Ms Aman Engineering Works v. Registrar Trade Marks Trade Marks Registry New Delhi & Anr

judgment of Sunrider Corporation v. Hindustan Lever supra was rendered by Delhi High Court in the context of interpretation of Trade Marks Rules, 2002 and the respondent has placed heavy reliance of upon the same, therefore, the analysis and interpretation of the new Rules of 2017 is necessary viz a viz the interpretation rendered by the Delhi High Court under the old Rules of 2002 and it is only then the assessment can be made as to whether the interpretation rendered under the old rules of 2002 can be applied to the context of the new rules as it is or not. xxxxxx

¶50On the basis of the interpretation arising from the combined reading of Section 21(4) read with Section 131 and Rule 50 of the Trade Marks Rules, 2002, the Delhi High Court in the case of Sunrider Corporation v. Hindustan Lever Ltd. (supra) came to the conclusion by comparing the Rule 50 which was subsisting under the Trade Marks Rules, 1959 viz. a viz. the changes made in the said Rule by way of amendment in Trade Marks Rules, 2002 that the Registrar's power to extend the time period after the passage of two months has been restricted by way of the amendments carried out in the Rule 50 by limiting the power of Registrar to extend the time period not exceeding one month in aggregate by inserting the words "not exceeding one month in aggregate thereafter" in Rule 50(1) and removing the residual discretion by omitting the words "unless the Registrar otherwise directs". This has weighed heavily before the Delhi High Court while giving the mandatory effect to the interpretation of Rule 50(1) of the Trade Marks Rules, 2002. xxxxxx

¶53In view of the changes made in Rule 45(1) of the Trade Marks Rules, 2017 and also in view of the discussion arising at points (f) to (j) mentioned in the preceding paragraphs relating to the

interpretation of Rule 45 of the Trade Marks Rules, 2017, the judgment passed in case of Sunrider Corporation v. Hindustan Lever Ltd. (supra.) is clearly distinguishable and is not applicable in view of the changes made in the structure of Rule 45 which omits completely the entire aspect of the registrar discretion of granting the extension and the restrictions, which were imposed earlier in rule 50 of rules of 2002 upon the Registrar's power to extend the time period. xxxxxx

¶56In view of the changes made in the Rules and the language of the Rules including Rule 45, the interpretation rendered in the earlier Rule 50 of the Trade Marks Rules, 2002 which restrictedly discretion of the Registrar to grant of extension of time only to one month period in aggregate is removed and consequently the applicability of the judgment of Sunrider Corporation (supra.) under the new Rules the extension of power has been extinguished or have lost its significance, in view of the change in the language of the newly framed Rule 45 of the Trade Marks Rules, 2017."

¶28The position, however, with regard to Rule 119 of the Rules will continue to be governed by Surinder Corporation, U.S.A. (supra), as Rule 119, as was the case with Rule 45 of the old Rules prior to its amendment, prescribes the outer limit within which alone the respondent no. 1 can condone the delay. The judgment of this Court in Surinder Corporation, U.S.A. (supra) would, therefore, fully apply as far as Rule 119 of the Rules is concerned, as it clearly provides that the Registrar of Trade Marks/respondent no. 1 has no power to condone the delay in the filing of an application seeking review beyond expiry of one month from the date of the decision of which review is sought.

¶29The learned senior counsel for the petitioner, placing reliance on Section 157(xxxvi) of the Act read with Rule 109 of the Rules, rightly submits that the power of the Registrar of Trade Marks/respondent no. 1 to condone the delay, even otherwise, has been curtailed to only one month of delay. Section 157(xxxvi) of the Act and Rule 109 of the Rules are quoted hereinbelow:- Trade Marks Act, 1999 "157. Power to make rules.— xxxxx (xxxvi) the manner of making an application and the fee payable therefor under sub-section (1) of section 131; xxxxx Trade Marks Rules, 2017 "109. Extension of time.—(1) An application for extension of time under Section 131 (not being a time expressly provided in the Act or prescribed by Rule 85 or by sub-rule (3) of Rule 86 or a time for the extension of which provision is made in the rules) shall be made in Form TM-M.

(2) Upon an application made under sub-rule

(1) the Registrar, if satisfied that the circumstances are such as to justify the extension of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as he may think fit to impose, extend the time not exceeding one month and communicate the parties accordingly and the extension may be granted though the time for doing the act or taking the proceeding for which it is applied for has already expired."

¶30Rule 109(1) of the Rules prescribes that "An application for extension of time under section 131 (not being a time expressly provided in the Act or prescribed by rule 85 or by sub-rule (3) of rule 86 or a time for the extension of which provision is made in the rules) shall be made in Form TM-M." . As held hereinabove, the time prescribed for the filing of an application seeking review of the decision of the Registrar has been prescribed in the Act in the form of Rule 119 of the Rules. In fact, Rule 109(2) further states that the Registrar, on such an application made under Section 131 of the Act, may extend the time "not exceeding one month". This clearly further circumscribes and restricts the power of the Registrar of Trade Marks/respondent no. 1 under Section 131 of the Act to condone the delay.

¶31The submission of the learned senior counsel for the respondent no.2 that in the present case as the Examination Report and the Notice of Hearing was not served on the respondent no.2, which is a mandatory requirement, the respondent no. 1 was within its jurisdiction to review its decision to treat the applications of the respondent no.2 as "abandoned", also cannot be accepted. Apart from the fact that the applications seeking review itself were not maintainable having been filed beyond the time prescribed, even otherwise, in the applications seeking review, the respondent no.2 had admitted to the receipt of the Examination Report and filing of the reply thereto. There was no amendment to the applications sought or made by the respondent no.2. However, affidavits were later filed by the respondent no.2 claiming that even the Examination Report was not received. The respondent no. 1 went on to

entertain the said affidavit, though it was in contradiction to the review applications itself. Further, the said affidavit had been filed by the director of the respondent no.2-company, who stated that he had not received a copy of the Examination Report "and the examination report was not in my knowledge or of the company". There was no assertion in the affidavit that the Examination Report had also not been received by its Attorney, whose address was given in the application for affecting service of any communication of the respondent no. 1. In the absence of such an assertion, clearly, the respondent no. 1 erred in accepting the submission of the respondent no.2 that the Examination Report had not been received by the respondent no. 2.

¶32In fact, the reply-affidavit filed by the respondent no.1 to the present petition shows that the respondent no. 1 shifted the burden of proof of service of the Examination Respondent on the respondent no. 2 to itself, though the applications for review were filed seventeen and sixteen years respectively after the orders of the respondent no. 1 dismissing the applications of the respondent no.2 as "abandoned". No explanation was sought from the respondent no.2 on the steps taken by the respondent no.2 for all this period with respect to its applications. The burden of proving service could not have been placed by the Registrar on himself after such a long period of time. An act of the authority must be deemed and presumed to have been done in accordance with the procedure prescribed. Section 114 of the Indian Evidence Act, 1872, reads as under:

"114. Court may presume existence of certain facts.—The Court may presume the existence of any fact which it thinks likely to have happened, regard being had to the common course of natural events, human conduct and public and private business, in their relation to the facts of the particular case. Illustrations xxxx

(e) that judicial and official act have been regularly performed: xxxx But the Court shall also have regard to such facts as the following, in considering whether such maxims do or do not apply to the particular case before it: -- xxxxx as to illustration (e) – a judicial act, the regularity of which is in question, was performed under exceptional circumstances; xxxxx"

¶33In Iqbal Basith and Others v. N. Subbalakshmi and Others,

(2021) 2 SCC 718, it was held that there is a presumption that all official acts have been regularly performed. The onus lies on the person who disputes the same to prove otherwise. In the present case, the respondent no. 2 had clearly failed to discharge this burden and inspite of the same, the respondent no. 1 shifted this burden on itself, though there was an unreasonable delay on part of the respondent no. 2 to move applications seeking review of the original orders.

¶34The reliance of the learned counsel for the respondent no.1 on the order of this Court dated 14.11.2017 in a batch of petitions including Tata Steel Limited (supra) and on the order dated 12.03.2021 in Mahesh Gupta (supra) also cannot be accepted as these orders were passed on the respondent no.1 itself having withdrawn its orders for the abandonment of applications passed without due process.

¶35The learned senior counsel for the respondent no.2 has also placed reliance on the judgment of Jagatjit Industries Limited (supra), to contend that the Registrar of Trade Marks/respondent no. 1 need not give reasons for condoning the delay in filing of an application seeking extension of time. The said judgment also has no application to the facts of the present case, inasmuch as, what stares at the face herein is the lack of power with the respondent no. 1 to condone the delay itself. Relief

¶36In view of the above, the impugned orders dated 07.01.2020 passed by the learned Senior Examiner of Trade Marks in application nos. 631248 and 765101 are set aside.

¶37The petition is allowed. There shall be no order as to costs.

NAVIN CHAWLA, J. NOVEMBER 04, 2022/rv/Ais/AB

* IN THE HIGH COURT OF DELHI AT NEW DELHI Reserved on: 17.10.2022 Date of decision: 04.11.2022 + CM(M)-IPD 5/2021 & CM 16168/2020 MS AMAN ENGINEERING WORKS ..... Petitioner Through: Mr.Ashish Dholakia, Sr. Adv. with Mr.Nipun Saxena, Mr.Archit Adlakha, Ms.Somya Saxena, Mr.Akash Pawar, Advs. versus REGISTRAR TRADE MARKS, TRADE MARKS REGISTRY, NEW DELHI & ANR. ..... Respondents Through: Mr.Vikram Jetly, CGSC with Ms.Shreya Jetly, Adv. for R-1. Mr.C.M.Lall, Sr. Adv. with Mr.Abhinav Bhatia, Ms.Ananya Chug, Advs. for R-2. CORAM: HON'BLE MR. JUSTICE NAVIN CHAWLA 1. This petition has been filed challenging the orders dated 07.01.2020 passed by the learned Senior Examiner of Trade Marks, Delhi in TM-M Review Applications nos. 631248 for the mark "RITE KRANTI" [review filed by the respondent no. 2 against order dated 09.07.2002] and 765101 for the mark "B&M KRANTI" [review filed by the respondent no. 2 against order dated 11.08.2006], allowing the aforementioned review applications filed by the respondent no. 2. 2. By the application no. 631248 filed on 16.06.1994, the respondent no. 2 applied for the registration of the mark "RITE KRANTI" in Class 9 with respect to "water meters, oil meters, gas meters, speed meters and meters of all types". An Examination Report dated 05.10.1999 was issued by the respondent no.1 communicating the grounds of objection to the registration of the mark. Subsequently, vide an order dated 09.07.2002 the application was dismissed as "abandoned". 3. By the application no. 765101 filed on 28.07.1997, the respondent no. 2 had applied for the registration of the mark "B&M KRANTI" in Class 9 with respect to "water meters, oil meters, gas meters, speed meters and other meters of all types and all other goods included in class 9". An Examination Report dated 05.02.2003 was issued on this application by the respondent no. 1 communicating the grounds of objection to the registration of the mark. This application was also eventually dismissed as "abandoned" vide order dated 11.08.2006. 4. The respondent no. 2 applied for a review of the above orders vide applications dated 31.08.2019, inter alia, on the ground that though the Reply to the Examination Report had been filed by the previous Attorney of the respondent no.2, neither the respondent no. 2 nor its Attorney had received the hearing notices dated 09.07.2002 [for application no. 631248] and 11.08.2006 [for application no. 765101] and, therefore, the applicant/respondent no. 2 in the petition could not attend the hearing in the applications on the said dates. The respondent no. 2 also contended that the orders of refusal of the applications were not served on the respondent no.2. 5. The impugned orders allowing these review applications are almost verbatim. The order passed by the learned Senior Examiner of Trade Marks, as far as application no. 631248 is concerned, is reproduced hereinunder:- "An application for registration of trade mark consisting of word" RITE KRANTI" was filed by the aforesaid Applicant under application No 631248 in respect of applied goods included in Class - 9. The application was examined and examination report containing the objections to the acceptance of application for registration of trade mark was communicated to the Applicant. On the request of the Applicant, a hearing was fixed in this matter. Eventually on 16 September 2019, the application came up before me for hearing and the order was passed accordingly. The present petition on form TM-M has been filed for review of the order dated. Made submission that applicant never received the examination report, affidavit to this effect also filed, review allowed on the basis of affidavit. The request on form TM-M is accordingly Allowed. Sealed and signed at the Trade Marks Registry, Branch Delhi on dated: 07 January 2020." Submissions on behalf of the learned senior counsel for the petitioner 6. The learned senior counsel for the petitioner submits that while in the review applications