Sanyo Electric Co. Ltd. vs Assistant Registrar Of Trade Marks And Ors.

S. Usha, Technical Member

The appeal has been filed by the appellant herein against the order of the Assistant Registrar of Trade Marks dated 25.2.2005 rejecting the

opposition No. AMD 63708 and treating the same as abandoned by invoking the deeming provisions under Rule 50(2) of the Trade Marks Rules, 2002

(hereinafter referred to as the Rules).

The appellant is a trans - national company incorporated under the laws of Japan in the year 1950 and is engaged in the business of manufacturing

and selling various electric appliances and various electric and electronic products. The appellant is the original adopter of the world famous and well

known trade mark 'SANYO'. The trade mark 'SANYO' of the appellant has been registered in over 25 countries throughout the world including India

since about 1952.

The third respondent herein had applied for registration of the trade mark 'SANYO' in class 19 under application No. 1136826B in respect of

ceramic tiles, clay tiles and the same was advertised in the Trade Marks Journal Mega -II, dated 25.9.2003. The appellant had given a notice of

opposition to the said application on 19.2.2004 being opposition No. AMD-163708. The third respondent filed their counter to the notice of opposition

on 24.9.2004.

The appellant could not file their evidence in support of opposition in time and filed an application on Form TM-56 seeking extension of time up to

24.1.2005 for filing their evidence along with the prescribed fee. The learned Registrar had granted time upto 24.12.2004 by letter dated 23.12.2004

which was received by the appellant on 28.12.2004, i.e. after expiry of the extended period. The appellant filed another application in Form TM-56 on

31.12.2004 seeking further extension up to 24.1.2005. The appellant in the meanwhile had also filed their evidence on 20.1.2005 which was also duly

served on the third respondent.

On 2.3.2005 the appellant received a letter from the second respondent along with an order dated 25.2.2005 informing the appellant that the

opposition has been abandoned by operation of law under Rule 50(2) of the said Rules and the application No. 1136826B was proceeded to be

registered. Aggrieved by the said order the appellant had preferred the above appeal. The appellant also filed a Miscellaneous Petition bearing MP

No. 56/2005 for stay of the impugned order dated 25.2.2005.

The third respondent had filed their counter statement to the appeal which was a mere denial of the entire averments made by the appellant. The

only contention of the third respondent was that it had applied for registration in class 19, the goods which the appellant were not dealing with and that

there was no possibility of confusion.

The matter was taken up for hearing in the Circuit Bench at Ahmedabad on 25.7.2006. Learned Counsel Shri Akshay Vakil appeared for the

appellant and learned Counsel Shri Deepak Shukla appeared for the third respondent.

Learned Counsel for the appellant submitted that the journal publication was advertised on 25.9.2003. They had also filed their notice of opposition

to the said application in time. The third respondent had also filed their counter on 24.9.2004. The appellant had submitted that as per Rule 50 of the

said Rules the appellant were required to file their evidence in support of opposition on or before 24.11.2004. Learned Counsel for the appellant drew

our attention to the application filed on Form TM-56 for extension of time which was filed on 17.11.2004 was well within the statutory period of two

months. Learned Counsel for the appellant submitted that extension was granted upto 24.12.2004 by letter dated 23.12.2004 which was received by

the appellant only on 28.12.2004, for which the appellant could not file the evidence in time. Learned Counsel for the appellant also submitted that as

the evidence was not filed within time and that they also needed some more time, they had taken steps for extension of time clearly giving the reasons

for the delay and filed an application on 31.12.2004 seeking time up to 24.1.2005. Learned Counsel for the appellant also drew our attention to the

letter dated 20.1.2005 wherein they had stated that the evidence had been filed even before the expiry of time. The evidence filed in support of

opposition was also duly served on the third respondent and in turn the third respondent had filed their evidence in support of the application which was

served on the appellant on 17.3.2005.

Learned Counsel for the appellant submitted that the Assistant Registrar had passed an order on 25.2.2005 rejecting the opposition as no evidence

was filed in support of the opposition even without giving any findings in that order. The learned Counsel for the appellant also brought to our notice

that the order dated 25.2.2005 was communicated to the appellant only on 2.3.2005. He also submitted that Rule 50(2) of the said Rules was not

mandatory but was only directory. The learned Counsel also pointed out that the Assistant Registrar under Section 131 of the Trade Marks Act, 1999

(hereinafter referred to as the Act) had powers to extend time to file evidence even after expiry of prescribed period already extended based on the

principles laid down by the full Bench of the Apex Court. Learned Counsel for the appellant prayed that the appeal be allowed.

The learned Counsel for the third respondent mainly contended that the evidence was not filed in time and that the evidence which was filed after

the date, that is after 24.12.2004 as given by the Registrar cannot be considered a valid one and that the Registrar was correct in passing an order

rejecting the opposition. The counsel further prayed that the appeal be dismissed.

The learned Counsel for third respondent placed reliance on various judgments in support of his contention. He relied on Gujarat Medicraft Pvt.

Ltd. v. Cipla Limited 2006 (32) PTC 510 in support of his submission that the Registrar had no power to extend the time for filing evidence. This case

is not applicable to the case on hand as the facts of the case are different. Reliance was also placed on Golf Lynx and Anr. v. Petron Golf Equipment

Limited 1983 PTC 26, Shri Madan Mohan Lal Garg v. Shri Brij Mohanlal Garg 1982 PTC 180 and Hindustan Embroidery Mills Pvt. Ltd. v. Hemla

Embroidery Mills Pvt. Ltd. 1978(3) IPLR 143 which are not relevant to the case on hand.

The learned Counsel for third respondent further referred to Rule 50(2) of the said Rules and submitted that the Registrar had no powers to extend

time for filing evidence.

We have carefully gone through the pleadings on the file and the statements made by both the counsel. Going by the principles laid down by the

Full Bench of the High Court of Delhi, it is enough to mention that Rule 105 of the said Rules provides for grant of extension of time by the Registrar

in all matters excepting a few matters specifically referred to in that Rule. Rule 50 of the said Rules are to be read with the connected provisions of

the Act and the said Rules. Section 131 of the Act reads as under:

(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.

It is a settled position in law that the discretion of the Registrar under Section 131 of the Act extends to grant of extension in the matter of filing of

evidence in opposition. In view of the above, the Assistant Registrar was very well competent to grant extension of time to the appellant to file their

evidence in support of opposition. The Assistant Registrar had in fact granted time to the appellant to file their evidence and had communicated to the

appellant after the due date. On perusal of the records we find that the appellant had also filed their evidence in support of opposition which was

received by the Trade Marks Registry, the second respondent herein, but not considered by the Assistant Registrar on the date of passing of the

order.

The society at large has vital interest in maintaining the purity of the Register. In view of the above the Assistant Registrar should have brought on

record the relevant evidence filed by the appellant to substantiate his claim for arriving at a correct decision.

On the principles laid down by the Full Bench judgment of High Court of Delhi inH astimal Jain trading as Oswal Industries v. Registrar of Trade

Marks reported in 2000 PTC24 we are of the opinion that it is appropriate that the matter has to be remitted back to the Assistant Registrar to

consider the claim of the appellant and pass suitable order after considering the evidence filed by the appellant.

We accordingly allow the appeal and set aside the order of the Assistant Registrar of Trade Marks dated 25.2.2005 in application No. 1136826B

and remand the matter back to the Assistant Registrar of Trade Marks, Ahmedabad for fresh consideration of the opposition in accordance with law.

As the main appeal has been allowed, MP No. 56 of 2005 does not survive. However, there will be no order as to costs.