Raghbir Singh, Vice Chairman - (1.) APPLICATION No. 401657 was filed by the appellant/applicant hereinabove on 18th February, 1983 to register the trade mark 'PREMIER' word per se in respect of "grinders, mixies and mixing machines for kitchen use, kitchen machines, parts thereof and fittings therefor being goods included in class 7". In due course the said application was published in the trade mark journal No. 1108 dated 1st August, 1995 at page 1384.
(2.) Respondent No. 2 herein have filed an opposition on 30th August, 1995 opposing the registration of the appellant's application for trade mark on various grounds being opposition No. MAS 3344. The said opposition was taken on record as having been filed within the time. During the pendency of the aforesaid opposition, the trade mark applied for by the said appellant was inadvertently registered and certificate of registration was issued to the appellant. On discovery of this error, a notice was issued by the Trade Marks Registry on 23rd March, 2000 asking the appellant to show cause as to why the register of trade marks be not rectified in accordance with the provisions of Sub-section (4) of Section 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellant submitted their reply and requested for a hearing. Accordingly, a hearing was held on 23.6.2000 before passing the final orders in the matter on 13th December, 2000. The learned counsel for the applicant submitted that since the said application has already been registered in accordance with the provisions of the Act and that the mark has been on the register for more than seven years hence its validity in all respects is conclusive in terms of Section 32 of the Act. The applicant's counsel claimed before the Deputy Registrar that Section 56(4) does not provide for issuance of notice by which the Registrar has proposed to remove the entry in respect of registration of their mark from the register. He also added that the violation of Section 23 cannot be the ground of rectification under Section 56(4). The rectification under Section 56(4) can only be done on the grounds which have been specified in Sub-sections (1) and (2) of Section 56 of the Act. The applicant's counsel had further contended that they have already acquired valuable property which is intangible being the registered trade mark giving a conclusive tight to use the same. They have initiated criminal proceedings against various infringers on the basis of their registration. The learned Deputy Registrar held that the registration of the impugned mark was in violation of Section 23(1)(b) of the Act because the opposition of the application in respect of impugned trade mark was still pending before the Trade Mark Registrar and on discovery of that error the Trade Mark Registrar had given notice to the appellant/applicant under Section 56(4) of the Act calling upon them to show cause as to why the entry of the mark on the register of trade mark be not removed from the register. Section 32 of the Act provides that registration of the trade mark in Part A of the register shall be valid in all respects after the expiry of seven years period from the date of such registration so long either of the three contingencies as provided thereunder are not present. Provisions of that section are applicable to all legal proceedings relating to a trade mark registered in Part A of the register including applications under Section 56 of the Act. Suo-moto proceedings by the Tribunal under Section 56(4) of the Act for rectification of the register are excluded from the purview of Section 32 of the Act. Removal of a mark under Section 56(4) on account of pendency of an opposition thereto does not cause any prejudice to the applicant. If at all, it may cause prejudice to me opponents who have filed an opposition well within the time. Since the opposition has not been decided on merits in favour of the said applicants, the proceedings had hot rightfully come to an end and, therefore, entry relating to registration applied for cannot be said to have been correctly made under Section 23(2) of the Act as it was made through an error despite the pendency of the notice of opposition. The Deputy Registrar in exercise of his powers under Section 56(4) directed for the rectification of the register of trade marks by removing therefrom the entry relating to registered trade mark No. 401657B in class 7 as the said entry was made without sufficient cause and wrongly remains on the register under the provisions of Section 56(2) of the Act. He directed that the applicants may file a counter statement according to the provisions of Section 21(2) of the Act and further ordered that the applicants shall return the registration certificate bearing No. 213670 dated 15th May, 1998 to the Trade Marks Registry immediately.
(3.) THE present appeal is against the order of the Deputy Registrar dated 13th December, 2000, which was heard by the IPAB on 29th December, 2003. At the hearing Shri R. Yashod Varadhan, Advocate, appeared for the appellant. Shri R. Yashod Varadhan's submission at the hearing was on the same line made earlier before the Deputy Registrar and submitted that Section 56(4) is not applicable in the present case. He further submitted that notice under Section 56(4) was issued after a period of seven years. He also submitted that the appellant was not aware of the filing of the opposition to their application by the respondents. Shri Venkatanarasimhan, the learned counsel for the respondent submitted that the Deputy Registrar had correctly decided the case. He submitted that the applicant was aware of the fact that the notice of opposition has been filed by the opponent as can be seen from the letter of the Trade Marks Registry dated 27.9.1995 sent to them. He submitted that the opponent had filed a notice of opposition to the registration of the applicant's trade mark application well within the time prescribed and the applicant's mark should not have been registered without disposing of their opposition. He referred to Section 23(b) of the Act and submitted that the registration of the applicant's mark is through an error and hence notice under Section 56(4) is valid and correct. He also submitted that Section 32 has no bearing as the registration of the applicant's mark is done through an error. He submitted that the purity of the Register has to be maintained and there would be no remedy for the opponent if their opposition is not heard and decided.;