REQUEST FOR EXTENSION OF TIME: AN AMBIGUOUS PROVISION?
The issue regarding the request for extension of time has been discussed in the judgement by the Intellectual Property Appellate Board (IPAB) in the case of Sahil Kohli (Appellant) vs. The Registrar of Trade Mark (Respondent No.1) and Anil Verma (Respondent No.2), dated October 18, 2018.
Respondent No. 2 had filed three applications bearing number 2626911 dated November 13, 2013, 2660869 dated January 17, 2014 and 2660870 dated January 17, 2014 for the Trade Mark ‘CASH FOR GOLD’, ‘GOLD BUYERS’ and ‘WE BUY GOLD’ for registration respectively. The said applications were advertised in Trade Mark journal on August 21, 2017 for 2626911 and on September 4, 2017 for 2660869 and 2660870.
The Appellant filed three notices of oppositions on December 12, 2017. Respondent No.2 then filed counter statement on December 25, 2017. The Registrar of Trade Marks vide letter dated December 27, 2017 issued notice under Section 21(3) of the Trade Marks Act, 1999 inviting attention under Rule 45 of the Trade Mark Rules 2017, calling the Appellants to file evidence within two months from the receipt of the notice, failing which opposition shall be deemed to have been abandoned vide Rule 45(2) Trade Mark Rules 2017. The Appellant had stated vide three separate letters of February 26, 2018 which were sent by private couriers to the Trade Marks Registry that the Appellant had relied upon the facts and grounds mentioned in their three separate oppositions.
Respondent No.2 rebutted this statement by stating that the three separate letters dated February 26, 2018 in support of oppositions were never served upon the him, but that he came to know later on about the letters, solely through the Trademark Registry website.
Respondent No.2 vide his letter dated March 26, 2018 had filed his evidence in support of his respective applications under Rule 46 of the Trade Mark Rules 2017. In the meantime, the Appellant changed his attorney and the new attorney sent letter dated June 20, 2018 to the Trade Marks Registry, requesting them to send the evidence in support of application filed by the applicant under Rule 46 to enable them to file Rejoinder Affidavit under Rule 47 of the said Rules.
Respondent No.1 fixed the date of hearing on August 1, 2018 and passed its impugned order on August 6, 2018, holding that the notice of opposition is deemed to have been abandoned under Rule 45(2) of the Trade Mark Rules 2017 and as per the rules, the application shall proceed.
The Appellant stated that before the passing of the impugned order, Appellant had filed interlocutory petition on August 3, 2018 for taking up evidence under Rule 45 on record along with letter dated February 26, 2018, but Respondent No.1 had ignored the said interlocutory petition while passing the impugned order.
On the hearing date, the Appellant filed three separate letter dated July 31, 2018 along with receipts of the courier company which showed dispatching of letter dated February 26, 2018, but Respondent No.2 alleged that these courier receipts were fabricated and forged and that even these letters dated July 31, 2018 were not served upon the Respondent No.2.
The impugned order passed on August 6, 2018 was challenged by the Appellant in three appeals.
The learned senior counsel appearing on behalf of the Appellant contended that the reliance letter was dispatched within two months and once the Evidence was filed by the Respondent No.2 under Rule 46, then the stage of Rule 45 was over, and it was the duty of the Respondent No.1 to decide the opposition proceedings on merit rather than abandoning the same under Rule 45(2). They contended that the Registrar failed to appreciate that there is no time expressly provided in the Act for filing evidence under Rule 45. They further submitted that the impugned order of the Registrar is totally wrong and perverse and against the principles of natural justice, since the Registrar was also empowered to grant enlargement of time for filing evidence under Rule 45(2).
The learned counsel appearing on behalf of Respondent No.2 submitted that Section 21(4) of the Trade Marks Act, 1999, along with Rule 45 clearly postulates the compliances with the filing of evidence on time. It was argued by the learned counsel on behalf of Respondent No.2, that an application under Section 131 of the Act is to be made in form TM-M, the application being moved under Rule 109(1) for the satisfaction of the Registrar within the prescribed time, but in the present case no application was ever moved by the Appellant.
Whether the impugned order of the Registrar of Trade Marks is sustainable in law or not?
Interpretation of Rule 45(1) and Rule 45(2) of the Trade Marks Rules 2017, wherein the consequences of not taking any action under Rule 45(2) will result in the form of abandonment of the proceedings on account of failure to file evidence within prescribed time.
Whether Rule 45(2) of the Trade Mark Rules 2017 operates so inflexibly that it leads to a position, which has no exception but to terminate the proceedings in the form of abandonment? Whether the interpretation rendered under the old Rules of 2002 can be applied to the context of new Rules as it is or not?
The court examined Section 21, Section 131 of the Trade Marks Act, 1999, as well as Rule 50 of the Trade Mark Rules, 2002, and observed that the Registrar is within its discretion to extend the time period for filing of the evidence in support of opposition, which is not specifically provided under the Act, but by the Rules. Rule 50(1) limited the power of the Registrar to extend the time period, not exceeding one month and therefore the request for extension of time under Section 131 of the Trade Marks Act, 1999 could be filed only to avail one month’s time period.
On March 6, 2017, the Trade Mark Rules 2017 came to be enacted in place of Trade Mark Rules 2002. Rule 50 of the Trade Mark Rules 2002 was replaced by Rule 45 of the Trade Mark Rules 2017. However, the language of the Trade Marks Act, 1999 remained intact. Rule 45(1) has completely omitted the aspect of granting of period of extension by the Registrar of Trade Marks after passage of two months from the service of Notice of opposition, while the earlier Rule 50 provided for the period of extension of time and restricted the discretion of the Registrar to one month.
Therefore, as per the new Rule 45(1) of the Trade Marks Rules 2017, the operation of Rule 45 cannot be given a mandatory effect in view of the operation of Section 131 of the Trade Marks Act, 1999, which clearly empowers the Registrar to extend the time period upon being satisfied for doing any act for which time limitation is not provided under the Act. Section 131 of the Act being the parent provision, gives room to the Registrar to extend the time period upon making of an application in a prescribed manner and prescribed fees upon furnishing of the sufficient cause.
The operation of Rule 45(1) and (2) in rigid and inflexible manner would lead to the Rule travelling beyond the specific provision of the Act and leading to Rule 45 being contradictory and ultravires to Section 131 of the Act.
Rule 45(1) is a rule provided under the Trade Mark Rules which cannot operate in an inflexible manner till the time there is a provision for extension of time after showing sufficient cause under the provisions of Section 131 of the Trade Marks Act, 1999 and there is a mechanism for extension of time set in place as per the scheme of the Trade Marks Act, 1999 and Trade Marks Rules 2017. However, the position becomes altogether different when any party doesn’t avail the benefits of the provisions of Section 131 by filing the extension of time application in a prescribed manner accompanied by the prescribed fees.
The provisions of Section 131 of the Trade Marks Act, 1999 can be availed only, when an application is made to the Registrar in a prescribed manner and prescribed fees, showing the sufficient cause for extending the time period for doing any act. However, in the case, no extension application had been filed by the Appellant and therefore, the benefit of the provisions of Section 131 of the Trade Marks Act, 1999 cannot accrue to the Appellant. Therefore, in the absence of any extension application in the prescribed form along with prescribed fee, it cannot be said that there exists any occasion for the Registrar to condone the delay which has occasioned on account of non-compliance of the provisions of Rule 45(1).
No compassionate view could be taken in favor of the Appellant when the Appellant had got numerous opportunities to file request for extension of time, which included time period between December 27, 2017 till February 27, 2018, up to March, 2018, and later up to the date of hearing.
Hence, the order dated August 6, 2018 giving effect to Rule 45(2) of the Trade Marks Rules 2017 suffered no infirmity. The appeal stood dismissed.
With the passing of this judgement by the IPAB, we can precisely conclude that Rule 45(1) of the Trade Marks Rules 2017, cannot operate inflexibly. Section 131 expressly provides that the Registrar may, upon his own discretion, and on the basis of an application made to him in the prescribed manner and accompanied by the prescribed fee along with sufficient cause for extending the time for doing any act, extend the time for filing of Evidence. Rule 45(1) of the Trade Mark Rules 2017 is subject to the Trade Marks Act, 1999. Section 131 of the Trade Marks Act, 1999 is a special provision which enables the Registrar to consider the grant of extension upon its satisfaction and on furnishing of sufficient cause.
Rule 109(1) of the Trade Marks Rules 2017 postulates that the application for extension of time under Section 131 shall be made in form TM-M, and if the Registrar is satisfied that the circumstances are such as to justify the extension of time applied for, he 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.
Therefore, for the purpose of extension of time, the party seeking extension can only extend the deadline up to one month. This provision was also available under Rule 50 of the Trade Marks Rules, 2002, wherein a one-month extension period was granted. While Rule 45(1) of the Trade Marks Rules 2017 has completely omitted the aspect of granting an extension of the deadline by the Registrar of Trade Marks after the passage of the statutory period of two months for filing the evidence, Rule 109(1) of the Trade Marks Rules, 2017, acts as a saving grace for a party, who due to unforeseen circumstances, is unable to file the evidence within the statutory 2 months’ time period.
However, the question whether this blanket provision facilitates the opposition proceedings or whether it will be misused by parties seeking extension, still remains unanswered. The Registrar is in such circumstances bound to carefully analyze the case on its merits and allow such requests for extension, ensuring that the sanctity of such a provision is not misused.
The article was originally published on www.lexology.com on December 19, 2018 and can be accessed here.