Allied Blenders and Distillers Pvt. Ltd. v. Intellectual Property Appellate Board, The Deputy Registrar of Trade Marks and John Distilleries Limited
AIR 2009 Mad 196, 2010(42)PTC57(Mad)
Section 21 of the Trade Marks Act, 1999 requires a party opposing registration of a trade mark to file a notice of opposition to the registration within 3 months from the date of the advertisement. The Registrar, however, has the power to extend the period by one month.
Section 29(2) of the Limitation Act lays down that where a special Act provides a period of limitation different from the period specified under the Limitation Act, the provisions of Section 4 to 24 of the Limitation Act will apply only so far as and to the extent to which, they are not expressly excluded by such special or local law to the suits, appeals or applications under the special law.
The petitioner and the respondent no.3 are companies engaged in the manufacture and marketing of alcoholic beverages including Indian Made Foreign Liquor (IMFL). One of the brands under which the petitioner sells its alcoholic beverages being whisky is known as ‘Officer’s Choice’. The petitioner claimed that the product under this brand name is in the market since 1988 but the petitioner became the proprietor thereof from 23rd February, 2007. The trade mark registration for the mark ‘Officer’s Choice’ in Class No. 33 in respect of alcoholic beverages was registered with effect from 26th October, 1990. The registration was being renewed subsequently and was duly recorded in the name of the petitioner at the time the case arose.
The respondent no.3 (R3) claimed to be selling another alcoholic beverage under the mark ‘Original Choice’, which it claimed to earlier being used by its predecessor. On 4th April, 1996 R3 applied for the trade mark registration of ‘Original Choice’ in its name. R3 had also obtained a copy right registration for that label on 04th March, 2000 by claiming the date of first use in the year 1996. The trade mark ‘Original Choice’ was published in the Trade Mark Journal on 2nd December 2003 inviting the objections from the public. The petitioner in 2004 filed an application for extension of time to oppose registration of the trade mark of R3 within three months period, and got the extension of one month. The period of 4 (3+1) months was to expire on 01st April, 2004 but the petitioner could not successfully make the opposition by 1st April (because of the cheque for requisite fee not being signed). The petitioner also unsuccessfully filed claims for passing off on two occasions.
Whether the Registrar of Trade Marks can allow a notice of opposition to the registration of a trade mark to be given beyond the period prescribed under Section 21 of the Trade Marks Act, 1999.
Petitioner: The petitioner contended that the cheque was erroneously not signed due to oversight. The procedural law should be applied in a way that serves as an aid to justice. It accordingly submitted that the opposition should be permitted to be taken on record to maintain the purity of the Trade Mark Register.
- The petitioner filed the application after the time prescribed. Trade Marks Act is a special Act, the opposition to registration is in fact a kind of a plaint, it has to be filed within the period of limitation provided under the special Act in the manner prescribed and on payment of the prescribed fee as provided thereunder, and if that was not so done there was no power with the Registrar to extend time and receive the cheque subsequently. No such power to extend the time and receive the cheque subsequently could be read in Section 21 of the Trade Marks Act, nor could Section 131 be pressed into service, because, that Section will apply only where time is not expressly provided under the statute for doing a particular act.
- The petitioner was not without any remedy. On the trade mark of R3 being registered the petitioner had the remedy to apply for rectification of the register under Section 57 of the Trade Marks Act.
The Deputy Registrar of Trade Marks rejected the claim of the petitioner. Thereafter, petitioner filed an appeal under Section 91 of the Trade Marks Act, 1999 before the Intellectual Property Appellate Board, Chennai. IPAB dismissed the appeal. Aggrieved by order of IPAB and two earlier orders in which the petitioner had not succeed, P filed a writ petition to quash all the three orders and to direct Deputy Registrar of Trade Marks, Chennai (respondent no.2) to take on record the notice of opposition filed by the petitioner and to decide the same.
HELD (Delhi High Court):
- Trade Marks Act, 1999 is a special Act. Anybody who is keen to oppose any such registration has also to be vigilant and has to oppose the registration in the prescribed manner, in the prescribed time, and on payment of prescribed fee within the time provided for that purpose. The notice of opposition and the counter statement are like the plaint and the written statement of the proceeding. If the Special Act provides for specific time, manner and fees for filing of the plaint, it has to be so done in compliance and the requirements cannot be relaxed.
- Sub-section 21(7) of the Act provides only for amendment of the notice of opposition and counter statement, but that cannot be construed as a provision 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 pressed into service, since that Section will apply only where time is not expressly provided under the statute and Rule 53 is concerning the time for leading the evidence. It cannot apply to filing of notice of opposition or the counter statement.
- An effective alternative remedy is very much available to the petitioner under the statute by filing a rectification application under Section 57 of the Act, which the petitioner has already filed. The only difference between the two proceedings will be that in the rectification proceedings the burden of proof will be on the petitioner, whereas in the opposition proceedings the burden of proof will be on R3.
CONCLUSION: Writ petition dismissed.
 If any such application is made in the prescribed manner and on payment of the prescribed fees.