Raghbir Singh, Vice Chairman - (1.) APPLICATION No. 669136 B for registration of trade mark 'SUNERGY' was made to the Registrar of Trade Marks. The Registrar of Trade Marks vide his order dated 20.2.2004 has ordered that by reason of operation of sub-rule (2) of rule 50 of the Trade Marks Rules, 2002, the opposition in the above case is deemed to have been abandoned and as such the mark shall proceed for registration under section 21 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The appellant being opponent in the above matter have given a list containing large number of marks which mentions that they are the registered proprietors of many trade marks which are similar to the impugned mark. Goods of the appellants bearing the mark 'SUN' have been used and sold in India for many decades, even prior to 1910. The mark 'SUN' with reference to goods falling in class 3 have been exclusively associated with the goods of the appellant worldwide and in India.
(2.) According to the appellant, the application No.669136B filed by first respondent for registration of the impugned mark 'SUNERGY' in class 3 was advertised in the Trade Marks Journal No.1241(s) dated 21.2.2001. The appellant filed opposition vide TM-5 dated 24.5.2001 on various grounds relying on its prior registration, use and status as a well-known mark. First respondent filed their counter statement vide TM-6 dated 14.10.2002. The counter statement filed by first respondent was forwarded to the appellant, which was received by them on 16.12.2002. The appellant was thereby called upon to file evidence in support of opposition. Appellant filed request in form TM-56 dated 10.2.2003 seeking extension of time of two months till 16.4.2003. First respondent through their counsel sent a letter dated 25.3.2003 which was received by the appellant on 31.3.2003 stating that it was negotiating with Unilever. The appellant has submitted that since the parties were corresponding to settle the proceedings amicably, the appellant filed for extension of time for filing evidence in support of opposition. Since first respondent had shown keen interest to settle the opposition proceedings amicably, the appellant could not finalise evidence in support of opposition. Appellant accordingly filed TM-56 seeking time till 16.4.2004 vide TM-56 dated 10.2.2004. Thence thereafter the Assistant Registrar issued order dated 20.2.2004 which was received by the appellant on 4.3.2004. The appellant has made submissions that the restrictions prescribed under Rule 50 to grant extension of time for only one month in the aggregate is directory and not mandatory. Section 131 clearly confers powers on the Registrar to grant extension of time not being a time specially provided in the Act. Since there is no bar under the Act for providing for extension of time, the Registrar can grant extension of time. Therefore, rule 50(1) and (2) are directory and not mandatory. The appellant has a very good case in the present opposition proceedings. It is a registered proprietor of the mark 'SUN' and various other marks containing the mark 'SUN'. The appellant has been diligent in conduct of proceedings. In conclusion, the appellant submitted that the impugned order dated 20.2.2004 may be recalled and set aside and the appellant may be allowed to file evidence in support of opposition under Rule 50 . The appellant also filed M.P. 123/04 on the same lines as mentioned in OA/114/2004 and sought ad-interim injunction against the second respondent from issuing registration certificate under the impugned application.
(3.) IN the counter statement filed by the first respondent on 20.1.2005 they have controverted the submissions of the appellant. They have submitted that first respondent is the registered proprietor of many marks having prefix 'SUN' in INdia. IN view of the submissions made by them in the counter statement, they have submitted that the appeal of the appellant may be dismissed.;