R.K. Cable Company vs Registrar Of Trade Marks And Anr.

S. Jagadeesan, J

The appellant has preferred this appeal against the order of the Deputy Registrar of Trade Marks dated 4.5.95. M/s. Plaza Battery Works, the

second respondent herein, filed application No. 449535 for registration of the trade mark 'PLAZA' in class 9 on 11.2.86 in respect of battery and parts

thereof. The said application was advertised in the Trade Marks Journal No. 997 dated 16.12.90 at pages 1062-63. R.K. Cable Company, the

appellant herein filed the notice of opposition on 5.3.91 to oppose the registration of the impugned mark on the ground that the appellants have been

manufacturing and marketing electrical coil holder, electric bell push, electric switches, electric bell, connectors, chokes, insulated electric wires and

insulated electric cables etc., and they adopted the trade mark 'PLAZA' in the year 1975 which is registered under No. 323032 as of 14.2.77 and that

the impugned mark applied for is not registrable under Sections 9, 11(a), 12(1) and 18 of the Trade and Merchandise Marks Act, 1958 (hereinafter

referred to as the Act). The second respondent filed the counter statement refuting all the material averments contained in the notice of opposition

stating that the second respondent adopted the impugned trademark in the year 1981 honestly and since then they are using the same in respect of

battery and parts thereof and that the second respondent's specification of goods is totally different from that of the appellant. Hence the mark is

registrable under Section 12(3) of the Act. Appellants were intimated by the Registrar of Trade Marks to file their evidence within two months from

the date of receipt of the counter statement of the second respondent and if not the opposition filed by the appellant will be deemed to have been

abandoned. The appellant filed TM-56 dated 30.11.92 for extension of time and thereafter they did not take any action in the matter. The second

respondent was informed by the Registrar through their letter dated 10.5.94 to file evidence under Rule 54 of the Rules framed under the Act. After

completion of this formality the hearing was fixed on 25.1.95. Counsel appeared on behalf of the appellant and none represented the second

respondent. Under the impugned order, the opposition of the appellant was rejected on the ground, they did not file any evidence within the time

granted and as such the opposition is deemed to have been abandoned.

The Deputy Registrar of Trade Marks relied upon two judgments of learned single Judges of the High Court of Delhi in the case of Hindustan

Embroidery Mills Pvt. Ltd. and Another v. Hemla Embroidery Mills Pvt. Ltd., C.M(M) No. 20/1977 and the other appeal CM(M) No. 59/95 wherein

the Delhi High Court held that Rule 53(2) is mandatory and failure on the part of opponent to file evidence within the stipulated time, the opposition is

deemed to have been abandoned and the Registrar has no power to extend the time. Against the said impugned order of the Deputy Registrar the

appellant filed the appeal No. CM(M) No. 338/95 on the file of High Court of Delhi at New Delhi which stood transferred to this Board by virtue of

Section 100 of the Trade Marks Act, 1999.

Learned counsel for the appellant Mr. S.K. Bansal contended that the judgments of the learned single Judges in both the appeals CM(M) No. 20 of

77 as well as CM(M) No. 59/95 were reconsidered by a Full Bench of the same High Court in a batch of cases CM(M) 525/94H, astimal Jain

Trading as Oswal Industries v. Registrar of Trade Marks and another etc., 2000 PTC 24 (FB). In the said judgment reported in 2000 PTC 24, the Full

Bench of the Delhi High Court held that the view taken by the learned single Judges that Rule 53(2) is mandatory had been set aside and they further

held that Rule 53(2) is only directory and as such impugned order of the Registrar rejecting the opposition of the appellant therein on the ground that

Rule 53(2) is mandatory cannot be sustained and the impugned order of the Registrar has to be set aside and the matter has to be remitted back to the

Registrar for fresh disposal.

None appeared on behalf of the second respondent, the contesting party.

We have perused the impugned order of the Deputy Registrar. In page 3 of the order the Deputy Registrar has clearly mentioned that he came to

the conclusion that the provision of Rule 53(2) is mandatory on the basis of the separate judgment of the two learned single Judges of the Delhi High

Court in CM(M) No. 20/77 which was followed in the latter judgment in CM(M) No. 59/95. After extracting both the judgments, the Deputy Registrar

in the concluding paragraph of the impugned order has stated that in view of the principles laid down in the two judgments, the opposition filed by the

appellant stand nowhere and the same should have been dismissed under Rule 53(2) after 3.1.93 since the opponents had applied for extension of time

upto that date. Consequently opposition No. DEL 7103 filed by the appellant shall deemed to have been abandoned and application No. 449535 in

Class 9 be accepted and the same shall proceed to registration. Hence it is clear that the first respondent, the Deputy Registrar of Trade Marks had

rejected the opposition of the appellant only on the basis of the principles laid down by the Delhi High Court that Rule 53(2) is mandatory.

As pointed out by learned counsel for the appellant, the Full Bench of the Delhi High Court considered this issue in the judgment reported in 2000

PTC 24 as to whether Rule 53(2) of the Trade and Merchandise Marks Rules, 1959 framed under the Trade and Merchandise Marks Act, 1958 is

directory or mandatory and in paragraph 19 of the judgment the learned Judges held that it is only directory in the following terms:-

We have considered the rival submissions and read the various Judgments. The determination of the questions raised would depend on whether

Rule 53(2) can be said to be mandatory or merely directory. Mere use of the word ""shall"" is insufficient to treat the Rule as mandatory. Even though

the word ""shall"" prima facie indicates that it is mandatory, still the Court must ascertain the real intention of the Legislature by looking to the Statute as

a whole. It must also be remembered that a legal fiction cannot be stretched beyond the purpose for which it was enacted. As seen above the legal

fiction is not absolute. It is limited by the words ""unless the Registrar otherwise directs"". In our view it is significant that wherever the Legislature

intended to prescribe a fixed time, which could not be extended, it has specifically so done. The necessary implication of this is that in all other cases

the time was not to be fixed but one which would be within the power of the Registrar to extend. Undoubtedly the intention of the Legislature was to

minimise delays. For that fixed time is laid down in the Statute itself. However, a reading of Section 21 itself shows that for procedural matters like

filing evidence the Legislature was not laying down a fixed time in the Statute. This view is supported by a, reading of Section 101 and Rule 106.

Section 101 indicates that only the circumstance under which time cannot be extended by the Registrar is where a time has been expressly provided in

the Act. Similarly, under Rules 106 the time can be extended by the Registrar, in all cases except for the four, which have been mentioned in

paragraph 14 above. It is all the more significant that Rule 53(2) and Rule 54 have not been included in Rule 106 to interpret it otherwise would be to

add in Rule 106 the words ""or Rule 53"". The Legislature has purposely omitted to do so. It is not possible to accept submission that Rule 53 gets

incorporated in Section 21. If the Legislature wanted to provide a fixed term of two months in Section 21(4) as they have done in Section 21(1) and

(2), they would have done so. This interpretation is also borne out by the a fact that the deeming provision, in Rule 53(2) comes into play only if the

Registrar does not otherwise directs. The fact that legal fiction is subject to the direction of the Registrar also shows that it is not absolute but is being

controlled by discretion of Registrar. In our view Section 101 and Rule 106 permit the Registrar to extend time, even though the time has expired. To

hold otherwise would be to negate the words to that effect used both in Section 101 as well as Rule 106. We are thus in agreement with the view

expressed by the Bombay High Court and the Gujarat High Court. We disagree with the view expressed in the case reported in 1978 (3) PLR 148

and in the Order dated 30th January 1995 in C.M. (M) 59/95"".

Now in view of the finding of the Full Bench that Rule 53(2) of the Trade and Merchandise Marks Rules, 1959 being directory and the Full Bench

having disagreed with the earlier views, which was relied upon by the Deputy Registrar, we are of the view that the impugned order of the Deputy

Registrar cannot be sustained. Hence the same is set aside and application No. 449535 filed by the second respondent for registration of the trade

mark 'PLAZA' is remitted back to the Registrar of Trade Marks, first respondent herein for fresh disposal, in accordance with law. The first

respondent is directed to dispose the same within four months from the date of receipt of the copy of this order and the records since the application is

of the year 1986.