S. Jagadeesan, J. (Chairman) - (1.) THIS appeal arises out of the order of the Deputy Registrar of Trade Marks dated 18.1.1995. The second respondent filed application No.433839 on 13.2.1985 for registration of the numerical mark '3000' in respect of chewing tobacco included in class 34. The said mark was advertised in the Trade Marks Journal No. 969 dated 16.10.1989 at page 931. The appellant herein filed a notice of opposition on 8.1.1990 on the ground that the registration of the impugned mark is contrary to the provisions of sections 9, 11(a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act). The second respondent filed counter statement on 26.7.1991. Thereafter the appellant filed TM-56 dated 6.11.1991 for extension of time for filing evidence under Rule 53(1). But, however the appellant did not file evidence within the extended period and hence the Deputy Registrar called upon the second respondent by letter dated 16.6.1994 to file evidence under Rule 54. The second respondent filed evidence by way of an affidavit in the name of one Mr. Ram Kumar Gupta alongwith a few photostat copies of bills. On 2.9.1994 the appellant filed evidence in reply under Rule 55 alongwith an application seeking permission to file the evidence. The second respondent filed another interlocutory petition seeking the Deputy Registrar to invoke the benefit of abandonment contemplated under Rule 53(2) since the appellant failed to file his evidence in accordance with Rule 53(1). Under the impugned order the Deputy Registrar dismissed the interlocutory petition filed by the appellant and rejected his evidence. However the Deputy Registrar allowed the application filed by the second respondent and by virtue of the deeming provision he had rejected the opposition No.DEL 6586 of the appellant. Having done so, the Deputy Registrar further accepted the application of the second respondent and directed to proceed with the registration. Aggrieved by the said order the appellant filed the appeal on the file of High Court of Delhi at New Delhi in CM (M) 78/95 which was transferred to this Board by virtue of section 100 of the Trade Marks Act, 1999 and numbered as TA/318/04.
(2.) We heard the appeal during the sitting at Delhi on 15.2.2005. Learned counsel Shri Dheeraj Seth and Ms.Ritu Singh appeared on behalf of the appellant and learned counsel Shri M.R.Bhalerao appeared on behalf of the second respondent. The only contention raised by the learned counsel for the appellant is that the Deputy Registrar has proceeded to reject the opposition by dismissing the application filed by the appellant for producing the evidence on the ground that the belated evidence filed by the appellant is against the ambit and scope of Rule 53(2) and cannot be taken on record for consideration. This is clear from the last but one paragraph of the impugned order. Hence the only assumption of the Deputy Registrar is that Rule 53(2) being mandatory, the Deputy Registrar has no power to take evidence on record. Now that the full bench of High Court of Delhi in the case of Hastimal Jain trading as Oswal Industries v. Registrar of Trade Marks and Another etc., reported in 2000 PTC 24 held that Rule 53(2) is only directory and not mandatory, the matter has to be remitted back to the Deputy Registrar for fresh consideration of the application filed by the appellant seeking permission to let in evidence.
(3.) THE learned counsel for the second respondent though agreed that the full Bench of the High Court of Delhi held that Rule 53(2) is not mandatory and only directory, still contended that the appellant having filed TM-56 as early as 6.11.91 and obtained extension of time for filing evidence under Rule 53(1), he is expected to file the evidence atleast within a reasonable time, if not within the extended period. THE appellant having waited for the second respondent to file the evidence and after nearly three years of filing form TM-16 cannot be permitted to file the evidence. THE undue delay on the part of the appellant would cause hardship to the second respondent and as such the impugned order of the Deputy Registrar is correct and no interference is called for.;