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Judgment
S. Usha, Technical Member
The appeal has been filed by the appellant herein against the order of the Assistant Registrar of Trade Marks dated 28.2.2005 rejecting the
opposition No. AMD -163707 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. 882175 B in respect of
building materials (non metallic), non-metallic rigid pipe for building, asphalt, pitch and bitumen, non-metallic transportable building, monuments, not of
metal 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- 163707. 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 the 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.
The third respondent in reply had also filed their evidence in support of the application on 17.3.2005. On 24.3.2005 the appellant received a letter
from the second respondent along an order dated 28.2.2005 informing the appellant that the opposition has been abandoned by operation of law under
Rule 50(2) of the said Rules and that application No. 882175B was proceeded to be registered. Aggrieved by the said order the appellant has
preferred the above appeal. The appellant also filed a Miscellaneous Petition bearing MP No. 57/2005 for stay of the impugned order dated 28.2.2005.
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 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 Dr. R.H. Acharya 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 i.e. before 24.11.2004 as per the said Rules. 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 and 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 28.2.2005 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 28.2.2005 was communicated to the appellant only on 24.3.2005. 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 High Court of Delhi. Learned Counsel for the appellant prayed that the appeal be allowed.
Learned Counsel for the third respondent mainly contended that the class of goods is different. He submitted that they had adopted the trade mark
'SANYO' as early as 1999 and that they were not aware of the appellant's use of the trade mark 'SANYO'. The main contention of learned Counsel
for third respondent was that the Assistant Registrar was right in rejecting the opposition as sufficient time was already granted.
Learned counsel for the third respondent also submitted that the Assistant Registrar's power was discretionary and that he had already granted
time up to 24.12.2004 and had already made it clear that no further time would be granted. Learned Counsel also submitted that Section 131 of the
Act will be applicable only when there is no time limit specified in the Act. He further prayed that the appeal be dismissed.
Learned Counsel for the third respondent also relied on a number of judgments in support of his contentions. But we do not find any case relevant
to the facts of this case.
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 Mark Registry, the second respondent herein, but not considered by the Assistant Registrar on the date of passing of the
impugned 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 of the Apex Court in Hastimal 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 afresh and pass 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 28.2.2005 in application No. 882175 and
remand the matter back to the Assistant Registrar of Trade Marks, Ahmedabad for fresh consideration in accordance with law. As the main appeal
has been allowed, MP No. 57 of 2005 does not survive. However, there will be no order as to costs.