Sen And Pandit Equipment Private Limited vs Arvind Gupta And Ors

K.N. Basha, J

1 . This application is filed for the removal of trade mark Sen & Pandit with device under registration No. 695691 in Class 9.

2 . Ms. Meenal Khurana and Ms. Jaya Banerjee, the learned counsel for the applicant and Mr. Deb Kumar Ghosh the learned counsel for the respondent No. 1 are present today. The learned counsel for the applicant would submit that in this matter the notice of opposition in TM-5 along with TM-44 was filed on 19.01.2002 and taken on file by the Registrar of Trade Marks, Kolkata on 07.03.2005. It is submitted that the Assistant Examiner of the Trade Marks has also sent notice of opposition to the respondent No. 1 dated 07.03.2005 calling them to file a counter statement if any to the notice of opposition. It is contended that the applicant also sent letter dated 23.12.2005, 07.11.2006 and 19.02.2007 to the Registrar of Trade Marks to pass appropriate orders of deemed abandonment of the application No. 695691 under Section 21(2) of the Act. It is contended that there is absolutely no communication whatsoever received by the applicant from the Registrar of Trade Marks. As a result, the applicant has obtained a status report from database records of trade marks and the same disclosed that the status of the impugned trade mark as registered. The learned counsel would submit that the above said document have been filed before this Bench as Annexure A2 to A7.

The learned counsel for the applicant would further contended that they have also sent letter dated 23.07.2007 to the Registrar of Trade Marks for recalling the registration certificate No. 695691 in Class 9 and also send another letter dated 22. 11.2007 to the Registrar of Trade Marks for cancellation of Registration No. 695691 in Class 9 and being left with no response from the Registrar of Trade Marks, the applicant has preferred the present application for rectification.

4 . The learned counsel would contend that the Registrar of Trade Marks has not followed the procedures contemplated under the provision of the trade mark for dealing with the notice of opposition filed by the opponent and as such it is clear that the impugned trade mark was registered wrongly remaining in the register as on date and therefore the same is liable to be cancelled.

5 . Per contra, Mr. Deb Kumar Ghosh, the learned counsel for the respondent would contend that the respondent has not received any intimation and he has not received any instruction to that effect from the respondent No. 1. It is submitted that the impugned trade mark was registered and the certificate of registration was obtained by the respondent No. 1 and there is no fault of the respondent No. 1 herein.

6 . We have given our careful and anxious contentions to the rival contention put forward by either side and perused the entire materials available in records including the application filed by the applicant seeking for the relief of rectification of the impugned trade mark.

At the outset, it is to be stated that the undisputed fact remains that the applicant has filed the notice of opposition in Form-5 along with TM-44 and the said factor is borne out trademark by the records produced by the applicant under Annexure A2 dated 28.01.2002 and Annexure A3 dated 25.10.2002.

It is pertinent to not that the Assistant Examiner of Trade Marks also taken notice of opposition on record on 07.03.2005 under letter No. TL/13/3534. It is seen that the Registrar of Trade Marks also sent a notice to the respondent No. 1 calling them to file their counter statement to the notice of opposition through the letter dated 7. 03.2005. Therefore, it is crystal clear that the applicant has preferred a notice of opposition and the same is pending on the file of the Trade Marks, Kolkata even as per the registry document dated 07.03.2005.

In spite of the above said undisputed facts relating to the filing of opposition by the applicant and the pendency of the same. It is seen that strangely, the registrar of Trade Marks preferred to grant the relief of registration of the impugned trade mark in application No. 695691 under Class 9 in respect of AC Voltage Stabilizers, etc. On 24. 06.2005, the said factor is revealed as per the status report obtained from the database of records of Trade marks available from the information KIOSK in the Registry. It is very unfortunate to note that the Registrar of Trade Marks has simply overlooked, ignored and brush aside the pendency of the notice of opposition filed by the applicant. Though the Assistant Examiner of Trade Marks has sent a communication dated 07.03.2005 to the respondent No. 1. It is contended by the learned counsel for the respondent No. 1 that the respondent No. 1 has not received any intimation from the Registry regarding the notice of opposition. Even assuming that the respondent No. 1 has received the above said communication from the registry and not filing the counter statement, it is for the Registrar of Trade Marks to hear the applicant in respect of notice of opposition filed by them by following the procedure contemplated as per the provisions contended in the Trade Marks Act.

In the instant matter, all these procedure have been given a total goby by the Registrar of Trade Marks, resulting in grave miscarriage of justice to the applicant.

In view of the aforesaid reasons, we have been left with no other alternatives except cancelling the impugned trade mark under application No. 695691 in Class 9. Consequently, the Registrar of Trade Marks, Kolkata, the respondent No. 2 herein is directed to consider the application for registration filed by the respondent No. 1 and to consider the notice of opposition filed by the applicant by following the proper procedure contemplated as per the provisions of the Trade Marks Act by affording opportunity to both sides namely to the applicant herein who has filed notice of opposition and the respondent No. 1 herein who has applied for registration of the trade mark. It is made clear that the said exercise shall complete within a period of six months from the date of receipt of the order of this Bench. Accordingly, ORA/101/2008/TM/KOL is hereby allowed.