INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai,

Teynampet, Chennai-600018

 

 

(Circuit Bench Sitting at Delhi)

 

S.R.No. 48/2009/TM/IPAB

 

FRIDAY, THIS THE 29TH DAY OF MAY, 2009

 

 

Hon’ble Shri Z. S. Negi                                                         … Chairman

Hon’ble Shri Syed Obaidur Rahaman                             … Technical Member

 

                                                                                

 

M/s. Devans Modern Breweries Limited,                                               

Bohri Talab Tillo,     

Jammu-180 002.                                                                    … Appellant                                         

                                          

                                                     (By Advocate Shri Saurabh Kapoor)

                                                                

                                                                

                                                 Vs.

 

The Registrar of Trade Marks,

Boudhik Sampada Bhawan,

Plot No. 32, Sector - 14,                                                                           

Dwaraka, New Delhi-110 075.                                              … Respondent

                                        (By Advocate - None)

 

 

 

ORDER (No.88/09)

 

 

Hon’ble Shri Z. S. Negi, Chairman:

 

The appellant has filed the present appeal against a communication dated 15.11.2008 sent to the counsel for the appellant by the Trade Marks Registry, Mumbai, relevant portion of which read as under:-

            “With reference to your request on form TM-12 dated 1/8/08, I am directed by the Registrar of Trade Marks to inform you as under:-

            5. The renewal fee has not been paid within prescribed time and the mark, therefore, is likely to be removed.

7. The compliance of the above requirements should be made within a period of 15 days on receipt this communication for further action.”

 

2.         It is stated that the appellant filed an application dated 5.8.1994 for registration of trade mark MOODMAKER in class 33 and same was advertised in the Trade Marks Journal No. 1328 (Suppl.) dated 30.3.2005 at page 9556. As no opposition was received, the mark was eventually registered but the allegation is that the appellant was expecting to receive the registration certificate but the same is not received by the counsel for the appellant or by the appellant till now. When the Registry of the Appellate Board by notice dated 20.2.2008 called upon the counsel for the appellant to explain as to how the appeal against the communication from the Registry of Trade Marks is maintainable, the learned counsel  submitted that the order dated 15.11.2008 of the Registrar of Trade Marks is not merely a communication but the same is decision/order as required in terms of section 91 of the Trade Marks Act, 1999. By drawing the attention to clauses No. 5 and 7 of the communication, it is explained that the learned Registrar has mentioned that the renewal fee has not been paid within the prescribed time and hence the said registered trade mark of the appellant is likely to be removed and even required the appellant to comply with certain requirement failing which the said trade mark is likely to be removed. It is submitted that under the facts and circumstances of the case, the order dated 15.11.2008 is a non-reasoned order which is passed by the Registrar mechanically without considering the material on record in the right perspective.   

 

3.         In view the aforesaid explanation, the Registry placed the matter for determination of its maintainability by the Appellate Board. We have heard learned counsel for the appellant who argued on the lines of the earlier explanation furnished by them.  

 

   

4.         After having heard the counsel for the appellant and after going through the appeal, the question that emerges is whether the present appeal falls under sub-section (1) of section 91 of the Trade Marks Act, 1999 which provides that  any person aggrieved by an order or decision of the Registrar under this Act, or the rules made thereunder may prefer an appeal to the Appellate Board within three months from the date on which the order or decision sought to be appealed against is communicated to such person preferring the appeal. It is clear from the plain reading of the provision that for preferring an appeal under this provision, the person preferring an appeal must be a person aggrieved by an order or decision of the Registrar under that Act. This provision contemplates a situation for preferring an appeal, that is to say, that there must be an order or a decision. We, in the followings paras, would discuss the law propounded by the various courts with regard to the order passed or decision made under the Act and find out whether in the light of the legal propositions the present communication from the Registry of Trade Marks is an order under the said Act.

 

5.         The order or decision against which an appeal is preferred should be such which affects the rights or liabilities of the parties as has been held by the Supreme Court. The Supreme Court has, in the case of Central Bank of India Limited v. Gokal Chand, AIR 1965 SC 799,  held that an order under the Act means that it is an order which affects the rights and liabilities of the parties. The Hon’ble High Court of Delhi in Ratan and Company v. Assistant Registrar of Trade Marks, PTC (Suppl) (1) 635 (Del) had occasion to consider the meaning of the words “from any order or decision of the Registrar under this Act” which occurred in the similar appeal provision [section 109(2)] of the Trade and Merchandise Marks Act, 1958 which is repealed by the Trade Marks Act, 1999. In that case, Hon’ble Avadh Behari Rohtagi, J, has observed in paras 19 and 24 as under:-

‘19. To my mind the object of Section 109(2) of the Act is to give a right of appeal to a party aggrieved by some order which affects his right or liability. The words “from any order or decision of the Registrar under this Act” though very wide do not include interlocutory orders, which are merely procedural or processual and do not affect the rights and liabilities of the parties. The legislature could not have intended that the parties should be harassed with endless expense and delay by appeals from such procedural orders. It is open to a party to set forth the error, defect or irregularity, if any, in such an order as a ground of objection in his appeal from the final order in the main proceeding.

 

24. A decision means a concluded opinion. It is an authoritative answer to the question raised before a court. It is the settlement of controversy submitted to it. Decision implies the exercise of a judicial determination as the final and definite result of examination a question. An order granting extension of time is not of such a nature. It is not such a decision as to give the aggrieved person a right to appeal. It is just a procedural order in aid of proceedings.’

An order or decision would include an order, which does not finally decide the rights of parties and would thus cover an order in an interlocutory matter as has been held by the High Court of Rajasthan in the case of Gharib Ram Sharma v. Daulat  Ram Kashyap, (1994) 80 Com. Cases 267 (Raj).  In the case of Aqua Pump Industries & Anr. V. Deputy Registrar of Trade Marks & Anr. PTC (Suppl) (2) 727 (Mad), the appellants had preferred appeals against the communication of the Deputy Registrar of Trade Marks, communicated through the Assistant Examiner of Trade Marks stating that the Review Petition filed by the second respondent has been taken on record by the first respondent. The appellants had also preferred the appeals in respect of the communication of the Deputy Registrar of Trade Marks communicated through Assistant Examiner of Trade Marks, calling upon the appellants to submit their statements in reply to the Review Petition of the respondents, within thirty days. The main issue considered by the High Court was whether the appeal is maintainable, in the absence of any order or decision?  The High Court held as under:- 

“An appeal shall lie under Section 109(2) of the Act against the Order passed by the Registrar.

 

The Registrar’s letter calling upon the appellants to file reply would not at all amount to any order or decision and in the absence of the same, the Appeals have to fall to the ground.

 

Of course, the appellants have got every right to put forth all the contentions raised before this Court, before the Registrar of Trade Marks and they are at liberty to do so before the Registrar of Trade Marks and the same could be met by the respondents also.

 

As the letter sent by the Registrar of Trade Marks calling upon the appellants to file their statements would not at all amount to any order or decision, the appeals would not lie as against the said letter and in the said view of the matter. The appeals filed by the appellants are not at all maintainable.”

 

6.         By applying the above legal proposition, the present communication dated 15.11.2008 is not an order or decision against which appeal would lie. It is not a concluded opinion of the Registrar of Trade Marks. It also does not affect the rights and liabilities of the appellant as the appellant in the above mentioned explanation has himself admitted that the communication directs to comply with certain requirements within fifteen days failing which the said trade mark is likely to be removed. The communication is not a final order or decision, it only purports to convey that the trade mark has not been removed but likely to be removed, if the requirement is not complied with within 15 days from the receipt of the communication. The communication is issued to get the procedural requirements completed before needful is done by the Registrar of Trade Marks. The decision for removal of trade mark of the appellant for non-renewal has not yet been taken and as such the appeal is premature and not maintainable.    

 

7.         We, are of the opinion that present appeal preferred against the communication dated 15.11.2008 from the Trade Marks Registry is not maintainable.  There shall be no order as to costs.  

 

 

 

(Syed Obaidur Rahaman)                                                    (Z. S. Negi)

    Technical Member                                                             Chairman

 

psn

 

Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.