My favourite topic of extensions to notice of opposition continues! Though, this time there are no conjectures and “we should” and “we should not” scenarios, rather a good decision by the Trade Marks Registry which should go a long way in settling the debate of extensions.
Recently in the case BM Birla Heart Research Centre v. Shree Rajmoti Industries, Gujarat 2007 (34) PTC 288 (Reg), the Joint Registrar of Trade Marks, Shri MH Mahendra passed an order which hits the nail on its head.
The “nail” that is being talked about is the ever-raging debate of extension for filing notice of opposition to trade mark application. More particularly, the issue is the validity of request for one month extension that the opponents file after the expiry of statutory three months, but before the expiry of four months from the publication of the trade mark in the Trade Marks Journal.
The facts of the case are very simple. An extension was filed by the opponents after three months. The question was if this extension should be taken on record. The Joint Registrar held in favour of the opponents allowing the extension. The most important aspect of this decision is, once again, that Trade Marks Rules cannot over-ride the Trade Marks Act and the intent of the legislature has to be considered. The points which touch a cord are mentioned below:
1.Procedural requirements must be construed as directory in nature and not mandatory, unless statute prescribes otherwise;
2.Use of the term “shall” in Rule 47(6) of Trade Marks Rules is not sufficient to treat the Rule as mandatory. Even though the word “shall” prima facie indicates that it is mandatory, yet the court must ascertain the real intention of the legislature by looking at the statute as a whole. The Rules cannot transcend the directory level and be considered as mandatory;
3. A bare reading of Section 21(1) and Rule 47(1) indicates that there was never the intention of the legislature to make Rule 47 (6) mandatory. In other words, harmonious constructions, is the call of the day;
4. By construing the provision strictly and inflexibly would result in barring an entire species of cases whereby bona fide proprietor of trade mark becomes aware of conflicting mark after three months of publication of the mark in the Journal, but before four months regardless of bonafide genuineness of the opponents;
5. The discretionary powers of the Registrar stand to be fettered by rigid following of the provision;
6. An interpretation of a statute cannot be detriment to the public and rather such narrow interpretation would shake judicial conscience and adversely affect the cause of the justice.
It is a breath of fresh air that this decision has come. There have been few decisions earlier which have addressed this issue, though I feel this is the best of the lot. It seems that the Registry is finally taking, albeit gradually, steps that should address this blatant discrepancy in the Trade Marks Act, 1999. The old Trade and Merchandise Marks Act may have been repealed, but the spirit cannot die and it is this spirit that requires to be invoked in the present Act. After all it makes no sense to complicate some issues that were never issues once upon a time.
