High Court · 2009

IN THE HIGH COURT OF JUDICATURE AT MADRASDATED: 01.09.2009CORAMTHE HON’BLE Mr.H.L.GOKHALE, CHIEF JUSTICEandTHE HON’BLE Mr.JUSTICE D.MURUGESANW.P.No.1571 of 2009andM.P.No.1 of 2009-------------M/s.Allied Blenders and Distillers Pvt. Ltd.,Having its registered office at 394-C,Lamington Road, Mumbai – 400 004. ..Petitioner./ Vs. / 1. Intellectual Property Appellate Board, 2nd Floor, Guna Complex, Annex – I, Anna Salai, Teynampet, Chennai – 600 018. 2. The Deputy Registrar of Trade Marks, Trade Marks Registry, “IPR Building”, G.S.T. Road, Guindy, Chennai – 600 032. 3. John Distilleries Limited, Having its registered office at 17/1, Cumbell Road, Austin Town, Bangalore – 560 047. ..Respondents. PRAYER: Petition filed under Article 226 of theConstitution of India for the issuance of a Writ ofMandamus to call for the records pertaining to the orderof the 2nd respondent dated 17th July, 2007 in proposedOpposition No.170976 to Application No.72216 in Class33, as reviewed by order of the 2nd respondent dated27.11.2007 and confirmed by order of the 1st respondentdated 14.11.2008 in OA/1/2008/TM/CH and to quash thesame and to direct the 2nd respondent to take on record,number, hear and decide in accordance with law, thenotice of opposition on Form TM-5 dated 27th February2004 and filed on 31st March, 2004 that has been issuedproposed Opposition No.170976 by the 2nd respondent and https://hcservices.ecourts.gov.in/hcservices/ filed by the petitioner before the 2nd respondent opposingregistration of the mark “ORIGINAL CHOICE” underApplication No.722161 in Class 33 in the name of the 3rdrespondent and to pass such further or other orders as theCourt may deem fit and proper. ------------- For Petitioner :: Mr.P.S.Raman, Advocate General Assisted by Mr.Sanjay Chabra For Respondent – 3:: *Mr.Sanjay Jain, Senior Counsel Assisted by Mr.Sushant M.Singh for M/s.Perumbulavil Radhakrishnan & Mr.G.Ramji-------------- O R D E RTHE HON’BLE THE CHIEF JUSTICE This writ petition raises a question as to whether the Registrarof Trade Marks can allow a notice of opposition to the registrationof a trade mark to be given beyond the period prescribed underSection 21 of the Trade Marks Act, 1999. 2. In other words, this writ petition raises the question as towhether the Registrar of Trade Marks can receive a notice ofopposition to the registration of a trade mark given beyond theperiod prescribed under Section 21 of the Trade Marks Act, 1999. 3. The short facts leading to the filing of this writ petitionare hereunder: The petitioner and the respondent – 3 herein are both companiesengaged in the manufacture and marketing of alcoholic beveragesincluding Indian Made Foreign Liquor (IMFL). One of the brands underwhich the petitioner sells its alcoholic beverages being whisky isknown as “Officer’s Choice”. The petitioner claims that the productunder this brand name is in the market since 1988, but the petitionerbecame the proprietor thereof from 23rd February, 2007. The trade markregistration for the mark “Officer’s Choice” in Class No.33 inrespect of alcoholic beverages namely., whisky has been registeredunder Registration No.538927B with effect from 26th October, 1990, thesame has been renewed subsequently, and presently it is duly recordedin the name of the petitioner. 4. The respondent – 3 claims to be selling another alcoholicbeverage being whisky under the mark “Original Choice”, and it claimsthat it was earlier used by its predecessor viz., one NationalDistillery and Allied Products Private Limited since about 1995. On4th April, 1996 the respondent – 3 applied for the trade markregistration of “Original Choice” by making Application No.722161 inClass No.33 in its name. The respondent – 3 had also obtained a copy https://hcservices.ecourts.gov.in/hcservices/ right registration for that label on 04th March, 2000 by claiming thedate of first use in the year 1996. 5. In May, 2002 the petitioner filed a suit bearing Civil Suit(O.S.)No.1058 of 2002 in the High Court of Delhi for passing off onthe ground of deceptive similarity, but did not get the injunction assought for. It subsequently filed one more suit in the year 2007 onthe basis alleged infringement. (We have been informed thatultimately the application for interim injunction in both the suitswere rejected by a common order of the Delhi High Court on 11th July,2008, and the appeal therefrom was rejected by a Division Bench ofthat Court on 29th September, 2008, and the Special Leave Petitionsbeing Special Leave to Appeal (Civil) Nos.4601-4602/2009 were alsodismissed by the Apex Court on 06th March, 2009). 6. The above referred petition of the respondent – 3 forregistration of the trade mark “Original Choice” was published in theTrade Mark Journal Mega-2 on 2nd December 2003 (at page 5307) invitingthe objections from the public. 7. Section – 21 of the Trade Marks Act requires a party opposingsuch registration to file a notice of opposition to the registrationwithin three months from the date of the advertisement. TheRegistrar, however, has the power to extend the period by one month,if any such application is made in the prescribed manner and onpayment of the prescribed fees. Accordingly, the petitioner filed thenecessary application for extension of time on 01st March, 2004 inForm TM-44 along with the requisite fee of Rs.500/- i.e., withinthree months period, and got the extension of one month. The periodof four months was to expire on 01st April, 2004. On 31st March, 2004,the petitioner presented a paper book with the requisite From TM – 5before the Registry along with the leaflet of a cheque on which therequisite fee of Rs.2,500/- was written, but the cheque was notsigned. The Trade Mark Registry sent a letter to the petitioner onthe next day i.e., on 01st April, 2004 returning the cheque forcompliance. The petitioner re-presented the cheque duly signed on 13thApril, 2004, which was received by the Trade Mark Registry on 15thApril, 2004 (encahsed on 30th April, 2004). 8. Much later, i.e., on 17th July, 2007 the respondent – 2 DeputyRegistrar of Trade marks, Chennai passed the following order: “ No.TOP/5603GOVERNMENT OF INDIATRADE MARKS REGISTRY IP Building, GST Road, Guindy, Chennai – 600 032.Dated: 17.07.2007 https://hcservices.ecourts.gov.in/hcservices/ To M/s.International Trade Marks Bureau, 1st Floor, Manekji Wadia Buildings, 127, Mahatma Gandhi Road, Fort, Mumbai – 400 001. Sub: Proposed Opposition No.170976 to Application No.722161 in Class 33 advertised on Journal Mega 2, dated 25.09.2003, made available to public on 02.12.2003. Ref: Hearing held on 10.11.2005 --------- Sirs,With reference to the above, I am directed to conveythe following order passed by the Deputy Registrar of TradeMarks in the above referred matter:- Mr.C.S.Rao, advocate authorized by M/s.InternationalTrade Marks Bureau appeared for the Proposed Opponents.Though TM-44 dated 01.03.2004 is filed within 3-monthperiod, the TM-5 filed on 15.04.2004, is beyond theprescribed time limit of 4-month period, hence the TM-5filed on 15.04.2004 cannot be taken on record. Yours faithfully,For Deputy Registrar of Trade Marks.Copy to:M/s.Harikrishna S.Holla,34/3, V Main Road, Gandhi Nagar,Bangalore – 3. For Deputy Registrar of Trade Marks." 9. Since, the respondent – 2 had declined to take the oppositionon record, the petitioner filed a petition for review on 21.08.2007seeking recall of that order. As can be seen from that order, it wascontended on behalf of the petitioner that erroneously the cheque hadnot been signed due to oversight. Reliance was placed on thejudgment of the Apex Court reported in AIR 1976 SC 1977 to contendthat the procedural law is not to be a tyrant but a servant, not anobstruction but an aid to justice. It was submitted that theopposition be permitted to be taken on record to maintain the purityof the Trade Mark Register. 10. The above referred review petition was opposed by therespondent – 3 by pointing out that the same could not be said to bemaintainable on any of the grounds which are otherwise availableunder Order 47 Rule 1 of the Code of Civil Procedure in the sense https://hcservices.ecourts.gov.in/hcservices/ that there was no discovery of any new or important matter, there wasno mistake or error apparent on the face of the record, nor anysufficient reason could be invoked. The opposition had to be filed inthe prescribed form and with the fee within the time provided. Since,the requisite fee was not paid, the Deputy Registrar of Trade Markswas right in declining to take the application on record. It wassubmitted that this was as per the mandate of the statute and theopposition could not be entertained in breach thereof. 11. The Deputy Registrar of Trade Marks in his order merelyreproduced all these submissions, and as can be seen from the orderpassed on 27th November, 2007 this is all that he has stated of hisown viz., “in view of the above the review petition dated 21stAugust , 2007 filed by the opponent is disallowed, and theApplication No.722161 in Class – 33 shall proceed for registration.There shall be no order as to costs.” 12. Being aggrieved by this order the petitioner filed an appealunder Section 91 of the Trade Marks Act, 1999 before the IntellectualProperty Appellate Board, Chennai. It was canvassed on behalf of thepetitioner/appellant before the Appellate Board that in the facts asnarrated above, the opposition had been filed within the prescribedextended time along with the requisite fee in the form of a cheque,that only the cheque remained unsigned inadvertently, that the DeputyRegistrar of Trade Marks ought to have received this opposition, thatin any case when the review was filed, the same has been dismissedwithout assigning any reasons whatsoever, that thepetitioner/appellant had a good case in opposition, and that itshould not be allowed to be frustrated by taking such a technicalapproach. 13. As against this submission of the petitioner/appellant it wassubmitted on behalf of the respondent that the petitioner’s appealwas only against the second order declining to take the applicationfor opposition on file, and that the same was beyond time whencounted from the first order dated 17.07.2007. This is because theappeal is required to be filed within three months from the date ofthe impugned order. In any case, it was submitted that this was aprovision in a special Act, and since, there was no provision tocondone the delay, the delay could not have been condoned. 14. The Appellate Board went into the question as to whether thereview was maintainable, and held that the case had not been made outunder Order 47 Rule 1 of the Code of Civil Procedure, and therefore,dismissed the appeal by its order dated 14th November, 2008. 15. Being aggrieved by this order dated 14th November, 2008 aswell as the earlier two orders dated 17th July, 2007 and 27th November,2007, this writ petition is filed to quash all the three orders andto direct the respondent – 2 viz., the Deputy Registrar of TradeMarks, Chennai to take on record the notice of opposition filed bythe petitioner and to decide the same, in accordance with law. https://hcservices.ecourts.gov.in/hcservices/

16. Mr.P.S.Raman, learned Advocate General has appeared for thepetitioner and his principal submission has been that the notice ofopposition has been filed within time, at the most there was atechnical error in not signing the cheque, and therefore, all theseorders be set aside. The Registrar should be deemed to have the powerto extend the time under Section 21 read with Section 131 of theTrade Marks Act, 1999. 17. As against that, Mr.Sanjay Jain, learned Senior Counselappearing on behalf of the respondent – 3 submitted that the TradeMarks Act is a special Act, the opposition to registration is in facta kind of a plaint, it has to be filed within the period oflimitation provided under the special Act in the manner prescribedand on payment of the prescribed fee as provided thereunder, and ifthat was not so done there was no power with the Registrar to extendtime and receive the cheque subsequently. The Form TM-5 in which thenotice of opposition is to be filed, at the top of it, specificallymentions the fee of Rs.2,500/-. Since, the petitioner has filed aleaflet of a cheque without the signature thereon, it could not besaid to be a negotiable instrument and the filing had to be held tobe defective. If a statute requires a thing to be done in aparticular manner, it had to be done in that particular manner only.No such power to extend the time and receive the cheque subsequentlycould be read in Section 21 of the Trade Marks Act, nor could Section131 be pressed into service, because, that Section will apply onlywhere time is not expressly provided under the statute for doing aparticular act. The order of Deputy Registrar refusing to review theinitial order, though not happily worded, could be understood asaccepting the submissions of respondent no.3, since they wereincorporated in his order. He defended the order of the appellateboard. It was dealing with the appeal against the order refusing toreview the earlier order and it was correct on the touchstone ofOrder 47 Rule 1 of the Code of Civil Procedure. That apart, thepetitioner was not without any remedy. On the trade mark of therespondent – 3 being registered (which has been subsequentlyregistered in December, 2007) the petitioner had the remedy to applyfor rectification of the register under Section 57 of the Trade MarksAct. The petitioner had, in fact, made such a request in theproceedings before the Delhi High Court, and had filed theRectification Application in June, 2008. Therefore, the petitionerwas not remediless, and there was no reason for this Court tointerfere with the orders passed by the authorities below. On meritsalso, it was submitted on behalf of the respondent – 3 that therespondent – 3 had a good case for registration of his trade mark andthe petitioner had failed to get any injunction in the suits that thepetitioner had filed in the Delhi High Court, which orders had beenconfirmed up to Supreme Court. 18. Inasmuch as Section 21 is a section under which thisopposition to registration is filed, it would be advisable to referto the same. This Section reads as follows: https://hcservices.ecourts.gov.in/hcservices/ “21. Opposition to registration(1) Any person may, within three months from the dateof the advertisement or re-advertisement of an applicationfor registration or within such further period, notexceeding one month in the aggregate, as the Registrar, onapplication made to him in the prescribed manner and onpayment of the prescribed fee, allows, give notice inwriting in the prescribed manner to the Registrar, ofopposition to the registration.(2) The Registrar shall serve a copy of the notice onthe applicant for registration and, within two months fromthe receipt by the applicant of such copy of the notice ofopposition, the applicant shall send to the Registrar inthe prescribed manner a counter-statement of the grounds onwhich he relies for his application, and if he does not doso he shall be deemed to have abandoned his application.(3) If the applicant sends such counter-statement, theRegistrar shall serve a copy thereof on the person givingnotice of opposition.(4) Any evidence upon which the opponent and theapplicant may rely shall be submitted in the prescribedmanner and within the prescribed time to the Registrar, andthe Registrar shall give an opportunity to them to beheard, if they so desire.(5) The Registrar shall, after hearing the parties, ifso required, and considering the evidence, decide whetherand subject to what conditions or limitations, if any, theregistration is to be permitted, and may take into accounta ground of objection whether relied upon by the opponentor not.(6) Where a person giving notice of opposition or anapplicant sending a counter-statement after receipt of acopy of such notice neither resides nor carries on businessin India, the Registrar may require him to give securityfor the costs of proceedings before him, and in default ofsuch security being duly given, may treat the opposition orapplication, as the case may be, as abandoned.(7) The Registrar may, on request, permit correctionof any error in, or any amendment of, a notice ofopposition or a counter-statement on such terms as hethinks just.” 19. While looking at Section 21, it is to be noted that the TradeMarks Act, 1999 is an Act to provide for registration and betterprotection of trade marks for goods and services and for the https://hcservices.ecourts.gov.in/hcservices/ prevention of the use of fraudulent marks. Chapter – 3 of this Actprovides for the procedure for and duration of registration. Section25(1) of the Act lays down that the Registration of a trade markshall be for a period of 10 years, but may be renewed from time totime, in accordance with the provisions of this Section. Amongstothers sub Section – 3 of Section – 25 provides that at the end ofthis period one has to obtain the renewal by paying the prescribedfee and if the same is not paid, a trade mark may be removed from theregister. When it comes to application for registration Section – 18provides for the payment of necessary fee and sub Section – 2 thereofprovides that a single application may be made for registration of atrade mark for different classes of goods and services and feepayable thereof shall be in respect of each such class of goods orservices. Similarly, Section 21(1) provides that an opposition to theregistration has to be filed in the prescribed manner and on paymentof prescribed fee. It also provides that such opposition is to befiled within three months from the date of advertisement, though theRegistrar on an application made to him may extend the time notexceeding one month in the aggregate. Sub Section (2) of Section 21provides that the counter statement has to be filed within two monthsfrom the receipt of the copy of the notice of opposition or else itshall be deemed to have been abandoned. Only as far as the evidenceupon which the parties are relying upon is concerned sub Section(4)of Section 21 provides that it shall be submitted in the prescribedmanner and within the prescribed time. As far as the submitting ofevidence is concerned there is no specific period laid down for that. 20. These provisions have come to be considered by different HighCourts from time to time. Thus, a single Judge of the Bombay HighCourt in Kantilal Tulsidas Jobanputra Vs. The Registrar of TradeMarks reported in 1982 PTC 127 while considering the requirement offiling of the evidence held that for filing of the evidence thebenefit of Rule 53(2) of the earlier Trade and Merchandise MarksRules, 1959 will be available. That was a case under the old Rulesand was decided on 27th March, 1980. The Court held that thelegislature never intended to lay down rigid rule. Same is theprovision in the Rule 53 under the present Trade Marks Rules, 2002,which permits the Registrar to give leave to either of the parties tolead any evidence upon such terms as to costs or otherwise as he maythink fit. 21. The distinction between the provisions under the subSections (1) and (2) of Section 21 on the one hand and sub Section(4) on the other was considered by a Full Bench of the Delhi HighCourt in Hastimal Jain Vs. Registrar of Trade Marks reported in 2000PTC 24. Speaking for the Full Bench S.N.Variava, C.J. (as he thenwas) held that where legislature intended to prescribe a fixed time,it has specifically so done under Section 21(1) and 21(2) of the Act,but it has not so done under Section 21 (4), and the benefit of Rule53 would be available for Registrar to give extended time to theparties to file evidence. The Full Bench quoted with approval thejudgment of the Bombay High Court in Kantilal Tulsidas Jobanputra(supra). https://hcservices.ecourts.gov.in/hcservices/

22. In Seiko Cables of India Vs. Hattori Seiko Company Ltd.reported in 2002 (24) PTC 558 (Del) a learned single Judge of theDelhi High Court was concerned with the situation where the counterstatement under Section 21(2) was filed within the prescribed period,but was deficient in fee by Rs.20/-, and it was not made good intime. Relying upon the dicta in Hastimal Jain (supra) the learnedsingle Judge held that the Registrar was justified in making an orderabout abandonment. This view also stands to reason for the simplereason otherwise it will mean that there will be a separate andextended time limit for filing prescribed fee. As seen earlier theForm TM-5 clearly states at the top of it that the fee prescribed isRs.2,500/-. It is a special Act and one has to be vigilant andcareful about one’s right and steps to be taken. To oppose theregistration of a trade mark, one has to go in the particular manneras prescribed under the Act. 23. This is also in consonance with the proposition long laiddown in Taylor Vs. Taylor, 1875 (1) Ch.D. 426 where Jessel, M.R. laiddown that where a power is given to do a certain thing in a certainway, the thing must be done in that way or not at all, and that othermethods of performance are necessarily forbidden. This dicta has beenfollowed in a number of judgments and to cite one, in RamachandraKeshav Adke Vs. V.Govind Jyoti Chavare reported in AIR 1975 SC 915,the question before the Apex Court was with respect to surrender of atenancy by a tenant in order to be valid and effective under theBombay Tenancy and Agricultural Lands Act, 1948. The Apex Court heldthat the surrender had to be done in the manner prescribed under theAct and then only it would be effective. 24. The other submission of Mr.P.S.Raman, learned AdvocateGeneral for the petitioner was that this was a fit case where periodof limitation deserved to be extended. We are afraid that it will bedifficult to accept this proposition when considered on thetouchstone of Section 29(2) of the Limitation Act. Section 29(2) ofthe Limitation Act lays down that where a special Act provides aperiod of limitation different from the period specified under theLimitation Act, the provisions of Section 4 to 24 of the LimitationAct will apply only so far as and to the extent to which, they arenot expressly excluded by such special or local law to the suits,appeals or applications under the special law. 25. In Mukri Gopalan Vs. Cheppilat Puthanpurayil Aboobackerreported in (1995) 5 SCC 5 the Apex Court was concerned with thespecial provision of limitation provided under Section 18 of theKerala Rent Control Act. Although there was no express exclusion ofany provision, in view of this special provision the Apex Court heldthat the provisions of the Special Rent Act on limitation will apply. 26. Similarly, in Union of India Vs. Popular ConstructionCompany reported in (2001) 8 SCC 470 while considering the limitationunder Section 34(3) and its proviso as occurring in the Arbitrationand Conciliation Act, 1996, the Apex Court held that the express https://hcservices.ecourts.gov.in/hcservices/ exclusion can also be inferred from the scheme and objectives of theAct, one of which was to restrict judicial intervention in arbitralmatters as much as possible. 27. In the instant case, the Trade Marks Act, 1999 is a specialAct. It gives a special right to the parties who want their goods andservices to be protected by getting a registration of the trade mark.Anybody who is keen to oppose any such registration has also to bevigilant and has to oppose the registration in the prescribed manner,in the prescribed time, and on payment of prescribed fee within thetime provided for that purpose. The counter statement is also to befiled in the prescribed time and in the prescribed manner. The noticeof opposition and the counter statement are like the plaint and thewritten statement of the proceeding. If the Special Act provides forspecific time, manner and fees for filing of the plaint, it has to beso done in compliance and the requirements cannot be relaxed. Sub-section 21(7) of the Act provides only for amendment of the notice ofopposition and counter statement, but that cannot be construed as aprovision to cure any deficiency in the requirement of Sections 21(1)and 21(2) of the Act. Section 131 and Rule 53 can also not be pressedinto service, since that Section will apply only where time is notexpressly provided under the statute and Rule 53 is concerning thetime for leading the evidence. It cannot apply to filing of notice ofopposition or the counter statement. Any other interpretation willdefeat the objective of the Act, and hence, cannot be accepted. 28. The last submission of Mr.P.S.Raman, learned AdvocateGeneral is that a litigant should not be made to suffer on account ofthe failure on the part of its counsel or power of attorney holder asin the present case. Mr.Raman, relied upon the observations of theApex Court in Lala Mata Din Vs. A.Narayanan reported in (1969) 2 SCC770. That was a case concerning a suite for rendition of accounts andan error had crept up in the manner in which the valuation of thereliefs was done, which was because of the mistake of their counsel.It was in that background that the time was extended by invokingSection 5 of the Limitation Act. In the present case, as seen above,we are concerned with a special Act, where there are specificprovisions to act in a particular manner for filing the notice ofopposition to the registration as well as for filing the counterstatement. It may also be noted that it is a specialized field wherespecialized attorneys appear for the parties. That apart, aneffective alternative remedy is very much available to the petitionerunder the statute by filing a rectification application under Section57 of the Act, which the petitioner has already filed. The onlydifference between the two proceedings will be that in therectification proceedings the burden of proof will be on thepetitioner, whereas in the opposition proceedings the burden of proofwill be on the respondent – 3.29. For the reasons stated above, we do not see any error in theorder passed by the Deputy Registrar of Trade Marks, Chennai inreturning the notice of opposition filed by the petitioner, nor do wesee any error on the part of the Appellate Board in rejecting the https://hcservices.ecourts.gov.in/hcservices/ appeal against the refusal to review that order. No case is made outto review the order passed by the Deputy Registrar of Trade Marks,Chennai, and therefore, there was no error in rejecting the appeal.In the circumstances, we hereby dismiss this writ petition, however,without any order as to costs. Consequently, connected miscellaneouspetition is also dismissed. Sd/Asst.Registrar07.09.2009*Corrected as per order of thisCourt dated 18.09.2009 andmade hereinsd/- Assistant Registrar06.10.2009/true copy/Sub Asst.Registrarsm/pv Copy to:-1. Intellectual Property Appellate Board, To be substituted 2nd Floor, Guna Complex, Annex – I,for the order already Anna Salai, Teynampet,despatched on 14.09.2009 Chennai – 600 018. 2. The Deputy Registrar of Trade Marks, Trade Marks Registry, “IPR Building”, G.S.T. Road, Guindy, Chennai – 600 032. 2 ccs To Mr.Perumbulavil Radhakrishnan, Advocate, SR.43488W.P.No.1571 of 2009 KA(CO)SRA(8/9/2009)SRA(8/10/2009)