Z.S. Negi, Vice-Chairman - (1.) THIS appeal under Section 91 of the Trade Marks Act, 1999 is directed against the letter dated 26.4.2005 of the Registrar though Examiner of Trade Marks issued in pursuance of Section 21(3) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) by which a copy of counter-statement was sent to the appellant inviting his attention to the requirements of the provisions of Rule 53 of the Trade and Merchandise Marks Rules, 1959 (hereinafter referred to as the Rules). The appellant has filed, along with the appeal, two Miscellaneous Petition Nos. 64/2005 and 65/2005, respectively, for stay of further proceeding in relation to registration of application No. 740382 during the pendency of the appeal and for listing of the appeal for hearing at Delhi. During the pendency of the appeal, the appellant has also filed Miscellaneous Petition Nos. 44/2006 and 104/2006, respectively, for taking certain additional facts and documents on record and for deciding the matter early and to dismiss the pending application No. 740382 of the respondent for registration of trade mark.
(2.) The facts in brief for our present purpose as gathered from the appeal records are that the appellant is the sole proprietor of Bharat Auto Products and has on 5.5.1993 applied for registration of trade mark BEW under application No. 596305 in class-12 in respect of Hubs and Brake drums for trucks and buses, tractors and trailors and animal driven vehicles, clutch housing and gear housing for trucks, buses and tractors, chassis parts, helper bracket, hanger shackles, etc. and the said application is pending. Shri Prashant Sharma in the capacity of a partner of the B.E.W. AUTO PARTS has on 7.5.1997 filed application No. 740382 for registration of trade mark BEW in class-12 in respect of almost similar goods as that of the appellant's but later on he, as the proprietor of the firm, filed Form TM-16 dated 2.11.2000 for conversion of the said application into proprietorship firm's application. However, the trade mark BEW (label per se) was advertised, before acceptance under proviso to Section 20(1) of the Act, in the Trade Marks Journal No. MEGA 4 dated 25.10.2003 in the names of S/Shri Prashant Sharma and Bharat Sharma but subsequently the said advertisement was cancelled and the cancellation notification published in the Trade Marks Journal No. 1311 dated 16.1.2004. The appellant filed an application on 25.8.2003 under Rules 38, 39, 41 and 44 of the Rules and his opposition dated 4.3.2005 to the application No. 740382 and thereafter the respondent No. 2 filed his counter-statement dated 18.9.2004. Thereafter, the Registrar of Trade Marks by his office letter No. TOP/150 dated 26.4.2005 has sent a copy of counter-statement to the opposition No. 166554 to the appellant inviting his attention to the requirements of Rule 53 of the Rules. This appeal is against the said letter of the Registrar. The appeal and miscellaneous petitions came up before us for hearing on 18.9.2007 when Shri Prashant Sharma, Advocate appeared for the appellant and Shri H.L. Verma, Advocate appeared for the respondent No. 2. After the arguments were concluded, the learned Counsel for the appellant was permitted to file written submissions with a condition that a copy of written submission should be sent to the opposite side to enable them to submit reply, if any, thereto.
(3.) SHRI Sharma, learned Counsel for the appellant submitted that the application for registration was filed by SHRI Prashant Sharma in the capacity of the partner of the firm and the application was advertised in the Trade Marks Journal dated 25.10.2003; the said advertisement dated 25.10.2003 was cancelled and notification treating the advertisement cancelled was published in the Trade Marks Journal No. 1311 dated 16.1.2004 but thereafter the application was never advertised again by the Registrar of Trade Marks. It is amply clear that the application has not been accepted. He contended that when there is no notification in existence, there can be no opposition to application for registration or counter statement to the opposition and even if it is there, the same will be without jurisdiction. There are prescribed procedures for every stage, from filing of application for registration to the stage of its finalization, and the same are required to be followed sequentially but the Registrar is hopping at every stage of the procedure. He further contended that the Registrar of Trade Marks, without following the mandate and procedure as provided by or under the Act, is proceeding in the application No. 740382 and as such the whole action or proceeding in respect of the said application is void-ab-initio. SHRI Sharma submitted that even after direction issued by the Gwalior Bench of the Hon'ble High Court of Madhya Pradesh, the Registrar of Trade Marks is not deciding the application/objection filed by the appellant under Rules 38, 39, 41 and 44 of the Rules. The learned Counsel has stated in the written submission that the claim over the trade mark BEW has been adjudicated in the civil suit No. 46A/2005 and further in the FA No. 436/2005 and in the light of this subsequent event having taken place the application No. 740382 deserves to be dismissed out rightly. Further submission made by him is that the respondent No. 2 has filed application on Form TM-1 under the status of partnership firm, the civil suit has been filed under the status of proprietorship firm, another suit in 1999 has been filed under the status of partnership firm and again in 2005 a civil suit has been filed under the status of proprietorship firm but there exists nothing on record to show the existence of proprietorship firm BEW and that the very person as per his wishes changes the status in the judicial proceedings and that person claiming to be the proprietor of the firm is serving as Chartered Accountant in the Max New York Life Insurance Company but the Registrar is proceeding in the matter totally ignoring the procedure as prescribed under the Act.;