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Hindustan Embroidery Mill Vs. Hernia E. Mill - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberCivil Miscellaneous (Main) Appeal No. 20 of 1977
Judge
Reported in1978RLR400
ActsTrade and Merchandise Marks Rules, 1959 - Rules 53, 53(1), 53(2), 54, 81, 81(4) and 106
AppellantHindustan Embroidery Mill
RespondentHernia E. Mill
Advocates: Anoop Singh,; V.N. Shastri and; N.S. Sistani, Advs
Excerpt:
.....(4) and 106 of trade and merchandise marks rules, 1959 - appeal against extension of time to lead evidence - evidence not led within 2 months of filing counter statement under rule 53 or extended period under rule 106 - opposition to registration be abandoned - held, no further time could be granted to respondents to lead evidence as their opposition already abandoned by rule 53 (2). - - appellants challenged this but without success. this means that virtually the previous order of the registrar as well as the decision of this court has been reversed by the assistant registrar. in this particular case, the respondents applied for extension of time which was refused by the aforementioned order passed on 18th april, 1968. unfortunatedy, the appeal against that decision failed. when..........neither of these actions was taken by the appellants; the time of two months was extended from time to time as is obvious from the facts set out in the beginning of this judgment; the last extension of two months expired on llth july, 1967. thereafter the rule provides that the opposition will be deemed to have been abandoned unless the registrar otherwise directs. however, the order dated 19th august, 1967 is an order passed by the assistant registrar stating that the opposition is to be deemed to have been abandoned. does the rule permit such an order to be passed it is urged before me that because the words 'unless the registrar otherwise directs' it is the registrar who has to decide whether to treat the non-filing of the evidence as being, an abandoment or not. i do not think.....
Judgment:

D.K. Kapur, J.

(1) Trade & Merchandise Marks Rules, 1959, Rules 53 & 106. If evidence in support of opposition to registration is not led within 2 months of filing of counter-statement U/R. 53 or within extended period U/R 106, then opposition to registration would be deemed to have been abandoned. Registrar cannot give fresh period for leading evidence after the decision of litigation between parties. He has no power of Review. (Appellants applied for registration of certain Trade Marks. Respondents filed opposition to it.Appellants then filed counter-statements. Under Rule 53, respondents were required to lead evidence within 2 months. But they applied for stay of proceedings and also for extention of time which were rejected on 18.4.68. They appealed to High Court which were dismissed on 19.2.71. Then on 2.7.71, office of Registrar asked respondents to file evidence within 2 months. Appellants challenged this but without success. They then filed instant appeal). Judgment after giving above facts in detail, para 5 onwards is :-

(2) On the facts of this case, the procedure up to the stage of filing the counter-statement is not in question. It is at the stage of leading evidence under Rule 53 that the difficulty arises. Instead of filing this evidence, the respondents filed an interlocutory petition on 31st August, 1967, praying for stay because of the pendency of the arbitration proceedings in Bombay. On 1st January, 1968, the opponents filed an application in Form TM-56. In order to understand this application, it is necessary to note that under Rule 106, the Registrar is entitled to extend time not being time expressly fixed by the Act or prescribed by Rules 81 or 81 (4). On 1st January, 1968, when the respondents applied for extention of time, the idea was that the proceedings should be postponed till after the arbitration had been decided in Bombay. The Assistant Registrar did not accept this contention, he refused to adjourn the hearing, and refused to extend the time, he also rejected the stay application filed by the respondents. This was by his decision dated 18th April, 1968, which was the subject-matter of appeals Nos. 75,76 and 77 of 1968 decided by myself in February, 1971. As that order was upheld by me in appeal on the ground that the appeal was incompetent, it would follow that extension of time had been refused.

(3) After the appeal had been decided, the notice issued by the office of the Registrar of Trade Marks was to the effect that evidence could be filed within two months of the date of the notice. This means that virtually the previous order of the Registrar as well as the decision of this Court has been reversed by the Assistant Registrar. I may now again reproduce the entire notice. It reads :- (.,.)

(4) It is note-worthy that although the Assistant Registrar had by the previous order rejected the request for extention of time to file evidence. Yet the notice now gave two more months for filing evidence under Rule 54. Virtually, the Assistant Registrar has been able to reverse all the earlier decisions by this method and this is what is submitted by the appellants.

(5) Now we have to see whether the Assistant Registrar was competent to grant a further opportunity to lead evidence under Rule 53. I have already dealt with this matter in a previous decision which is also between the same parties, being P.A.6. No. 21 of 1968 decided on 21st December, 1971. I think, it it useful to re-iterate the points decided there, because this Rule seems to be the subject-matter of repeated misunderstanding. Rule 53 provides that a party on whom a counter-statement has been served is required to lead evidence by way of affidavits in support of his opposition to the registration of the trade mark within two months of the service of the copy. Naturally he is also entitled to ask for extension of time under Rule 106 because this is not a time fixed by the Act. Normally, I suppose the Registrar could grant extension of time. In this particular case, the respondents applied for extension of time which was refused by the aforementioned order passed on 18th April, 1968. Unfortunatedy, the appeal against that decision failed. Now I come to Rule 53 (2) which has to be specially referred to here, because it reads : 'If an opponent takes no action under Sub-rule (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have been abandoned his opposition'. (Sic)

(6) It follows from this rule that unless this evidence is filed, the opposition will be deemed to have been abandonad unless the Registrar otherwise directs. The question for consideration in this case is : Did the Registrar under Rule 53 (2) and could he act under Rule 53 (2) in this manner? It is peculiar that in 1968, the Registrar refused extension of time and yet as late as November, 1976 he has held that he can grant extension of time merely by otherwise directing under Rule 53 (2). Of course, if the Registrar has this power, nothing more can be done in this matter.

(7) When this question was heard by me in F.A.O. No. 21 of 1968,1 decided the matter as follows : 'This rule consists of two parts, sub-rule (1) provides that the opponent has either to put in his evidence consisting of affidavits before the Registrar or intimate to him that he does not desire to adduce evidence in support of the opposition but intends to rely on the facts stated in the notice of opposition. Sub-rule (2) provides that unless the Registrar otherwise directs, the opposition will be deemed to have been abandoned if the course of action prescribed in sub-rule (3) is not followed by the opponent. Hence, the appellants, in the present case, had to file their evidence in the from of affidavits within two months of the prescribed date or inform the Registrar that they did not intend to rely on any evidence except the statement of facts set out in their notice of opposition. Admittedly, neither of these actions was taken by the appellants; neither of these actions was taken by the appellants; the time of two months was extended from time to time as is obvious from the facts set out in the beginning of this judgment; the last extension of two months expired on llth July, 1967. Thereafter the Rule provides that the opposition will be deemed to have been abandoned unless the Registrar otherwise directs. However, the order dated 19th August, 1967 is an order passed by the Assistant Registrar stating that the opposition is to be deemed to have been abandoned. Does the Rule permit such an order to be passed It is urged before me that because the words 'unless the Registrar otherwise directs' it is the Registrar who has to decide whether to treat the non-filing of the evidence as being, an abandoment or not. I do not think that Rule 53 (2) is capable of such a construction. The Rule merely says that if the opponent does not take the action prescribed in Rule 53 (1) the opposition will be deemed to be abandoned. The Registrar may otherwise direct, but if he does not otherwise direct the Rule, to my mind, is automatic and requires no further orders by the Registrar before it comes into play. Hence, as soon as the two months' period expired the opposition 'was to be deemed to be abandoned. Thus, it would appear that the order dated 19th August, 1967 is not an order which the law requires, because the Rule itself prescribes that the opposition is to be deemed to be abandoned. It is only in case the Registrar wishes to direct to the contrary i. e , to say that he will treat the opposition as still subsisting that he has to pass an order. That not being so in the present case, the opposition was to be deemed to have been abandoned on llth July, 1967. It has, thereforee, also to be held that the order asking for a review of the order dated 19th August, 1967 has also been rightly rejected by the Assistant Registrar on 8th January, 1968 though for different reasons. When the order itself did not require to be passed it clearly could not be reviewed. The abandonment was automatic and hence, incapable of review in this way'.

(8) It will not be useful to repeat the entire discussion, because the above passage speaks for itself. However, in order to make the matter more plain. I may say. the Rule states that if no action is taken under sub-rule (i) the opposition will be deemed to be abandoned unless the Registrar otherwise directs. The opposition is to be deemed to be abandoned, not because of the order of the Registrar, but because of the operation of the Rule. In this case, it is clear that the counter-statement was served on the respondents on some day before 31st August, 1967. The application for extension of time was refused on 18th April, !968. It follows that the period of two months had expired at least by April, 1968. It would equally follow that under the operation of Rule 53 (2), the opposition would be deemed to be automatically abandoned. No further order was required by the Registrar, because the Rule itself says that if action is not taken within two months the opposition has to be deemed to be abandoned. It was, thereforee, not possible for the Registrar to issue a notice on 2nd July, 1971, allowing the opponents a period of two months to file evidence under Rule 54. It is extra ordinary that for another five years thereafter the matter remained pending before the Assistant Registrar before he decided that be could extend the time.

(9) At first sight, it would seem that the view I have taken works a hardship, but any other interpretation does violence to the Rule 53. It is not possible for the Registrar to resuscitate an application, 'which had to be deemed to be abandoned long before by legal fiction, merely by giving a direction that evidence should now be filed. Of course, if during the period of two months before the deeming effect of Rule 53 (2) came into operation, the Registrar could have directed that the opposition shall not be deemed to be abandoned. If he had extended time under Rule 106 for filing the evidence in opposition, he could act thus within the extended period although beyound two months. If however, the Registrar did not choose to make any direction under Rule 53 (2) during the period, he was not entitled to later on issue a notice allowing evidence to be filed, because by this method he would be defeating the purpose and provisions of Rule 53 (2). No such discretion is given to the Assistant Registrar and, thereforee, I have to hold that the opposition had to be deemed to be abandoned.

(10) As a result of this analysis, I have to hold that the decision of the Assistant Registrar, conveyed by the notice dated 2nd July, 1971, permitting the respondents to leadevidence was contrary to law as the effect of Rule 53 (2) was to render the opposition ineffective and abandoned, and since action was not taken under sub-rule (1) no contrary direction could be issued by the Registrar. The opposition having been abandoned already, there was no question of any further evidence being filed.

(11) Turning again to the preliminary objection, it is obvious from this analyris that the petition of the appellants regarding the way in which the case was being dealt with was a justified one and the order of the Assistant Registrar under appeal holding that he had the power to extend the time for leading evidence was an erroneous one. The opposition having been abandoned under the deeming provision of a statutory Rule namely Rule 53 (2) could not be treated as being still pending. The decision of the Assistant Registrar is obviously a decision or order and hence the preliminary objection has to fail.

(12) In the result, I accept this appeal and hold that no further time could have been granted to the respondents to lead evidence as their opposition had already been abandoned by virtue of Rule 53 (2). I would normally have awarded costs, but due to the nature of the dispute and the effect of this order, I would leave the parties to bear their own costs.


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