“WITH GREAT POWER COMES GREAT RESPONSIBILITY” - Indulgence of Indian Trade Marks Registry for leading evidence in opposition proceedings

The current Trade Marks Act of 1999 came into force on September 15, 2003. Amongst the several changes that this Act brought about, one of the prominent features addressed was the necessity to cut down the length of opposition and rectification proceedings, at least to the extent of finishing the pleadings within a stipulated time frame.

The old Act like the new Act prescribed statutory time limits to file the notice of opposition (with 4 months) and counter statement (within 2 months). The old Act, however, did not prescribe any time limit to lead evidence in support of opposition and counter statement. Non-prescription of time limit led to the malpractice where extensions for leading evidences ran into years! Since no justification was required for seeking extension as long the requisite form TM-56 was filed. The fee was nominal (Rs. 20/-) and therefore it was not a burden for either parties to keep seeking extensions and protract the matter for long period, perhaps indefinitely.

To curb this practice, the new Act prescribed fixed time limits to lead evidence i.e. maximum three months to lead evidence in support of opposition and counter statement each. This three month period includes one month of extension, which has to be sought before the expiry of two months along with a fee of Rs. 500/-.

This brought much needed relief to parties involved in trade mark tussle. This also brought about situation, where the Trade Marks Registry started construing this three months period very strictly and parties, who had filed evidence post three months, were being refused. The attorneys on the other side also started crying for blood if evidence was filed beyond the prescribed three months. Little did these attorneys realise that someday they would be in the same boat.

Suddenly, there was need to interpret the law. The question being –

“Is the prescribed period of three months non-extendible? Or in other words does the Registrar have the powers to extend time?”

The answers to these questions have now long been decided. Probably the first case where this question was decided under the new Act was Asian Paints v. RTM 2005 (30) PTC 444 (IPAB). IPAB relied upon the full bench judgement of Hastimal Jain v. RTM 2000(24) PTC Delhi (Full Bench) and held that provisions of subordinate legislation (Trade Marks Rues, 2002) have to be in conformity with provisions of principle legislation (Trade marks Act, 1999). It has now been decided that by passage of new Act does not mean that the spirit that was imbibed in the old Act has also died. It is also now settled law that it is within the Registrar’s discretionary powers to grant extension of time to lead evidence.

The latest in line of such discretion to be applied is the disposal of interlocutory petition in opposition No. CAL-224252 between Larson & Toubro Limited v. Linear Technology Corporation. The Registrar relied upon the Asian Paints and Hastimal Jain and observed that “procedural prescriptions are the hand maid, not mistress, a lubricant, not resistant n the administration of justice…”

Merely because extensions have been granted on a regular basis, does not mean that the allowance of extension to lead evidence is a matter of right of the opponent or the applicant. It is a matter of discretion of the Registrar based upon sound reasoning not arbitrary or whimsical.

The discretionary powers the Registrar is vested with under Section 131 of the Act are vast. However, this discretion requires to be based upon sound principles of justice, equity and good conscience or as Uncle Ben tells Peter Parker (Spiderman) - “With great power, comes great responsibility”. To wield this discretionary power in cases of allowing extension to file evidence, the Registrar should consider the following points:

(a) The genuine reason and intention for seeking extension by the opponent or applicant;

(b) The conduct of the parties which requires extension beyond statutory period i.e. is the party unnecessarily delaying the leading of evidence by resorting to frivolous excuses;

(c) If the party has periodically sought extension before the time period expired;

(d) The evidence that the party desires to bring on record. There are times, when parties have brought on record evidence which could not possibly have taken more then three months to compile;

(e) The home country of the party leading evidence. A company may be based abroad and have certain laws and customs which made it impossible for the party to compile the evidence and file it within prescribed period;

(f) If the party is an applicant or the opponent. Generally, the applicant has more at stake, having filed the application and therefore consideration may be given in this regard. However, this is not a set rule and decision to this extent has to be taken into account by considering all factors in totality.

(g) Any other factor that the Registrar may deem fit to allow the extension.

These are just few points which the writer feels should be kept in mind by all the three parties-Registrar, opponent and applicant- before deciding if extension should be allowed.