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2001 DIGILAW 319 (DEL)

Aktieboaget Akf v. SKR Engineering Corporation

2001-03-20

S.K.MAHAJAN

body2001
JUDGMENT : S.K. Mahajan, J. The appellant herein had taken proceedings under Section 21 of the Trade & Merchandise Marks Act before the Registrar of trade mark by opposing the registration of the trade mark applied for by the respondent. On 19th July, 1989 the respondent lodged the counter statement denying all the material averments contained in the notice of opposition. The appellant was instructed to file evidence within two months from the receipt by them of the counter statement vide a registered letter dated 29th March, 1989. Despite several adjournments, the appellant failed to rile evidence in support of the averments made in the opposition. 2. Assistant Registrar of Trade Mark thereafter called for evidence under Rule 54 from the respondent in support of its application for registration of the mark. The respondent on 13th July, 1994 filed an application with the prayer that since the opponent had failed to comply with Rule 53(1), the mandatory provision of 53(2) had come into play and there was, therefore, no reed to call for evidence under Rule 54 from the respondent. Relying upon a judgment of this Court in Hindustan Embroidery Mills Pvt. Lid. v. Hemla Embroidery Mills Pvt. Ltd. & Anr. , the Deputy Registrar of trade marks held that Rule 53(2) being mandatory in nature, the opposition would be deemed to have been abandoned on the opponent not complying with the provisions of Rule 53(2) of the Rules framed under the Act. It was held by the Deputy Registrar of Trade Marks that Registrar has no power to proceed on in the absence of compliance with the provisions of Rule 53(2) and the Rule being mandatory deeming provision of the Rule will immediately come into operation and the Registrar will have no power to call for evidence under Rule 54 of the Act. The Deputy Registrar of Trade Marks, therefore, held that the opposition shall be deemed to have been abandon, the application for registration of trade mark shall be accepted and the same shall be proceeded with for registration. Being aggrieved by the order of the Deputy Registrai of Trade Marks, present appeal was filed under section 109 of the Trade and Merchandise Marks Act by the appellant. 3. Being aggrieved by the order of the Deputy Registrai of Trade Marks, present appeal was filed under section 109 of the Trade and Merchandise Marks Act by the appellant. 3. In a recent Full Berich judgment of this Court in Hastimal Jain Trading as Oswal Industries v. Registrar of Trade Marks & Anr., 2000 PTC 24 (FB), it was held that determination of the questions raised would depend on whether Rule 53(2) can be said to be mandatory or directory. It was held : "Mere use of the word "shall" is not sufficient to treat the Rule as mandatory. Even though the word "shall" prima facie indicates that it is mandatory, still the Court must ascertain the real intention of the Legislature by looking to the Statute as a whole. It must also be remembered that a legal fiction cannot be stretched beyond the purpose for which it was enacted. As seen above the legal fiction is not absolute. It is limited by the words "unless" the Registrar otherwise directs." In our view it is significant that wherever the Legislature intended to prescribe a fixed time, which could not be extended, it has specifically so done. The necessary implication of this is that in all other cases the time was not to be fixed but one which would be within the power of the Registrar to extend. Undoubtedly the intention of the Legislature was to minimise delays. For that fixed time is laid down in the Statute itself. However a reading of Section 21 itself shows that for procedural matters like filing evidence the Legislature was not lying down a fixed time in the Statute. This view is supported by a reading of Section 101 and Rule 106. Section 101 indicates that the only circumstances under which time cannot be extended by the Registrar is where a time has been expressly provided in the Act. Sim;ltriy, '.ruder Rules 106 the time can he extended by the Registrar, in all cases except for the four, which have been mentioned in paragraph 14 above. It is all the mor,- significant that Rule 53(2) and Rule 54 have not been included in Rule 106. To interpret it otherwise would be to add in Rule 106 the words "or Rule 53". The Legislature has purposely omitted to do so. It 1:; not possible to accept submission that Rule 53 gets incorporated in Section 21. It is all the mor,- significant that Rule 53(2) and Rule 54 have not been included in Rule 106. To interpret it otherwise would be to add in Rule 106 the words "or Rule 53". The Legislature has purposely omitted to do so. It 1:; not possible to accept submission that Rule 53 gets incorporated in Section 21. II the Legislature wanted to provide it fixed term of two months in Section 21(4) as they have done, in Section 21(1) and (2). they would have done so. This interpretation is also borne out by the fact that the deeming provision, in Rule 53(2), comes into play only if the Registrar does not otherwise directs. The fact that the legal fiction is subject to the direction of the Registrar also shows that it is not absolute but is being controlled by discretion of Registrar. In our view Section 101 and Rule 106 permit the Registrar to extend time, even though the time has expired. To hold otherwise would be to negate the words to that effect used both in Section 101 as well as Rule 106." 4. The Full Bench of this Court did riot agree with the contrary view expressed by this Court in the aforesaid case Hindustan Embroulery Pvt. Ltd. v. Hemla Embroidery (supra). In view of the Full Bench judgment of this Court, it is clear that the Registrar has the power to extend time of filing evidence even though the period mentioned in Rule 53 or the extended period thereof has extra of and even though an application for extension of time was made beyond that period. Since the opposition in the present case was deemed to have been abandoned only on the ground that the Registrar did not have power to extend time, the order of the Registrar is contrary to the view expressed by this Court in the aforesaid Full Bench judgment reported as Hastimal Jain trading as Oswal Industries v. Registrar of Trade Marks & Anr. (supra). This appeal is accordingly allowed, the order of the Deputy Registrar of Trade Mark is set aside and the matter is remanded hack to the Registrar of Trade Mark for decision on the opposition of the appellant in accordance with law. It may. (supra). This appeal is accordingly allowed, the order of the Deputy Registrar of Trade Mark is set aside and the matter is remanded hack to the Registrar of Trade Mark for decision on the opposition of the appellant in accordance with law. It may. however, he clarified that whether or not the appellant is entitled to extension of time for filing evidence is entirely within the discretion of the Registrar which decision he will take after taking into consideration the facts and circumstances of this case. The parties are directed to appear before the Deputy Registrar of Trade Marks on 23rd April, 2001.