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Nalli Sambasivam and Smt. Nalli Duraiswamy Saroja Vs. the Deputy Registrar of Trade Marks - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Case NumberT.M.S.A. Nos. 1 and 2 of 2000
Judge
Reported inLC2007(1)210; 2007(34)PTC553(Mad)
ActsTrade and Merchandise Marks Act, 1958 - Sections 21 and 21(1); Trade Marks Act, 1940; Trade and Merchandise Marks Rules - Rule 51(3); Central Excise Act, 1944 - Sections 38; Central Excise Rules; Limitation Act; Code of Civil Procedure (CPC) , 1908
AppellantNalli Sambasivam and Smt. Nalli Duraiswamy Saroja
RespondentThe Deputy Registrar of Trade Marks
Appellant AdvocateT.R. Mani, Sr. Counsel for ;T.M. Hariharan, Adv.
Respondent AdvocateNo Appearance
DispositionAppeal allowed
Cases ReferredPavunny Ouseph v. Registrar of Trade Marks
Excerpt:
.....calculating limitation - therefore, rejection of notices of opposition by assistant registrar of trade marks, on the ground that they were preferred beyond the period of four months prescribed under section 21(1) of the act, was not proper - therefore, the impugned order set aside - direction issued to take on file the notices of opposition filed by the appellants and proceed further with the enquiry in accordance with law - appeal allowed - - 4. it is not in dispute that the advertisement regarding the application for registration of the trade mark in question, appeared in the trade marks journal dated 16-7-1992 and it is also not in dispute that the notices of opposition were received by the registry on 23-11-1992. but according to the appellants, the trade mark journal dated..........the learned judge in t.m.a. no. 7 & 8 of 1993, upholding the orders of the assistant registrar of trade marks, dated 30-6-1993, rejecting the interlocutory applications filed by the appellants for taking on record their notices of opposition to the registration of a trade mark.2. the brief facts leading to the above appeal are as follows:(a) in the edition of the trade marks journal dated 16-7-1992, an advertisement was published, proposing to register a trade mark named as 'nalli' in respect of textile piece goods including sarees, dhotis etc., in class 24.(b) the appellants herein filed individual notices of opposition dated 21-11-1992 in form tm-5 along with applications in form tm-44 for extension of time for giving the notices of opposition. the application in form tm-44 was.....
Judgment:

V. Ramasubramanian, J.

1. These appeals arise out of a common order passed by the learned Judge in T.M.A. No. 7 & 8 of 1993, upholding the orders of the Assistant Registrar of Trade Marks, dated 30-6-1993, rejecting the Interlocutory Applications filed by the appellants for taking on record their notices of opposition to the registration of a trade mark.

2. The brief facts leading to the above appeal are as follows:

(a) In the edition of the Trade Marks Journal dated 16-7-1992, an advertisement was published, proposing to register a Trade Mark named as 'Nalli' in respect of Textile piece goods including sarees, dhotis etc., in class 24.

(b) The appellants herein filed individual Notices of opposition dated 21-11-1992 in Form TM-5 along with applications in Form TM-44 for extension of time for giving the notices of opposition. The application in Form TM-44 was necessitated on account of the fact that Section 21(1) of the Trade and Merchandise Marks Act, 1958 prescribed a time limit of 3 months for filing a notice of opposition and gave the Registrar a discretion to extend the said time limit by one month.

(c) It is not in dispute that the said notices of opposition and the extension applications, though dated 21-11-1992, were actually received by the Registry on 23-11-1992.

(d) By a communication dated 7-12-1992, the Registry informed the appellants that their notices of opposition were not taken record on account of the fact that they were filed beyond the 4 month period.

(e) Therefore the appellants filed Interlocutory applications, on 28-4-1993 requesting the Registrar to take their notices of opposition on record. But the Assistant Registrar dismissed the interlocutory applications by an order dated 30-6-1993.

(f) Challenging the said orders, the appellants filed appeals in T.M.A. Nos. 7 & 8 of 1993, but they were dismissed by the learned Judge by a common order dated 15-10-1993. Aggrieved by the said common order, the appellants have filed these second appeals.

3. We have heard Mr. T.R. Mani, learned Senior Counsel appearing for the appellants.

4. It is not in dispute that the advertisement regarding the application for registration of the trade mark in question, appeared in the Trade Marks Journal dated 16-7-1992 and it is also not in dispute that the Notices of opposition were received by the Registry on 23-11-1992. But according to the appellants, the Trade Mark Journal dated 16-7-1992 was received in the office of their Attorney at Delhi on 24-7-1992 and that therefore the notice of opposition filed in/received by the Registry on 23-11-1992 was well within the 4 month period.

5. In support of their plea that the Journal was in fact received by various subscribers only on 23/24-7-1992, the appellants filed 4 supporting affidavits sworn to by employees of 4 leading Firms of Trade Mark Attorneys at Delhi, along with their interlocutory applications. Three of them confirmed having received the journal on 24-7-1992 and one of them confirmed having received the journal on 23-7-1992. As a matter of fact, there is not much dispute about the dates on which the copies of the journal were received by the subscribers. But what is in dispute is as to whether the date of receipt of the copy of the journal by the subscribers or the date of its edition, that counts for reckoning the period of limitation.

6. Mr. T.R. Mani, learned Senior Counsel contended that the date mentioned in the journal could never be the date of commencement of the period of limitation prescribed under Section 21 of the Act, but the date on which the journal is published or circulated or made available to the public alone could be the date of reckoning. In support of his contention, Mr. T.R. Mani, learned senior counsel appearing for the appellants relied upon a judgment of the Division Bench of Travancore-Cochin in Pavunny Ouseph v. Registrar of Trade Marks AIR 1952 T C 77. In the said case which arose out of the Trade Marks Act, 1940, the notice of opposition was accepted by the Registry, on the ground that the Trade Marks Journal was published belatedly and that therefore, the notice of opposition filed within four months from the date of publication of the Trade Marks Journal, was within time. But the applicant who sought registration of the Mark took the matter on appeal to the High Court, the High Court held as follows:

4. The object of advertising that an application for the registration of a Trade Mark has been received by the Registrar is obviously to let the public know about it and to invite opposition to it, if any. That object will be served only when the journal is distributed among the subscribers or otherwise made available to the public and not when it is got printed or few copies or cuttings distributed among the subordinate offices of the Trade Marks Registry or among the applicants for registration.

7. In another case, Siyaram Kumar Engineering Works Private Limited v. The Assistant Registrar of Trade Marks and Anr. 1996 (2) D.L.T. 179, the Punjab High Court followed the aforesaid Division Bench judgment of the Travancore-Cochin and held in para-3 as follows:

3. So far as the first contention of the appellant Company is concerned, I am in agreement with their contention that the words 'from the date of advertisement' in Rule 51(3) of the said Act must mean the date when the Journal is issued and not the date borne on the Journal.

8. The similar issue also came up for consideration before the Supreme Court in Collector of Central Excise v. New Tobacco Co. etc. etc. , under the Central Excise and Salt Act, 1944 and the Central Excise Rules. In the said case, the Supreme Court considered the meaning and the effect of the words 'publish' and 'notification' and held in para-4 as follows:

4. The dictionary meaning of the word 'publish' as given in Webster's Comprehensive Dictionary, International Edition, is '(1) To make known or announce publicly; promulgate; proclaim. (2) To print and issue to the public. (3) To communicate to a third person.' According to the Legal Glossary, published by the Legislative Department, Ministry of Law, Justice and Company Affairs, Government of India in 1992, it means 'to make generally accessible or available; to place before or offer to public; to bring before the public for sale of distribution'. Thus the word 'publish' connotes not only an act of printing but also further action of issuing or making it available to the public. Notification, according to the Webester's Third New International Dictionary, inter alia means '1 : the act or an instance of notifying : Intimation, Notice; est : the act of giving official notice or information; 2 : a written or printed matter that gives notice'. The Legal Glossary, referred to above, defines it as 'a written or printed matter that gives notice'. Even if we go by the dictionary meaning the requirement of publishing the notifications would connote that what is intended to give notice or information to the public can be treated as published only when it is made available to the public so that they can know about it. The requirement of publishing the notifications in the official Gazette, which is an official journal or a newspaper containing public notices and other prescribed matters, also indicates that the word 'public' in Section 38 should be so interpreted.

9. The same view was affirmed by the Supreme Court in another case in Garware Nylons Ltd. v. The Collector of Customs and Central Excise, Pune : 1998(100)ELT321(SC) , holding that a notification can be said to be duly published only when it is made known to the public.

10. Section 21(1) of the Trade and Merchandise Marks Act, 1958, reads as follows:

Section 21. 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.

It is the words 'from the date of advertisement' appearing in Section 21(1) which has obviously given lever to the Registry to contend that the 'date' appearing in the journal should be the reckoning date for determining the period of limitation. But as contended by the learned senior counsel, the issue is already covered by the judgment of the Division Bench of Travancore-Cochin in Pavunny Ouseph v. Registrar of Trade Marks AIR 1952 TC 77 and we respectfully agree with the ratio laid down therein. If the words 'date of the advertisement' are given any other meaning, it would virtually amount to curtailing the period of limitation. Even for determining the period of limitation either under the Limitation Act or under the Code of Civil Procedure, 1908, it is always the date on which the certified copies of the judgments and decrees are made available, that is taken into account for the purpose of calculating limitation. Therefore, the rejection of the notices of opposition by the respondent, on the ground that they were preferred beyond the period of four months prescribed under Section 21(1) of the Act, is not proper. Therefore, the order of the Assistant Registrar of Trade Marks, dated 30-6-1993 and that of the learned Judge in T.M.A. Nos. 7 and 8 of 1993 are set aside and the respondent is directed to take on file the notices of opposition filed by the appellants and proceed further with the enquiry in accordance with law. The appeals are allowed. No costs.


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