Indian Trade Marks Act - Extension of time to lead evidence

In the past during the time when Trade and Merchandise Marks 1956 was in force, an opponent or / and an applicant could lead evidence as and when they desired. In other words the Registrar of Trade marks never imposed any condition to the grant of extension. The Result- the time period of deciding the opposition period was anywhere between 4 to 5 years and this is a conservative estimate.

With the passage of new Trade Marks Act of 1999 wef September 15, 2003, the time period to lead evidence was reduced to two months extendible at the most by one month calculated from the date of from the service of the notice of opposition or the services of evidence by the opponent on the applicant. Therefore maximum time of three months has been given to the opponent and applicant to lead their respective evidences in support of their submissions.

The immediate effect of this limitation to lead evidence was that the opposition proceedings have started to move faster and more and more oppositions have been appointed for final hearing in the past 3 years. Therefore it does seem that the limitation has its desired effect and of course the eagerness of lawyers and the Registrars to finish the matter has been contributory in the progress.

While this is a welcome change, there appears to one lacuna in the Trade Marks Act pertaining to seeking extension for the additional one month. The Section reads that the request for extension for a period of one month has to be filed “before” the expiry of two months.

This has led to several heartburns and problems as the lawyers depending upon which sides they are take up the plea for and against the grant of extension. Essentially the argument boils to that of Statute vs. the classic trilogy of justice, equity and good conscience.

From the point of view of statute, which if read as it is, clearly bars the filing of the evidence or refusal of the grant of extension by the Registrar. At the same time we cannot ignore the fact that if it is possible to decide a matter on merits and if the Act provides reasonable limits, then justice, equity and good conscience must prevail.

Accordingly I would say that the extension must be allowed even if the request for extension has been filed subsequent to two months. In fact to this extent the Trade Marks Act, gives discretionary powers to the Registrar whereby if the Registrar feels that a matter deserves to be granted extension then the same can be allowed.

End of the day one has to see if the Statute is meting out justice in the correct form, not by strictly following letters without the spirit. Harmonious construction of the Section is required and not strict interpretation to enjoy the benefit of the Act in letter and spirit

While this debate carries on, to draw parallel one requires to see how the Courts and Appellate Board have been treating the concept of leading evidence, even beyond the statutory three months period.

Once again strictly going by the book, the Trade Marks Act in India does not allow for an extension beyond 3 months.

At the same time in the interest of justice, equity and good conscience the Registrar should generally allows the evidence filed subsequent to the due date.

Here attention is drawn to a recent case of Asian Paints Limited v. Registrar of Trade Marks 2005(30) PTC 444 (IPAB), wherein in an appeal before the Intellectual Property Appellate Board it has been held that the Registrar enjoys the powers to extend the time for filing evidence even beyond the three month stipulated deadline.

In this interesting case it was held that the filing of evidence under the new Trade Marks Act has undergone changes of fundamental character. However the settled proposition of law is that the provisions of subordinate legislation have to be in conformity with provisions of principal legislation. It was also held that the society has vital interest in maintaining the purity of Register and for that matter should get to know the grounds for claiming the registration of the mark.

The decision in this case flowed from previous precedents and more importantly from the full Bench Judgment of Hastimal Jain v. Registrar of Trade Marks 2000 PTC 24 Del. In this judgment the court held that the extension-providing Rule in Trade Marks Act is directory, not mandatory. Therefore a direct interpretation of this is that the Registrar of Trade Marks is not under a mandate to deem the opposition as abandoned. In suitable cases, the Registrar can grant of extension for filing evidence in opposition.

From the above discussion, therefore it appears that grant of extension are directory and not mandatory. In those cases which merit extension, the extension should be given even if the request for extension is time barred.

The above decisions, I would say, are very good decisions as they take into account the not only the letter but also the spirit of law. After all what is the point of providing provisions for extensions in the system and then not allow because of a mere delay. A request for extension should be allowed to be filed at any time and such a request should be allowed as long as it is within the maximum period prescribed by the Act.

Of course there will be cases where extension are sought after the expiry of maximum limitation as prescribed, but these can be addressed upon the merits of each case and Registrar’s discretionary powers would also come in fore.

After all the decision of the opposition would effect the fate of a business and we do not want that due to technical reasons, a business comes to standstill. While malpractices have to discouraged, a reasonable explanation for filing an extension or a request for extension should be entertained.

In this backdrop I have following suggestions-

1. Request for extension should be duly supported with plausible explanation;
2. The Registrar has to use his discretion not in a technical manner, but in the manner that is consistent with principles of justice, equity and good conscience
3. Lawyers need to calm down and not make a fuss about the technical ground, which drags the matter even further
4. One of the places where an amendment is required in The Trade Marks, 1999 is the area of extensions.

Therefore for me justice, equity and good conscience prevails over the statute.

Vaibhav Vutts
Copyright 2006
These are the views of the author and are not to be taken as legal advice.