UCB vs Torent Pharmaceuticals Limited And Ors.

S. Usha, Technical Member

This appeal is arising out of the order dated 29.06.2006 dismissing the interlocutory petition for extension of time to file evidence in support of

opposition and thereby treating the opposition as abandoned. M.P. No. 75/2005 has been filed to stay operation of the impugned order till disposal of

the appeal.

The first Respondent filed an application for registration of the trade mark 'Zirtin' under No. 618569 dated 03.02.1994 in class 5 under the provisions

of the Trade and Merchandise Marks Act, 1958. The said mark was proposed to be used as on the date of application i.e., on 03.02.1994. The mark

was advertised in the Trade Marks Journal No. 1270 at page No. 406 dated 05.05.2002.

The Appellant herein had filed the notice of opposition to the registration of the trade mark 'Zirtin' under application No. 618569 on 12.07.2002. The

Appellant had opposed the registration mainly on the ground that they were the registered proprietors of the trade mark 'Zyrtec' registered under No.

449027 as of 30.01.1986 in class 5 and as such registration of the mark 'Zirtin' should be refused under the provisions of Sections 9, 11(a), 11(e), 12(1)

and 18(1) of the Trade and Merchandise Marks Act, 1958. On 04.04.2003, the first Respondent had filed their counter statement.

On 21.7.2003 the Appellants were called upon to file their evidence in support of opposition within two months from the date of receipt of the

counter statement. The Appellants had to file their affidavit of evidence by 21.09.2003. On 19.09.2003, they had filed a request on Form TM-56 for

extension of time up to 21.10.2003. On 20.10.2003 and on 20.11.2003 the Appellant had sought further extension up to 21.11.03 and 21.12.2003

respectively on the ground that that the evidence was being assembled. On 21.11.2003, the Appellant received a letter dated 08.10.2003 from the

second Respondent allowing the Appellant's request for extension up to 21.10.2003. Again on 08.12.2003 the Appellant received a letter dated

04.12.2003 allowing the Appellant's request for extension up to 21.11.2003 and rejecting the request for extension up to 21.12.2003. The second

Respondent had also called upon the first Respondent i.e., the applicants to file their evidence in support of the application. On 22.12.2003, the

Appellant herein has filed an interlocutory petition for taking the evidence in support of opposition on record, after serving a copy on the first

Respondent. The first Respondent filed their counter to the said interlocutory petition praying that the petition be disallowed with exemplary costs by

not taking on record the evidence. The matter was heard on 01.02.2005. On 29.06.2005, the second Respondent, i.e. the Assistant Registrar of Trade

Marks passed an order dismissing the interlocutory petition and treated the opposition as abandoned and allowed the application to proceed for

registration. The Appellants are before us on appeal aggrieved by the said order dated 29.06.2005.

The matter set down for hearing on 11.01.2007 at the Circuit Bench at Ahmedabad. We have heard Shri Sanjay Jain, Senior Counsel assisted by

Shailmanu Singh Rathore for the Appellant and Shri R.R. Shah, learned Counsel for the first Respondent.

Learned Senior Counsel Shri Sanjay Jain mainly contended that the Appellants had been cautious enough and had made a request for extension of

time for filing evidence. In spite of their request in time, the second Respondent had intimated about the extension after the extended time. The

learned Counsel also submitted that the interlocutory petition filed by the Appellants were totally not considered by the second Respondent while

passing the order.

Learned Senior Counsel for the Appellant mainly placed reliance on the judgments of this Board, namely Asian Paints Ltd. v. Registrar of Trade

Marks and Anr. 2005 (30) PTC 444 (IPAB); Hindustan Lever Ltd. v. Sunrider Corporation and Anr. 2006 (32) PTC 287 (IPAB) and Tata Motors

Ltd. v. Cavincare Pvt. Ltd. 2006 (32) PTC 717 (IPAB) in support of his contention that the Registrar had powers to extend time for filing evidence in

support of opposition. The learned Senior Counsel referred to Rule 109 of the Trade Marks Rules, 2002, which reads as under:

Directions not otherwise prescribed.-Where in the opinion of the Registrar, it is necessary for the proper prosecution or completion of any

proceedings under the Act or rules for a person to perform an act, file a document or produce evidence, which is not provided for by the Act or the

rules, the Registrar may by notice in writing require the person to perform the Act, file the document or produce the evidence, specified in the notice.

Based on the above rule, he submitted that for proper adjudication of a matter, if the Registrar is of the opinion that certain documents are to filed or

evidence to be filed, may issue a notice for the purpose even if it is not so provided in the Act or Rules.

Learned Senior Counsel further submitted that they had been making requests for extension regularly before the expiry of the period and the same

was not considered by the Assistant Registrar. The learned Senior Counsel referred to the judgment Dharamsi Morarji Chem. Co. Ltd. v. T.J.

Fertilizers 2002 (24) PTC 10 (Guj.) wherein the judgment in the matter of Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks

2000 PTC 24 (FB) was followed to support the contention that the Registrar had powers to extend the time in filing evidence even though the period

mentioned in the Rules or extended period thereof has expired and the application made for extension of time is beyond that period.

Learned Senior Counsel referred to the following Section 132 of the Trade Marks Act, 1999 (hereinafter referred to as the Act):

Abandonment.-Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act

relating to trade marks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within

a time specified and after giving him, if so, desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied

within the time specified in the notice.

He submitted that if the Registrar was of the opinion that there had been a default on the part of the Appellant, he should have granted an

opportunity to them to rectify the same within a specified time and if not complied with within that time, should have treated the opposition as

abandoned.

The learned Senior Counsel concluded his arguments praying that the appeal be allowed and the opposition proceedings be conducted, taking on

record the evidence filed by the Appellant.

The learned Counsel for the first Respondent Shri R.R. Shah mainly submitted that the judgment relied on by the Appellant cannot be considered

as the applicant had sought extension of time and not the opponent in these cases. The other submission made by the learned Counsel for the first

Respondent was that the Board's judgment relied on by the Appellant were from the orders of the Assistant Registrar who had passed seven lines

order and that was not the case in the present appeal as the order here was a detailed order.

He also drew our attention to the provisions of Sub-section (4) of Section 21 of the Act, definition of the word ""prescribed"" as per Clause (s) of

Sub-section (1) of the Section 2 and the provisions of Sections 131 and 157 of the Act with regard to extension of time and the powers conferred on

the Registrar.

The other argument of the learned Counsel for the first Respondent was that awarding of costs by the Assistant Registrar was his discretionary

powers. His contention was that the cost awarded in this case was correct. He relied on two judgments, namely S.M. Nooruddin v. Mahomed Oomer

Mahomed Nurulla Saheb AIR 1956 Bom. 641 and P. Sheik Batcha Rowther and Ors. N.R. Alagappan Servai AIR 1959 Mad. 12 in support of his

contention that awarding of cost was discretionary powers of the Registrar and that the High Court will not interfere with that discretionary power.

We have heard the rival submissions of the counsel. It would be relevant to quote the provisions of the Act and the rules made thereunder to

ascertain the powers of the Registrar. Section 21 of the Act reads as follows:

Opposition to Registration.-(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for

registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed

manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar of opposition to the registration.

(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such

copy of the notice of opposition, the applicant shall send to the Registrar, in the prescribed manner a counter statement of the grounds on which he

relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter statement the Registrar shall serve a copy thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to

the Registrar, and the Registrar shall give an opportunity to them to be herd, if they so desire.

(5) The register shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or

limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a counter statement after receipt of a copy of such notice neither resides nor

carries on business in India, the Registrar may require him to give security for the costs of proceedings before him, and in default of such security

being duly given, may treat the opposition or application, as the case may be, as abandoned.

(7) XXXXXX

On a plain reading of the provisions of Sub-sections (1) and (2) of Section 21 of the Act, it mentions the specific period within which the notice of

opposition and counter statement is to be filed. Whereas Sub-section (4) of Section 21 only provides that the opponent and the applicant to file their

evidence within a prescribed time and no specific period mentioned as under Sub-sections (1) and (2) of Section 21 of the Act.

Section 131 of the Trade Marks Act, 1999 provides as under:

Extension of time.-(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.

This section clearly provides that the Registrar, on application made for extension and finds that there is sufficient cause, extend time for filing of

evidence. As seen earlier in Section 21 of the Act though there is a mention about the period within which the notice of opposition and counter

statement has to be filed as per Sub-sections (1) and (2), Sub-section (4) does not specify any period and when it just mentions prescribed period, we

find that the Registrar has powers to extend time. Now the relevant rules of the Trade Marks Rules, 2002 (hereinafter referred to as the Rules) which

deal with opposition to registration are to be considered.

Evidence in support of opposition.-(1) Within two months from services on him of a copy of the counter-statement of 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 (Sic) then. He shall deliver to the applicant copies (Sic)

the Registrar under this sub-rule and (Sic) delivery.

(Sic) under ""Sub-rule (1) within the time men(Sic) (Sic)ave abandoned his opposition.

(Sic) of the period of one month mentioned in (Sic) 56 accompanied by the prescribed fee (Sic) (Sic)nths mentioned therein.

(Sic) months of the receipt of the counter (Sic)ceeding one month as the Registrar (Sic) or inform the Registrar that he has (Sic) position. Sub-rule (2)

of Rule 50 is clear (Sic) is not complied with, Sub-rule (2) (Sic) have been abandoned.

(Sic) An application for extension of time under (Sic) not being a time expressly provided in the Act or prescribed by Rule 79 or by Sub-rule (4) of

Rule 80 or a time for the extension of which provision is made in the rules) shall be made in Form TM-56.

(2) Upon an application made under Sub-rule (1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time

applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to

impose, extend the time and notify the parties accordingly and the extension may be granted though the time for doing the act or taking the proceeding

for which it is applied for has already expired.

On a plain reading of this rule, it is found that when the rule provides for filling an application seeking extension of time, them the Registrar has powers

to extend time on conditions as he thinks fit.

On a plain reading of Sections 21 and 131 of the Act and Rules 5 and 105 of the Rules, it is clear that the Registrar has powers to extend time for

filing evidence. Moreover, when an application for extension is provided under the Rules, the Registrar has powers. No substantive right accrues to

the Respondent because of the Appellant's failure to produce evidence in support of opposition within the prescribed time. Based on the above view, it

is clear that Rule 50 is merely directory and not mandatory. Even assuming that Rule 50 is mandatory and on that account the opposition is dismissed,

the Registrar is under an obligation to consider the evidence of the first Respondent for registration. On a perusal of the findings in the impugned

order, we do not find any reasons for allowing the application for registration except the reasoning that the evidence of the Appellant not filed in time.

On this ground alone the impugned order is liable to be set aside. It is worthy to quote the observations of the Supreme Court while considering the

interpretation of Rule 3 of Punjab and Haryana High Court Rules requiring to file three copies of the Memorandum of Appeal for valid presentation of

letters patent appeal reported in AIR 1976 SC 1177 (The State of Punjab and Anr. v. Shamlal Morari and Anr.)

We must always remember that procedural law is not to betyrant but a servant, not an obstruction but an aid to justice. It has been wisely observed

that procedural prescription are the handmaid and not the mistress, a lubricant not a resistant in the administration of justice. Where there is non

compliance, the procedure will thwart fair hearing or prejudice doing of justice to parties, the rule is mandatory. But grammar apart, if the breach can

be corrected without injury to a just disposal of the case, we should not enthrone a regulatory requirement into a dominant desideratum. After all

courts are to do justice, not to wreck this end product or technicalities. Viewed in this perspective, even what is regarded as mandatory traditionally

may, perhaps, has to be moderated into wholesome directions to be complied within time or in extended time.

Based on the above, we observe that the interpretation of the Rules by the learned Assistant Registrar is contrary to the well settled principles laid

down by the Supreme Court for interpretation of procedural rules.

We also observe that it will not be out of context to quote the observations of the Hon'ble High Court of Gujarat reported in 2007 (34) PTC 1

(Guj.), Wyeth Holdings Corpn. and Anr. v. Controller General of Patents, Designs and Trade Marks, in a similar case where the Assistant Registrar

has declined to extend time for filing evidence in support of opposition-

Having regard to the provisions of Section 131 which provides for extension of time, this Court has only two options, either to declare Sub-rule (2) of

the Rule 50 as ultra vires the Act or by employing principle of 'harmonious construction', to read Sub-rule (2) of Rule 50 to be a 'directory' one.

In the considered opinion of this Court, there is no reason much less a compelling reason for which the first option should be exercised and the 'Rule'

be struck down by holding it to be 'mandatory'. As against that, it is a well settled position of law that principle of 'harmonious construction' should be

pressed into service and Sub-rule (2) of Rule 50 be read as 'directory'. This Court is of the opinion that by declaring Sub-rule (2) of Rule 50,

'directory', no injustice or prejudice is going to be caused to any party. On the contrary, it will be serving the interest of justice. Hence, second option is

exercised. Sub-rule (2) of Rule 50 is held to be 'directory' in nature.

However, it is clarified that holding Sub-rule (2) of Rule 50 to be 'directory' does not take away the powers of the Assistant Registrar to refuse

extension of time in given case when he finds that there is no substance in the grounds on which the extension of time is sought for. As against that, to

hold Sub-rule (2) of Rule 50 as 'mandatory', will devoid the Assistant Registrar of his power to exercise discretion in appropriate cases. This Court is

of the opinion that the first option, empowering the Assistant Registrar to exercise the discretion in appropriate cases on the merits of the grounds put

forward for extension of time, is the one to be preferred.

With these observations, the petition is allowed. Sub-rule (2) of Rule 50 is declared to be 'directory'. It is also held that the Assistant Registrar does

have power to grant extension of time in light of the merits contained in the grounds on which the extension is sought for.

The relevant portion of the order in one of the earlier judgments of this Board namely Hindustan Lever Ltd. v. Sunrider Corporation and Anr. 2006

(32) PTC 287 (IPAB) also is necessary to be quoted here:

Section 131 of the Trade Marks Act, 1999 and Rule 105 of the Trade Marks Rules, 2002 are reproduction, with mutatis mutandis changes, of Section

101 of the Trade and Merchandise Marks Act, 1958 and Rule 106 of the Trade Marks Rules, 1959 respectively. The scope of Section 105 had been a

matter of consideration under 2000. PTC 24 (Del.) by the Full Bench of that Court. It is enough to mention that Rule 105 provides for grant of

extension of time by the Registrar in all matters of excepting a few matter specifically referred to in that rule. According, provisions of Rule 105 are to

be read in furtherance of substantive provisions contained in Section 131 of the Act. It is true that Rule 50 in its new incarnation has undergone

changes of fundamental character. However, the settled proposition of law is that the provisions in subordinate legislation have to be in conformity

with the provisions of principle legislation. Section 131, as interpreted by the Courts by virtue of its parallel provision under Section 101 under the

Trade and Merchandise Marks Act, 1958, is very much in place in its old form which unambiguously confers a discretionary power in the Registrar to

grant extension. It is settled position in law that the discretion of the Registrar under Section 131 of the Act extends to the grant of extension in matter

of filing of evidence in opposition. In view of the above, the Registrar was very well competent to grant extension to the Appellant in filing their

evidence in opposition. Registrar also did not wait for the filing of evidence by the Respondent. The society has a vital interest in the purity of the

Register and for that matter to get to know the grounds for claiming the registration of the mark. The Registrar should have insisted on the filing of the

evidence by the Respondent so that by putting his reliance thereupon he could discuss and give his reasons in the impugned order. The impugned order

has been drawn up in a very sketchy manner. Quasi judicial orders affecting the vital interests of the society should be put down in a more serious

manner.

In conclusion, we have to say that the larger interest of the society demands that an opportunity be granted to the applicant to adduce his part of

evidence, besides the opportunity which the Registrar could have granted to the opponent by exercising his discretionary power... ""and set aside.

We further observe that the order as to costs of Rs. 25,000 is exorbitant. We do agree with the arguments of the learned Counsel for the first

Respondent that the awarding of costs is the discretionary power of the trial court with cannot be interfered in appeal. At the same time we would like

to point out the observations made in AIR 1959 Mad. 12 (supra).

No doubt awarding of costs is in the discretion of the trial court but that should be exercised judiciously and on sound legal principles and not by

chance nor by medley, nor by caprice nor in temper and this Court will interfere when it is found that it has been exercised arbitrarily and capriciously

as here

Here we find that the Registrar has awarded the costs and has not given any reason for awarding such a unreasonable costs which has been ordered

capriciously. Hence, the order as to costs in our view is liable to be quashed and set aside.

Based on the above observations of this Board and the observations made by the Delhi Full Bench in 2000 PTC 24 (Del.) Hastimal Jain Trading

as Oswal Industries v. Registrar of Trade Mark, we are of the view that the impugned order of the Assistant Registrar cannot be sustained and is set

aside and the appeal is allowed. The matter is remitted back to the Trade Marks Registry, Ahmedabad for disposal in accordance with law, after

taking on record the evidence of the Appellants and after giving and opportunity to the first Respondent for filing their reply. We also direct the

Assistant Registrar to hear and dispose of the matter within a period of 9 months from the date of receipt of the order as the application is of the year

1994. No order as to costs. As the main appeal itself has been disposed, M.P. No. 75/2005 does not survive.