ITC Limited v. Deputy Registrar of Trade Marks and Ors.

1. This appeal has been filed under Trade Marks Act, 1999 (‘the Act’) assailingimpugned order dated 3rd January, 2018 underRule53 of the Trade C.A.(COMM.IPD-TM) 81/2022 Page 2/15 Marks Rules,2002(‘2002Rules’), now Rule48 of Trade MarksRules, 2017, passed bytheRegistrarofTrademarks (‘Registrar’)in TrademarkOpposition No. Del-T-3509/60503to Trademark Application No.589487 in Class 34. Question for Consideration

2. The essential issue in the appeal pertains to rejection by the Registrar of the Interlocutory Petition filed by appellant to place on record further evidence under Rule 53 of the 2002 Rules in support of their opposition to trademark application filed by respondent no.3. Chronology of Events

3. Respondent no.3 had filed an application on 28th January, 1993 for registration of trademark ‘HERO’ device being represented as (‘said application’).

4. Examination report was issued by the Trademark Registry on 16th October, 1998 andsaid applicationwaspermitted toproceed for advertisement on 29th January, 2001. Said mark was published in TradeMarksJournalNo. 1263 on 16th January, 2002 subsequent to which a notice of opposition was C.A.(COMM.IPD-TM) 81/2022 Page 3/15 filed by theappellant(FormTM-5)on 11th April, 2002. A counter statement by respondentno.3(Form TM-6)followed on 14th April, 2003. Theappellant choseto filea letter dated 5th August,2003,relyingon factsandgroundsstated in notice of opposition. Vide order dated 20th February 2004, the Assistant supportof opposition;however, cancelled the aboveorder on 28th June, 2004 reinstatingthesaid opposition and invitingrespondent no.3 tofile evidence in terms of Rule 51 of 2002 Rules. The evidence was then filed by respondent no.3 under Rule 51 on 18th November, 2004.

5. InterlocutoryPetitionwas filed by theappellant on 23rd February,2006 for taking on record the appellant’s evidence in reply which was allowed on 14th May, 2007. Thereafter,no communicationwas received by theappellant regarding the hearing proceedings. In July, 2008 a request was made for change of address for service to appellant to ‘S Majumdar & Co.’, followed by letters dated 31st August, 2009 and 10th March, 2010 requesting the appellant, they were not informed of any proceedings.

6. On 15th November, 2012,appellantinformedtheTrade MarksRegistry that pursuant to a file inspection, an order of 14th May, 2007 came to their attention which had allowed registration of respondent no.3’s trademark as ApplicationNo.589487 in Class34.An Interlocutory Petitionwasfiled by the appellantfor cancellation oftheimpugned trademarkon 30th September, 2013 to which a reply was filed by respondent no.3 on 18th November, 2013.

7. After 2 further years, on 2nd November, 2015, appellant filed an C.A.(COMM.IPD-TM) 81/2022 Page 4/15 interlocutory petition for taking on record further evidence under Rule 53 of 2002 Rules and an affidavit was filed of further evidence in support of the opposition.

8. Regarding the petition for cancellation of respondent no.3’s registration, vide order dated 3rd November, 2015, the Registrar revoked the certificateofregistrationclearly premised onthebasisthatit had been granted inadvertently during the pendency of this opposition. Impugned Order

9. Subsequently,by way oftheimpugned order,InterlocutoryPetition for placingon record furtherevidencewas disallowed. Impugned orderpartially records this sequence of events, adverts to Rule 53 of 2002 Rules and finds that the appellant’s plea to place additional evidence, at this stage, cannot be allowed.

10. Factorswhich informed the opinion were:firstly, the last dateof filing of evidence, as per Rules, would havebeen 1st October, 2003, butwasfiled on 2nd November 2015 after a long gap of 12 years; secondly, appellant had not filed any evidence in support of opposition under Rule 50(1) initially and optedto rely on contentsofnoticeof oppositionthereby havingexhausted the said option; thirdly, Rule 53 was not intended to fill a gap, lacunae, or lapse on thepartofeither party; fourthly, Rule 53 may be invoked sparingly under peculiar circumstances by the Registrar in order to arrive at conclusion of a case during the adjudication of opposition proceedings; fifthly, by non-filing of evidence, if a legal right had been created in favour of the trademark C.A.(COMM.IPD-TM) 81/2022 Page 5/15 applicant, same may not be displaced; sixthly, appellant had shown repeated failures in meetingtheprescribed deadlines bearingoutdelayingtacticsofthe opposition proceedings; and seventhly, allowing the additional evidence would entitle the applicant to file further evidence as well, which would amount to repetition of entire opposition proceedings. Submissions on behalf of the Appellant

11. Arguments on behalf of the appellant were addressed by Mr. RajshekharRao, SeniorCounsel whosechallenge to the impugned orderwas based inter alia on the following points: 11.[1] The Registrar was wrong to simply reject the application on the assumption that the delay of 12 years was attributable only to the appellant. Thesequenceof events was advertedto, toshow thattherewas consistentand prolonged uncertainty in the trademark hearing proceedings before the Registry. First, the opposition was deemed as abandoned which was later reversed in 2004, then the evidence was filed thereafter in 2004 which was allowed later in 2007, and thereafter there was no information from the Registry regardingtrademark proceedings. Oncetheappellant becameaware of the registration of the mark in favour of respondent no.3, the petition for cancellation was moved in 2013 which was finally allowed in 2015. In this flow of events, additional evidence was filed in November, 2015 along with the application, once appellant became aware of registration of the mark in favour ofrespondentno.3. Thus,appellant was notawareaboutthestatus of the matter, therebeingno communication and only when in November, 2012 C.A.(COMM.IPD-TM) 81/2022 Page 6/15 the issue was revived, necessary steps were taken. Therefore, attributing the long gap of 12 years just to the appellant was not tenable. 11.[2] Asidefrom Rule 50 and 52 which give limited window for evidence in supportoftheopposition, Rule53 did not haveany timelines,as waspossibly intended by the legislature/ rule makingauthority. Rule 53 was, therefore, a standalone provision, not coloured or curtailed by Rules 50, 51, or 52. For this, heplaced relianceon theorderofSingle Judgedated 14th December,2012 of this Court in W.P. (C) 7766/2012 titled as Amrish Kumar Aggarwal v. Surinder Engineering Works and Ors. and decision of Intellectual Property Appellate Board (‘IPAB’) in OA/2/2016/TM/DEL dated 5th February, 2018 titled ITC v. Dy. Registrar of Trademarks andIndianTrading Corporation. 11.[3] The impugned order, in foreclosing the right of appellant for filing additional evidence, was technical in its reasoning, whereas the Hon’ble SupremeCourtand other Courtshaverepeatedly held thatprocedureis merely a handmaid of justice. For this, he relied upon Sugandhi (Dead) By Legal Representatives and Anr v. P. Rajkumar, (2020) 10 SCC 706 and Prabhu Shankar Agarwal v. Dy. Registrar of Trademarks and Ors. passed by the IPAB in 2008 (36) PTC 627 (IPAB). 11.[4] By precluding the appellant from placing additional evidence which supported their claim for prior user, Registrar was depriving itself of addressingtheroot of thedispute, thereal issuein the controversy, on which the new documents would have shed light. 11.[5] Impugned order ignored the fact that appellant is a large organization with multiple offices and, at the time of filing further evidence, documents C.A.(COMM.IPD-TM) 81/2022 Page 7/15 were not digitised or traceableand retrievingthesametook considerabletime and effort. Therefore, a reasonable cause existed in favour of appellant for delayed filing. Further, documentssoughtto beplaced on record wereof year 1993 and not digitised which further made them difficult to be procured. 11.[6] No prejudice was caused to respondent no.3, who is not using the subject markin India tilldate, whereastheappellant’s rightsin their markhad improved and grown considerably. 11.[7] Respondent no. 3 always could be given an opportunity to file documents in rebuttal to the additional evidence proposed to be filed and interest of justice would be secured in such a case. 11.[8] Theissuecould not beslotted under theprovisionofSection 131 ofthe Act which could only be attracted when a statute prescribed a particular timeline. Additional evidence was proposed to be placed under Rule 53, therefore, there would be no application of Section 131(2) of the Act in particular (which disallowedany appealsfrom a decision of a Registrarin an application for extension). Submissions on behalf of Respondent No.3

12. Arguments on behalf of respondent no.3 were addressed by Mr. ChanderM. Lall, Senior Counsel who vehemently refuted thesubmissionsof appellant and submitted as under: 12.[1] At the outset, there was an issue of maintainability of the appeal. As per Section 131 of the Act, any application for extension of time for which timelines are not provided in the Act could be considered by the Registrar. C.A.(COMM.IPD-TM) 81/2022 Page 8/15 However, as per Section131(2)oftheAct, no appealcould liefrom that order (granting an extension of timelines) of the Registrar. Accordingly, considering that Rule 53 did not provide a timeline and more so, was not a provision in theAct but in 2002 Rules, any orderby theRegistrarrejectingthe application for extension, was not appealable. 12.[2] Appealsto theIPAB (nowtheHigh Court, post2021)can beagainstan order or decision of the Registrar, however, in light of Section 131(2) of the Act, such an appeal would be excluded. 12.[3] Time limits provided by the Act are strict and reference was made to Section 21: ▪ Section 21(1): four months to file opposition; ▪ Section 21(2): two months for counter statement, failing which application will be deemed to have been abandonment; ▪ Section 21(4):evidenceto besubmitted within a prescribed time. Thesaid timelines werereflected in Rules 49, 50, 51and52 ofthe2002Rules. Thestrict timelines mandatedboth thetrademark applicant and theopposerto comply therewith;in default of which, the applicationwould deemed to have been abandoned. 12.[4] Attention was drawnto theomissionbyappellant in filingany evidence in support ofoppositionat thefirst opportunity(andrelyinginsteadupon their noticeof opposition in 2003);filing it later in 2004 under Rule52 which was later allowed in 2007. 12.[5] While the last opportunity, as per the Rules, would have been for the appellantto fileits evidenceonorbefore1st October, 2003, theappellantchose C.A.(COMM.IPD-TM) 81/2022 Page 9/15 not to fileit till March, 2015notwithstandingthatthehearingproceedings had not taken place, as contended by the appellant. 12.[6] There were fixed timeframes provided by the Act which were not extendable regarding notice of opposition and the counter statement. Some leeway/extendibility was provided by the Act for filing of evidence in terms ofRule105 of2002 Rules which applied tosituations where timehad notbeen prescribed in the Act. Appeals in regard to orders of extendibility were, therefore, not permitted by Section 131 and the only recourse, if at all, to an aggrieved party would be to come up in a writ petition before the Court, but certainly not in appeal. 12.[7] The prior user argument of appellant was untenable since respondent no.3 was user of ‘HERO’ mark globally since 1957. In the notice of opposition, the appellant first claims in para 3 ‘user since 1942’, then in the evidence in reply in para 9(e), improves its claim to ‘1905’, as used by appellant’s predecessors and then in interlocutory petition filed by the appellant, in para 8 it claims ‘since1993’. This would showthattheappellant was not clear of its own stand and was merely seeking to improve their case as the proceedings went along. 12.[8] Referencewas madetotheinterlocutorypetition filed in February, 2006 to place evidence on record under Rule 52 where it is stated by the appellant that they were a big corporation with branches in various parts of India and were in process of collecting evidence in consultation with their lawyers and preparationofthesame, which consumed time. Mr.Lall, therefore, contended that if this was the position and an extensive exercise had been undertaken, C.A.(COMM.IPD-TM) 81/2022 Page 10/15 even as per the appellant in 2006, there could be no reason for attempting to submit further documents in 2015. In any event, in the application for filing theadditionaldocuments in respect ofwhich the impugnedorderwas passed, has provided no reason or any evidence of due diligence which the appellant would have undertaken. Submissions in Rejoinder

13. Submissions were made in rejoinder by Mr. Rajshekhar Rao, Senior Counsel for the appellant in the following terms: 13.[1] Since timelines were not provided in Rule 53, applicability of Section 131 of the Act for pleading non-maintainability of the appeal was not sustainable. Section 131 applied only to situations where there prescribed timelines. Prescription in the Act for timelines was in Section 21(1), (2), and (4). 13.[2] It was pointed out that pursuant to the evidence placed on record in 2007, the Registry did not communicate of a hearing in the notice of opposition, despite a request for change of address in 2008. Attention was drawn to various letters addressed by appellant noting repeated communications of 6th March, 2010, 28th August, 2009, 5th November, 2008 and 7th July, 2008. This narration was foundin letter dated 10th March, 2010 which had also mentioned the word ‘REMINDER!!!’ in large, bold font. Thereafter,in 2012, pursuantto a file inspection, it transpired that respondent no.3 had been granted registration without a hearing and which, pursuant to steps taken by the appellant, was finally cancelled in 2015. Thus, it was not C.A.(COMM.IPD-TM) 81/2022 Page 11/15 as if the appellant was simply coming after 15 years. Having no communicationoftheproceedingsor statusofthematter and thislongperiod being interspersed withso manydevelopments, thebenefit ofextensionought to be given to the appellant. 13.[3] It was also averred thatground ofnon-maintainabilitywas being taken at a belated stage. 13.[4] Documents which were sought to be appended as additional evidence, were merely those which showed the user of the mark by the appellant since 1993 and would notcauseany prejudiceto therespondent no.3 in thatregard. Analysis

14. For easeofreference, therelevant provisionas incorporatedin the2002 Rules, and the latest 2017 Rules, is tabulated as under:

┌─────────────────────────────────────┬──────────────────────────────────────────┐
│ 2002 RULES                          │ 2017 RULES                               │
├─────────────────────────────────────┼──────────────────────────────────────────┤
│ Further Evidence 53. No further     │ 48. Further evidence.— No further      │
│ evidence shall be left on either    │ evidence shall be left on either side,   │
│ side, but in any proceedings before │ but in any proceedings before the        │
│ the Registrar, he may at any time,  │ Registrar, he may at any time, if he     │
│ if he thinks fit, give leave to     │ thinks fit, give leave to either the     │
│ either the applicant or the         │ applicant or the opponent to leave any   │
│ opponent to leave any evidence upon │ evidence upon such terms as to costs or  │
│ such terms as to costs or otherwise │ otherwise as he may think fit. iling     │
│ as he may think fit. 15. An issue   │ evidence arose in Sun Pharma             │
│ relating to timelines for f         │                                          │
└─────────────────────────────────────┴──────────────────────────────────────────┘