S. Usha, Vice - Chairman - (1.) APPEAL arising out of the order dated 02.04.2008 treating the opposition as abandoned under sub - rule (2) of Rule 50 the Trade Mark Rules, 2002 (hereinafter referred to as the rules) and allowing the application No. 1268858 in class 45 to proceed to registration.
(2.) THE first Respondent herein had filed an application for registration of the trade mark 'LUTIVIT' in class 5 claiming user as proposed to be used mark on 25.02.2004 under application No. 1268858. The said application was advertised in the Trade Marks Journal No. 1327 -S (3) at page 696 on 17.1.2005. The said application was opposed by the Appellant herein under opposition No. MAS -197921. On 26.03.2007 the Appellant received a communication from the Trade Marks Registry along with the counter statement and was directed to file their affidavit of evidence in support of opposition within a period of two months. On 25.05.2007, the Appellant herein filed a request on form TM -56 for extension of time and also made it clear in their letter that the time be extended for a period of one month and in case they were unable to file evidence on or before 26.06.2007, they wish to rely on the facts stated in the notice of opposition. A copy of the letter was also marked to the first Respondent herein. The first Respondent had not filed their affidavit of evidence in support of their application thereafter. The Appellant on 08.01.2008 filed their affidavit of evidence in support of their opposition along with an interlocutory petition praying that the evidence be taken on record. The first Respondent was also given an opportunity to file their reply to the interlocutory petition but the first Respondent did not file their reply to the interlocutory petition. The matter was subsequently set down for hearing on 19.03.2008. The Assistant Registrar of Trade Marks heard both the counsel and passed the impugned order stating since the interlocutory petition was filed beyond the time, i.e. extended time of three months under Rule 50(2) of the Rules, the opposition was treated as abandoned and the application to proceed for registration. Aggrieved by the said order the Appellants are here before us on appeal. The main grounds of appeal as under: i. The impugned order is contrary to law and orders of this Hon'ble Board and is liable to be set aside. ii. The second Respondent erred in not taking on record the fact that the Form TM -56 also consisted of the statement intimating the first Respondent that in case of inability to file evidence within the stipulated time, the Appellant would rely on the notice of opposition. iii. The second Respondent erred in not directing the first Respondent to file its evidence in support of application. iv. The impugned order is bad, as the interlocutory petition filed by the Appellant should have been construed as filed under Rule 53 of the Rules. v. The impugned order is bad as no reasons have been assigned. vi. The impugned order is bad as the provisions of Rule 50(2) of the rules has been held to be directory. vii. The impugned order is bad as giving harmonious constrution of rules 56(1) and 56(4) of the Rules and Section 19 of the Trade Marks Act, 1999. viii. The second Respondent erred in not taking into account the prior adoption of Appellant's mark 'LUTAVIT' under registration No. 353087. ix. The second Respondent grossly erred in not allowing the impugned trade mark application. x. The second Respondent failed to take note that the first Respondent had not filed documentary evidence to establish honesty and bonafide in adoption of the mark 'LUTIVIT.'
(3.) THE first Respondent filed their counter -statement stating various averments made in the grounds of appeal. The first Respondent stated that they are the proprietors of the trade mark LUTIVIT under Section 18(1) of the Act. Their trade mark LUTIVIT had acquired substantial reputation and good will through extensive use. Their sales figure and sales promotion expenses would prove the same. As a result of continuous and extensive use since 2004, their mark enjoyes a good reputation and goodwill in the market and had acquired the status of a well -known mark. The Appellant approached this Board only to drag on the registration of the trade mark and the appeal therefore be dismissed with costs.;