Silco Silk Mills vs Shanti Silks And Ors.

S. Jagadeesan, J

The appeal is against the order of the Deputy Registrar of Trade Marks, New Delhi dated 14.6.1995 on an Interlocutory application filed by the

appellants seeking permission to file evidence under Rule 53(1) of the Trade and Merchandise Marks Act, 1958. The Deputy Registrar dismissed the

application. The short facts to appreciate the claim of the appellants are that M/s. Shanti Silks, the first respondent herein filed an application for

registration of the trademark HILTEN in respect of artificial Silk Crape and Plain fancy piece goods, suits and shirtings under class 24. The said

application was filed on 29.1.1985, which was advertised in the Trade Mark Journal No. 980 dated 1.4.1990 at page 41, prior to acceptance. Mrs.

Mohini T. Tulsiani, the proprietor of the appellants herein filed the opposition on the grounds that the registration of the impugned mark would

contravene Sections 9, 11(a), 11(b), 11(e) and 12(2) of the said Act. The first respondent filed their counter on 24.6.1991 and the same was served on

the appellants on 5.8.1991. The appellants were required to file evidence under Rule 53. As the proprietor of the appellants Mrs. Mohini T. Tulsiani

was not well, the evidence could not be filed immediately and time was extended from 6.8.1991 to 5.4.1992 periodically. In the meanwhile, on

9.9.1991, the first respondent filed Form TM-16 requesting for amendment of the name and constitution of the partnership firm, the copy of which was

served on the appellants' counsel on 27.1.1992. On 27.6.1992, the proprietor of the appellants Mrs. Mohini T. Tulsiani expired and the same was

brought to the notice of the second respondent as well as the counsel for the first respondent. On 6.4.1993, Form TM-16 was filed to amend the name

of the appellants.

The second respondent heard both the Interlocutory applications filed under Form TM-16 by the first respondent as well as the appellants. However,

by order dated 14.12.1993, the second respondent allowed the TM-16 filed by the first respondent. Thereafter, the second respondent invited the first

respondent to file evidence under Rule 54 by recording a finding that the appellants had not filed evidence under Rule 53. The first respondent filed the

affidavit under Rule 54 and the appellants were invited to file their evidence under Rule 55. The appellants could not file the evidence either under

Rule 53(1) or Rule 55 as Form TM-16 filed by them was not disposed of and until the legal representatives of the proprietor or the subsequent

proprietor was brought on record, no steps can be taken by the appellants to prosecute the matter. Hence the appellants filed another Interlocutory

application on 17.8.1994 requesting the second respondent to allow the Form TM-16 filed by the appellants on 12.4.1993 and further to grant two

months time to file evidence under Rule 53(1) and also to stay the proceedings until the, TM-16 filed by the appellants is finally disposed of. On

18.10.1994, the second respondent allowed TM-16 filed by the appellants and granted time to file the amended notice and the matter was adjourned to

14.11.1994. In the meanwhile, on 28.10.1994, the appellants filed the amended notice of opposition in the names of M/s. Prakash Tikamdas Tulsiani

and Tikamdas Chandumal Tulsiani, son and husband of deceased Mrs. Mohini T. Tulsiani. On 14th November, 1994, the matter was adjourned to

13.12.1994 on which date there was no representation on behalf of the first respondent.

When the case was listed for argument before the second respondent on 20.2.1995, the counsel for the third respondent made a statement that his

client does not want to file the amended TM-6 (counter statement). The matter was adjourned to 14.4.1995. The appellants' advocate received the

impugned order on 20.6.1995 rejecting the Interlocutory application filed by the appellants on 16.8.1994. Neither the appellants nor the counsel was

served with any notice of ' hearing on 13.6.1995. In fact the file discloses that the notice of hearing sent to the appellants was returned with a mark

'incomplete address' and the counsel was not served with any notice. Hence, the appeal has been filed to set aside the impugned order of the Deputy

Registrar on the file of Delhi High Court in CM(M) 441 of 1995. After the new amended Trade Mark Act, 1999 came into force, the said appeal was

transferred to this Appellate Board.

We heard both the counsels, Shri Surinder Singh for the appellants and Shri Bhalerao for the respondent. The learned counsel for the appellants

contented that the second respondent had rejected the Interlocutory application filed by the appellants seeking time to file the evidence under Rule

53(1) on the ground that already the respondent had been given opportunity to file their evidence under Rule 54 and hence the entire procedure cannot

be reverted back. It is his contention that while doing so, the second respondent has totally failed to consider that the respondents were given

opportunity to file their evidence under Rule 54, while the appellant's application TM-16 for amendment of the petition to bring the legal

representatives of the appellant were on record was pending. Without the legal representatives brought on record, it is not open to them to file any

evidence. After TM-16 filed by the appellants was allowed, the appellants are entitled to file their evidence under Rule 53(1). Now, the second

respondent had deprived the appellants of their right to file the evidence under Rule 53(1). As the main application for registration is pending, the

learned counsel for the appellant contended that the appellants may be given an opportunity to file their evidence and the respondent also can file their

evidence subsequently under Rule 54 and no one is going to be prejudiced by this.

On the contrary, the learned counsel for the respondent contented that the original proprietor of the appellants was given sufficient time to file the

evidence. Since so evidence was filed within the extended period, the Registrar directed the respondent to file the evidence under Rule 54 and the

respondent also complied with the same. Hence, there is no infirmity in the order of the second respondent.

We carefully considered the above contentions of both the counsels. It is unnecessary to elaborate the facts. The original owner of the appellants

Mrs. Mohini T. Tulsiani expired on 27.6.1992. On 6.4.1993, Form TM-16 was filed by the appellants for amendment in the notice of opposition. On

5.7.1993, the TM-16 filed by the first respondent as well as the appellants listed for hearing. On 14.12.1993, the TM-16 filed by the respondent alone

was allowed. The TM-16 filed by the appellants were allowed on 18.10.1994 and the appellants were given time to file the amended notice. On

28.10.1994, the amended notice was filed. In the meanwhile, the first respondent was called upon to file evidence under Rule 54 and the appellants

were called upon to file reply evidence under Rule 55. On 17.8.1994, the appellants filed Interlocutory application, which is the subject matter of this

appeal bringing to the notice of the second respondent about the pendency of the TM-16 filed by them and for early disposal and also for granting time

to file evidence in support of the opposition. Under the impugned order, the said application was rejected.

When the second respondent called upon the first respondent to file their evidence under Rule 54, the appellant did not file their evidence under

Rule 53 because the application filed by them in TM-16 was pending. It is a known fact that unless TM-16 was ordered, the appellants cannot file

their evidence under Rule 53 and even if they file, the same cannot be received as they were not parties in the petition. The Deputy Registrar of

Trade Marks, the second respondent seeks to have invited the first respondent to file evidence under Rule 54 as soon as TM-16 filed by them was

ordered unmindful of the pendency of the TM-16 filed by the appellants herein and also their inability to file the evidence under Rule 53 because of the

pendency of TM-16 filed by them. The Deputy Registrar ought not to have proceeded by calling upon the respondent to file their evidence under Rule

54 without disposing of the TM-16 filed by the appellants and giving them an opportunity to file the evidence. The procedure adopted by the Deputy

Registrar is not in conformity with the procedure contemplated under the statute.

Further, when the Form TM-16 filed by the appellants was allowed, on 18.10.1994, they must have an opportunity to file evidence under Rule 53.

Without providing such an opportunity, the matter cannot be disposed of. On these grounds, we are of the view that the impugned order of the second

respondent cannot be sustained.

The parties can be given sufficient opportunity to put forth their evidence because, of the respective parties, one will have the opportunity to file the

reply for the other and as such, the rights of the parties are not prejudiced in any manner. Accordingly, we set aside the impugned order of the Deputy

Registrar of Trade Marks dated 14.6.1995. The appeal is allowed.

Before we part with the appeal, we direct the appellant to file their evidence under Rule 53 within two weeks from the date of the receipt of copy

of this order and the respondents are directed to file their evidence on reply under Rule 54 within two weeks on receipt of the evidence of the

appellants. The parties are not entitled for any further extension of time and after the compliance of the above direction, the Registrar is directed to

dispose of the application for registration within two months.