Sunij Pharma Pvt. Ltd., vs Sun Pharmaceutical Industries Ltd.

S. Usha, Technical Member

This appeal has arisen out of the order dated 29.09.2004 passed by the Deputy Registrar of Trade Marks in opposition No. BOM 56100 against

application No. 600636 deeming the opposition as abandoned in terms of Rule 50(2) of the Trade Marks Rules, 200 (hereinafter referred to as the

Rules).

The first respondent herein filed an application for registration of the label mark consisting of the word 'SUN' under application No. 600636 in class

5 on 02.07.1993 claiming user since March, 1993 under the Trade marks Act, 1999 (hereinafter referred to as the Act). The said application was

advertised before acceptance in the Trade Marks Journal No. 1218 dated 08.03.2000 at page 84.

The appellant herein filed a notice of opposition on 08.06.2000 objecting to the registration under Sections 11, 12 and 18(1) of the Act. On 7.02.2001

the first respondent filed their counter statement denying the various averments made in the notice of opposition. On receipt of the counter statement,

the Trade Marks Registry had called upon the appellant herein to file their affidavit of evidence in support of opposition. The appellant herein had

replied to the Registry stating that they do not desire to adduce any evidence. The matter was then fixed for hearing. The matter was heard on

29.09.2004. The applicants were represented by their counsel but no one appeared for the opponents before the Deputy Registrar nor Form TM-7

was filed by the opponents. The Deputy Registrar heard the applicants and passed the impugned order. Aggrieved by the said order, the appellants are

before us on appeal.

The appellant herein has filed the appeal on the ground that they had sent their written arguments and the same were not considered by the Deputy

Registrar and appellants had gone about in their grounds of appeal on the merits of the matter.

The first respondent had filed their counter statement denying the allegations made in the grounds of appeal.

The matter was taken up for hearing in the Circuit Bench at Mumbai on 02.04.2008. Learned Counsel Ms. Sejal R. Shah appeared on behalf of the

appellants and learned Counsel Shri Amit Jamsandekar appeared on behalf of the first respondent.

Learned Counsel for the appellant submitted that the Registrar had powers to extend time for filing of evidence. The counsel also submitted that

Rule 50 of the Rules was directory and not mandatory as had been held by various Courts. She submitted that the written arguments were sent to the

Trade Marks Registry which was not considered by the Registrar while passing the impugned order. The counsel also relied upon various judgments

to support the contention that the Registrar had powers to extend time for filing evidence and that Rule 50 of the Rules was only directory and not

mandatory. Various other judgments were relied on to submit that the trade mark could not be allowed to be registered in view of the provisions of

Sections 11, 12 and 18(1) of the Act.

Learned Counsel for the first respondent vehemently opposed the submission of the appellant's counsel. The counsel submitted that the Deputy

Registrar was correct in passing the impugned order and that there was no infirmity in the order.

We have heard both the counsel.

The main issue that arises for consideration in the instant case is that whether the appellant has complied with the prerequisites of the procedure

for opposition of the registration of the trade mark. Section 21 of the Act deals with the opposition to registration. Any person may oppose the

registration of a trade mark within three months from the date of advertisement of the trade mark in the Trade Marks Journal with prescribed fees.

The period may be extended on application to the Registrar. The applicant shall send his counter statement to the notice of opposition within two

months from the receipt of notice of opposition. After the counter statement is served on the opponent, the opponent and the applicant are directed to

file their evidence in support of their case. On completion of the above procedure the matter is set down for hearing. The respective parties are to file

Form TM-7 to intimate the Registrar about their intention to appear for hearing as per the provisions of Rule 56 of the Rules which is a most important

requisite in the opposition proceedings.

In the instant appeal, we shall first dealt with Rule 50 of the Rules. Rule 50 reads as follows:

Evidence in support of opposition.- (1) Within two months from services on him a copy of the counter statement or within such further period not

exceeding one month in the aggregate thereafter as the Registrar may on request allow, the opponent shall either leave with the Registrar, such

evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing

that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver

to the applicant copies of any evidence that he leaves with the Registrar under this sub-rule and intimate the Registrar in writing of such delivery

(2) If an opponent takes no action under Sub-rule (1) within the time mentioned therein, he shall be deemed to have abandoned his opposition

(3) An application for extension of the period of one month mentioned in Sub-rule (1) shall be made in Form TM-56 accompanied by the prescribed

fee before the expiry of the period of two months mentioned therein.

Sub-rule 1 of Rule 50 of the Rules is very clear where it is stated that the opponent on receipt of the counter statement is to file the affidavit of

evidence within two months thereon. The opponent may either file the evidence or may intimate the Registrar and the applicant of his intention not to

file evidence but to rely on the facts of the notice of opposition. On perusal of records, it is clear from the letter dated nil sent to the Registrar and the

applicants which reads as follows:

We would like to state that the opponents do not desire to adduce any evidence. Please do the needful in the matter.

From the letter it is clear that the opponent has no evidence to be adduced. From the Rule it is seen that there are two parts, namely, firstly the

Registrar has to be informed about not filing of evidence but to rely on the facts stated in the notice of opposition and secondly the same has to be

intimated to the applicant. The appellant has partly complied with the requirements. The appellant has intimated the Registrar and the applicant about

his non filing of evidence but has failed to mention about his intention to rely on the facts of the notice of opposition.

On a plain reading of Rule 50 of the Rules it is clear that the appellant has not complied with the necessary procedure of the opposition proceedings.

Next we shall deal with Rule 56 of the Rules. Rule 56 of the reads as follows:

Hearing and decision.- (1) Upon completion of the evidence (if any), the Registrar shall give notice to the parties of the first date of hearing. Such

notice shall be ordinarily given within three months of completion of the evidence. The date of hearing shall be for a date at least one month after the

date of the first notice. Within fourteen days from the receipt of the first notice, any party who intends to appear shall so notify the Registrar in Form

TM-7. Any party who does not so notify the Registrar within the time as aforesaid may be treated as not desiring to be heard and the Registrar may

act accordingly in the matter.

(2) If sufficient cause for adjournment is not shown by either of the parties the Registrar may proceed with the matter forthwith.

(3) If the applicant is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the application

may be treated as abandoned.

(4) If the opponent is not present at the adjourned date of hearing and has not notified his intention to attend the hearing in Form TM-7, the opposition

may be dismissed for want of prosecution and the application may proceed to registration subject to Section 19.

(5) In every case of adjournment the Registrar shall fix a day for further hearing of the case and shall make such order as to cost occasioned by the

adjournment or such higher costs as the Registrar deems fit.

(6) The fact that the agent or advocate on record of a party is engaged in another court, shall not be a ground for adjournment.

(7) Where illness of legal practitioner or an agent or his inability to conduct the case for any reason is put forward as a ground for adjournment, the

Registrar may refuse to grant the adjournment unless he is satisfied that the legal practitioner or an agent, as the case may be, could not have engaged

another agent or legal practitioner in time.

(8) The Registrar shall take on record written arguments if submitted by a party to the proceeding.

(9) The decision of the Registrar shall be notified to the parties in writing.

Sub-rule (1) of Rule 56 of the Rules states that on receipt of the notice of hearing the parties, both the opponent and the applicant shall notify on Form

TM-7 to the Registrar of their intention to appear before the Registrar to be heard and if no such notice is given on Form TM-7 it is to be taken that

they do not intend to appear to be heard. Further Sub-rule (4) of Rule 56 of the Rules states that if no notice on form TM-7 is sent and as well the

opponent does not appear then the opposition may be dismissed for non prosecution.

The appellant's main contention was that the Registrar had powers to extend the time and that Rule 50 of the Rules was directory and not

mandatory. We are also of the view that Rule 50 of the Rules is directory and not mandatory as has been held by various courts and this Board has

also observed in various matters, herein the instant case, it has no relevance. On a plain reading of the facts of the case, the appellants have not filed

any application seeking extension of time for filing the evidence nor have appeared before the Registrar. In view of the above, we are of the view that

the Registrar's order is in order.

From the above, it is clear that the appellant has not complied with any of the necessary procedures to be followed in an opposition proceedings.

The appellant has neither decided to rely on the facts of the notice of opposition nor has intimated the Registrar of their intention to appear on Form

TM-7 or appeared before the Registrar.

Having not complied with the same, we, therefore, are of the view that there is no infirmity in the order of the Deputy Registrar to be set aside. In

the above circumstances, the appeal is dismissed. No costs.