(image taken from here)
Recently, a Bombay High Court decision saw the Intellectual Property Appellate Board (IPAB) yet again being told in no uncertain terms to reconsider a decision.
Name: M/s. Agar Distributors (India) (hereinafter Petitioner) v. IPAB and M/s. Lakh Enterprises (hereinafter Respondent) [Writ Petition No.364 of 2011]
Judgment Date: April 29, 2011.
Facts: Respondent had filed an application for registration of the trademark “BRIGHT STAR”, to which Petitioner filed an opposition on the ground of pre-existing registered trademarks “5 STAR”/”FIVE STAR”, owned by the Petitioner. Subsequently, the Petitioner had filed supporting material on record as contemplated under the Trade Marks Rules 53, 54 and 55.
Later, an amendment in the Notice of Opposition was allowed, although the other details of the Petitioner’s registered trademarks and of pending Applications, were not so allowed to be submitted. This was because, it was felt that the amendment sought was pertaining to only the Trademarks Registry, which constitute a constructive notice to the general public at large and therefore no harm shall be caused to the Petitioner’s case as some of the marks so sought to be relied upon were already part of notice of opposition filed earlier in the form of Annexure.
The petition against the Petitioner was finally dismissed on the ground that the Petitioner had failed to file any evidence in support of its claim of the use of the marks “5 STAR”/”FIVE STAR” since 1976 (Respondent claimed usage since 1983). Petitioner had filed an appeal to the IPAB, which had prevented the Petitioner from filing additional evidence in support of their earlier affidavit filed in relation to the Notice of Opposition.
Issues: Whether the IPAB had been right in denying such filing of evidence by Petitioner on the ground that the same amounted to starting a new case altogether by way of adducing fresh evidence in the appellate stage.
Arguments: The Petitioner argued that the said additional evidence by way of compilation of documents had not been brought on record earlier because of the Petitioner’s bona fide belief of the sufficiency of its registered trademarks (and Registration Certificates there for) to prove its claim. This was because the details regarding registration record/documents being always with the Registrar, the Petitioner believed that such documents need not be produced.
Judgment: Under the Trade Marks Act, 1999, the IPAB is empowered to take additional documents on record as contemplated under Order 41, Rule 27 of the CPC. The High Court agreed that the Petitioner had acted under a bona fide belief by relying upon the registration certificate in respect of the registered trade mark “5 STAR” granted to them. The effect and rights of the trademark registration and prior use of the mark cannot simply be overlooked.
Moreover, given that the documents were sought to be placed on record by the Petitioner along with Notice of Opposition, but it was not permitted at that relevant time, the High Court felt that the present case was not one of new documents sought to be brought on record for the first time. The Court also criticized the IPAB for dismissing an opposition on the ground of non-availability of documents that are part of the Registry already accessible by the IPAB, terming such action as gross injustice.
Reference was made in this relation to foreign judgments such as Ladd v. Marshall [(1954) 1 WLR 1489] and Hunt Wesson Inc’s Trade Mark Appln.[ (1996) RPC 233] in relation to the factors to be considered for deciding whether or not further evidence should be admitted on appeal. The present case, in the Court’s opinion, was one where the earlier registration and pendency of the Petitioner’s application of similar trademarks are important and credible documents intrinsic to a proper adjudication of the matter.
Holding the IPAB’s decision to disallow such evidence (on grounds of no diligence and no justification) to be incorrect, the Court thus allowed the Petitioner to file such evidence.
