Sharp Kabushiki Kaisha vs Sunil Grover and Others

S. Muralidhar, J.—The challenge in this petition is to an order dated 16th August 2007 passed by the Intellectual Property Appellate Board ("IPAB") in TA/138/2003/TM/DEL Sunil Grover v. Sharp Kabushiki Kaisha, Japan) and also to an order dated 12th December 2007 of the IPAB in MP No. 121 of 2007 filed by the Petitioner Sharp Kabushiki Kaisha ("SKK") in the said appeal.

The Respondent No. 1 Sunil Grover, trading as Analog Systems in New Delhi, filed an application bearing No. 447061 dated 18th December 1985 in Class 9 seeking registration of the trademark SHARP in respect of "Television Boosters, two-in-one, television antennae and converters". Two oppositions were filed to the said application. One was filed by SKK on 7th February 1994. It appears that a separate opposition was filed by M/s. Associated Electronics and Electricals Industries (Bangalore) Pvt. Limited ["AEEIPL"]. By an order dated 3rd December 1997 the Deputy Registrar of Trade Marks, Delhi, Respondent No. 2 herein, allowed the Petitioner''s opposition and refused the registration of the mark of Respondent No. 1. The appeal filed by Respondent No. 1 against the said refusal is TA/138/2003/TM/DEL which is pending before the IPAB. As regards the opposition filed by AEEIPL, by an order dated 30th January 2004 the Deputy Registrar of Trade Marks held the application No. 447061 in class 9 filed by Respondent No. 1 to be abandoned for want of prosecution in terms of Rule 56 (3). The said order, according to the Petitioner SKK, became final as no appeal was filed against it by Respondent No. 1.

When the aforementioned appeal filed by Respondent No. 1 against the order dated 3rd December 1997 of the Deputy Registrar was heard, the IPAB in an order dated 16th August 2007 observed that the order dated 30th January 2004 passed by the Deputy Registrar of Trade Marks holding the trademark registration application of Respondent No. 1 as having been abandoned was not directly connected with the issue involved in the appeal and that the IPAB had no jurisdiction to pass any order in relation to the said order of the Deputy Registrar of Trade Marks. The said order dated 16th August 2007 of the IPAB is impugned in the present petition.

Thereafter, the Petitioner SKK filed MP No. 121 of 2007 in the pending appeal praying that the IPAB should dispose of the appeal "In view of the abandonment of the application No. 447061 in Class 9". By the second impugned order dated 12th December 2007 while declining to entertain MP No. 121 of 2007 the IPAB clarified that it would be open to the SKK "to raise all such contentions in the main hearing."

This Court has heard the submissions of Mr. Sushant Singh, learned Counsel appearing for the Petitioner.

In the considered view of this Court, the view taken by the IPAB in the second impugned order dated 12th December 2007 cannot be faulted. The Respondent No. 1 has a right to appeal against the order dated 3rd December 1997 refusing the registration and that appeal TA/138/2003/TM/DEL is pending before the IPAB.

As a Respondent in the said appeal it would certainly be open to the Petitioner SKK to urge the contention before the IPAB that in relation to the same application filed by Respondent No. 1 herein, an abandonment order has been passed by the Deputy Registrar which has attained finality. The effect of such an abandonment order on the pending appeal of Respondent No. 1 will be considered by the IPAB on merits. It is not necessary for this Court to pronounce on the effect of such abandonment order in the present petition. It was also not erroneous on the part of the IPAB to observe that such contention can be raised in the appeal and will be considered by it.

As regards the order dated 16th August 1997 of the IPAB, if the said order is read with the subsequent order dated 12th December 2007 it is plain that the IPAB has not foreclosed the right of the Petitioner to oppose the appeal of Respondent No. 1 on all grounds available. No observation made in the impugned order dated 16th August 2007 passed by the IPAB will come in the way of the IPAB considering the submissions of the Petitioner SKK herein as regards the effect of the abandonment order passed by the Deputy Registrar of Trade Marks while hearing the main appeal TA/138/2003/TM/DEL.

Consequently, neither the impugned order dated 16th August 2007 nor the subsequent order dated 12th December 2007 of the IPAB calls for interference. This Court requests the IPAB to Endeavour to dispose of the appeal TA/138/2003/TM/DEL within a period of six months from today.

With the above observations, the writ petition is disposed of. The interim order dated 9th January 2008 stands vacated.

Order be given dasti.