Kanin (India)(P) Ltd. Vs. The Registrar of Trade Marks, Dhaka, 2 LNJ (2013) 404

Case No: Trade Mark Appeal No. 6 of 2006

Judge: Md. Ruhul Quddus,

Court: High Court Division,,

Advocate: Mr. Muhammad Ohiullah,Mr. Md. Moazzam Hussain,,

Citation: 2 LNJ (2013) 404

Case Year: 2013

Appellant: Kanin (India)(P) Ltd.

Respondent: The Registrar of Trade Marks, Dhaka

Subject: Trade Mark,

Delivery Date: 2011-01-30

HIGH COURT DIVISION
 
Nazmun Ara Sultana, J.
And
Ruhul Quddus, J.

Judgment
30.01.2011
  Kanin (India)(P) Ltd.
. . . Appellant
-Versus-
The Registrar of Trade Marks, Dhaka and another
... Respondents
 
 
Trade Marks Act (V of 1940)
Section 76
Trade Marks Rules, 1963
Rules 25 and 84
Rule 84 of the Revised Trade Marks Rules, 1963 provides four months time to prefer an appeal against any decision of the Registrar from the date of such decision excluding the time occupied for communication of the grounds. Rule 25 of the Rules of 1963 provides that in order to get the grounds of decision communicated, the intending appellant has to file an application on form T. M-15 within one month from communication of the decision on receipt of the grounds, the appellant would present the Memo of Appeal before the High Court Division within the time as prescribed in Rule 84. In the instant case, the Memo of Appeal was presented on 24.05.2006 before the High Court Division that is, within four months from communicating the grounds of decision by the Registrar of Trade Marks and as such it is well within time. If a person is aggrieved by a decision of the Registrar of Trade Marks, can prefer an appeal in spite of being not a party in the original proceeding. Admittedly, the application for withdrawal of the original application for registration of trade mark was allowed with consent of the opponents. When the application was withdrawn, the opposition case connected thereto became infructuous. Therefore, the question of accepting an infructuous opposition case affecting the interest of the appellant does not arise and hence, the impugned order insofar as it relates to acceptance of the opposition case is illegal. . . .(7, 8, 10, 11 and 12)
 
Mr. Mohd. Moazzam Hussain, Advocate
... For the Appellant
Mr. Muhammad Ohiullah, Advocate
... For the Respondent

Trade Mark Appeal No. 6 of 2006
 
JUDGMENT
Md. Ruhul Quddus, J:
 
This Trade Mark Appeal under section 76 of the Trade Marks Act, 1940 is directed against order dated 12.7.2005 passed by the Registrar of Trade Marks, Dhaka that was communicated by letter dated 22.5.2006 accepting Opposition Case No. 2131 of 2003. 
 
Facts relevant for disposal of this appeal are that the appellant’s agent in Bangladesh, Haji Abdul Maleque filed Application No. 65372 in class-6 for registration of trade mark, which was advertised in Trade Mark Journal No.219 at page 275 in August, 2002. In opposition thereto one Mr. Arihant Jain and others as proprietors of M/S Kangaroo Industries (herein appellant No.2) filed Opposition Case No.2131 of 2003 on the facts and grounds as stated and taken therein. In course of proceedings in the said opposition case, the applicant Haji Abdul Maleque filed an application for withdrawal of his original application for registration of trade mark on the reason that it was made in wrong name. The opponents gave their consent on such withdrawal. The Registrar of Trade Marks, Dhaka by his order dated 12.7.2005 filed the application, but at the same time accepted the opposition case and communicated the decision to the applicant. 
 
Being aggrieved by the said order, so far it relates to acceptance of the opposition case, the appellant Kanin (India) (P) Ltd. as principal of the applicant Haji Abdul Maleque claming itself as the owner of the trade mark, has preferred the present Trade Mark Appeal before the High Court Division. 
 
Mr. Mohd. Moazzam Hussain, the learned Advocate appearing for the appellant supports the appeal submitting that when the applicant had already withdrawn his original application for registration of trade mark with the consent of the opponents, the connected opposition case became infructuous, and the Registrar of Trade Marks ought to have filed both the application and opposition case, but he committed illegality in accepting Opposition Case No. 2131 of 2003 which was already infructuous. The learned Advocate further submits that the impugned order accepting the opposition case would prejudice the appellant’s right and interest over the trade mark in future litigation, if any.
 
On the other hand, Mr. Muhammad Ohiullah, the learned Advocate appearing for respondent No.2 (M/S Kangaroo Industries) submits that since the appellant M/S Kanin (India)(P) Ltd. was not the party in the proceedings before the Registrar of Trade Marks, it cannot maintain the present appeal, and that the appeal is hopelessly barred by limitation and has been preferred before the High Court Division without filing any application for condonation of delay and as such it should be dismissed as being barred by limitation as well. 
 
In turn of his reply Mr. Mohd. Moazzam Hussain, the learned Advocate for the appellant submits that since the impugned order would affect the appellant’s right and interest over the trade mark, it can maintain the present appeal. On the issue of limitation Mr. Hussain submits that in order to prefer an Appeal before the High Court Division, an aggrieved party requires the grounds of decision in writing. The intending appellant should apply for getting the grounds of decision on form T.M-15 to the Registrar of Trade Marks within one month from communicating the impugned decision. In the present case a review petition was pending, for which the applicant could not apply to the Registrar on form T.M-15 within one month as prescribed in the Rules. However, he filed a delayed application for grounds of decision on form T.M-15 to the Registrar with an application for condonation of delay. The Registrar allowed the said application for condonation of delay and communicated him the grounds of decision by a letter as contained in Memo No. T.M/Oppo/Mamla/471/06(2) dated 22.5.2006.
 
We have examined the Revised Trade Marks Rules, 1963. Rule 84 of the said Rules provides four months time to prefer an appeal against any decision of the Registrar from the date of such decision excluding the time occupied for communication of the grounds. Rule 25 provides one month time to file an application on form T.M-15 for communication of the grounds in writing. It runs as follows: 

“25. Decision of Registrar.- (1) The decision of the Registrar at a hearing under rule 24, or without a hearing if the applicant has duly communicated his observations in writing, and has stated that he does not desire to be heard, shall be communicated to the applicant in writing, and if the applicant intends to appeal from such decision he may within one month from the date of such communications apply on form TM-15 to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at his decision. 
(2)  In case where the Registrar makes any requirements to which the applicant does not object, the applicant shall comply therewith before the Registrar issues a statement in writing under sub-rule (1). 
(3) The date when such statement is sent shall be deemed to be the date of the Registrar’s decision for the purpose of the Appeal.”
 
From a plain reading of the above quoted rule it appears that in order to get the grounds of decision communicated, the intending appellant has to file an application on form T.M-15 within one month from communication of the decision.  On receipt of the grounds, the appellant would present the memo of appeal before the High Court Division within the time as prescribed in rule 84. 
 
In the present case an application for review of the impugned order was pending before the Registrar, for which the applicant could not file any application on form T.M-15 within one month. He, however, filed a belated application on form T.M-15 with an applicat-ion for condonation of delay. The Registrar allowed the said application condoning the delay and ultimately communicated the grounds of decision by a letter as contained in Memo No.T.M/Oppo/Mamla/471/06(2) dated 22.5.2006 to the learned Advocate for the applicant (see pages 25-26 of the paper book).
 
It further appears from the office note that the memo of appeal was presented on 24.5.2006 before the High Court Division i.e within four months from communicating the grounds of decision by the Registrar of Trade Marks and as such it is well within time. 
 
On locus standi of the appellant, we hold that if a person whether juristic or natural, is aggrieved by a decision of the Registrar of Trade Marks, can prefer an appeal in spite of being not a party in the original proceeding. A person aggrieved is never prohibited to present an appeal against a decision of the Registrar, Trade Marks by any provision neither in the Civil Procedure Code nor in the Trade Marks Act or the Rules made thereunder.
 
If we consider the impugned decision on merit, it is very difficult to defend the same as it is. Admittedly the application for withdrawal of the original application for registration of trade mark was allowed with consent of the opponents. When the application was withdrawn, the opposition case connected thereto became infructuous. Therefore the question of accepting an infructuous opposition case affecting the interest of the appellant does not arise and in that view of the matter, we hold the impugned order, so far it relates to acceptance of the opposition case, is illegal.
 
As a result the appeal is allowed and the impugned order dated 12.7.2005 passed by the Registrar of Trade Marks, Dhaka in Opposition Case No.2131 of 2003, so far it relates to acceptance of the said opposition case is set aside. But if the appellant files any fresh application for registration of the trade mark, respondent No.2 will be entitled to file opposition case in opposition thereto. 
 
        Let a copy of the judgment be communicated and the record be sent back to the Registrar of Trade Marks, Dhaka immediately.   
 
         Ed.