. v. Shamlal Murari and Anr. AIR 1976 SC 1977:
We must always remember that procedural law is not to be a tyrant but a servant not an obstruction but an aid to justice. It has been wisely observed
that procedural prescriptions are the hand -maid and not the mistress, a lubricant, not a resistant in the administration of justice. Where the non-
compliance, though procedural, will thwart fair hearing or prejudice doing of justice to parties, the rule is mandatory. But grammar apart, if the breach
can be corrected without injury to a just disposal of the case, we should not enthrone a regulatory requirement into a dominant disderatum. After all,
courts are to do justice, not to wreck this end product or technicalities. Viewed in this perspective, even what is required as mandatory traditionally
may perhaps have to be moderated into wholesome directions to be complied within time or in extended time.
From the view and discussion made in Additional District Magistrate (Rev) Delhi Admin. v. Sher Ram and Ors. (2005) 5 SCC 451 it was
observed that
it is a well recognised principle of interpretation of a statute that conferment of a rule making power by an Act does not enable the rule making
authority to make a rule which travels beyond the scope of the enabling Act or which is inconsistent therewith or repugnant thereto. From the above
discussion, we have no hesitation to hold that by amending the Rules and Form P.5, the rule making authority has exceeded the power conferred on it
by the Land Reforms Act.
Here we also quote the observations made by the Division Bench of the Hon'ble High Court of Bombay in 2006 (33) PTC 321 Bombay which is
as under:
...The section uses the word three months and such further time of one month. That period can also be beyond three months. It would, therefore, have
to be held, that the power in the Registrar to extend the period, can be before the period of three months has expired. In such event, the expression
one month in aggregate will have to be read to mean also on the expiry of the period of three months. The discretion in the registrar therefore, to
extend the time would also be on the expiry of the period of three months. It is not as if the Registrar is bound to give a period of one month. It is open
to the Registrar considering the facts of the matter, to give such additional period and if discretion is to be exercised to extend time, then to grant such
time, so that it does not exceed in the aggregate one month. This is how the delegate, understood the law when Rule 51(3) was omitted in 1969, in the
rules of 1959. The period of one month in aggregate therefore, in Section 21, will have to be read to mean aggregate of one month even on the expiry
of the period of three months.
If Rule 47(6) as it now stands has to be accepted, then it confers power to extend time only if the application is made before the expiry of the period
of three months. Such a rule will be clearly ultra vires Section 21(1) of the Act of 1999. It is also not possible to read down Rule 47(6) so as to make
the rule intra vires Section 21. Nothing also has been brought before us to point out any mischief that was being occasioned and which mischief was
required to be remedied. In the Act of 1940, Section 15(2) did not set out the period, but left it to the rule making authority. The Rule making authority,
provided a period of four months to file opposition. Under the Act of 1958, the period was fixed by the Legislature itself, though the delegate made
rules in an exercise of subordinate legislation. The same is the position in the Act of 1999. In these circumstances, we are clearly of the view that
Rule 47(6) is clearly ultra vires of Section 21 of the Act and consequently will have to be struck down as null and void.
In view of the above observations and also as held by this Board in various matter regarding the powers of the Registrar of Trade Marks for
extension of time, we are of the opinion that the Registrar ought to have taken the notice of opposition on record and proceeded with the opposition
proceedings in accordance with law. Moreover, in the instant case we find that the appellant has filed an application on Form TM-44 along with reply
to the show cause notice. The Registrar ought have allowed the Form TM-44 and should have taken on record the notice of opposition which was
within his powers as per the provisions of the Act. By applying the principles laid down by the Full Bench of the High Court of Delhi in Hastimal Jain's
case reported in 2000 PTC 24 (FB) followed by various High Courts and this Board, we are of the opinion that the Registrar ought to have taken the
notice of opposition on Form TM-5 allowing Form TM-44 for extension of time.
We, therefore, allow the OA/37/07/TM/DEL and set aside the order of the Deputy Registrar of Trade Marks dismissing the notice of opposition
No. DEL 201337 and allowing the application No. 793931B to proceed for registration.
We direct the Registrar of Trade Marks to take on record the notice of opposition on record allowing the Form TM-44 and dispose of the
opposition proceedings expeditiously in accordance with law. The matter is, therefore, remanded back to the Registrar for disposal after taking on
record the notice of opposition. In such circumstances there shall be no order as to costs. As the main appeal itself has been disposed of M.P.No.
92/07 becomes infructuous.