Decided on April 27,2006



Z.S. Negi, Vice-Chairman - (1.) THIS appeals have been filed by the appellant under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) challenging the order dated 12.3.2004 of the Assistant Registrar of Trade Marks, Chennai.
(2.) The predecessor company, namely, M/s. Smithkline Beecham Pharmaceuticals (India) Limited of the 1st respondent herein M/s. Pfizer Limited being successor of M/s. Smithkline Beecham Pharmaceuticals (India) Limited] filed an application No. 561479 for registration of the trade mark 'DISPECT' in respect of disinfectants in class 3. The said mark was advertised in the Trade Mark Journal No. 1235 (Supplement), dated 21.11.2000, page 17. The appellant herein, M/s Hindustan Lever Limited, filed the notice of opposition, MAS 58601 primarily on the ground that the mark sought to be registered is descriptive of the goods and is, therefore, not distinct. The appellant had raised other grounds in the notice of opposition. The appellant had given Mumbai address of its agents in the notice of opposition for service. The 1st respondent filed the counter statement refuting the material averments of the appellant and the appellant, thereafter, filed evidence in support of the opposition by way of an affidavit. Thereafter, the 1st respondent filed their evidence in support of the application for registration and the appellant filed evidence in reply by way of an affidavit. The formalities were complete. The Assistant Registrar of Trade Marks, Chennai issued notice on 3.2.2004 fixing the 10th day of March, 2004 for hearing of opposition No. MAS 58601 to application No. 561479 and also calling upon the parties to file Form TM-7 within 14 days from the receipt of the notice. The Assistant Registrar of Trade Marks on 12th day of March, 2004 passed the following Order: IT IS HEREBY ORDERED THAT the opposition No. 58601 is treated as abandoned for want of prosecution and the Application No. 561479 in class 3 shall proceed to registration; IT IS HEREBY FURTHER ORDERED THAT there shall be no order as to cost.
(3.) HENCE, this appeal on the grounds that the order of the Assistant Registrar of Trade Marks treating the opposition as abandoned and allowing the application to proceed for registration is contrary to law, the notice of hearing sent to the address which was not the address for service given by the appellant and as such does not satisfy the requirement of a properly addressed as contemplated under the Act and the Rules made thereunder, non-filing of Form TM-7 as a result of issuance of notice at a wrong address will not attract Rule 56(4) of the Trade Marks Rules, 2002 (hereinafter referred to as the said rules) and, therefore, the order of the 2nd respondent is liable to be set aside. The 1st respondent filed the counter statement refuting the statement of appeal.;

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