S. 2. Amendment of Section 11. –
In section 11 of the Trade Marks Act, 1999 (47 of 1999) (hereinafter referred to as the principal Act), in the Explanations, for clause (a), the following clause shall be substituted, namely:—
“(a) a registered trade mark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks.”.
Section 11 of the Act Contains “Relative grounds for refusal of registration”. The explanation below sub-section (4) defines the expression “earlier trade mark” as follows:
“(a) a registered trade mark or convention application referred to in section 155 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks:
(b) a trade mark which, on the date of the applications for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trade mark.”
The amendment made in clause (a) seeks to widen the scope of “earlier trade mark” to include “an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E”, besides what is already stipulated in clause (a).
The inclusion of the expression “an international registration referred to in section 36E” is consequential to the insertion of the new section 36E. Similarly the insertion of the word “an application under section 18 bearing an earlier date of filing” which did not exist in the present Act, removes any ambiguity or uncertainty whether the term “earlier trade mark” should include only a registered trade mark or should also include a pending application already made and bearing an earlier date of filing.
S. 3. Amendment of Section 21.—In section 21 of the principal Act, for sub-section (1), the following sub-section shall be substituted, namely: —
“(1) Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.”.
Under the Trade and Merchandise Marks Act, 1958 and in the present Act, a notice opposition must be given within 3 months from the date of advertisement or re-advertisement, of the application in the Trade Mark Journal or within such further period not exceeding 1 month in the aggregate as the Registrar, on application made to him may allow. While the intention of the Government and the Legislature was that the request for extension of time beyond 3 months must be made to the Registrar before the expiry of 3 months from the date of advertisement or re-advertisement of the application for registration in the Journal, the judicial interpretation was that the Registrar had power to extend time even where the request is filed after the expiry of 3 months.
In Sardar Gurudas Singh Bedi v. Union of India, (2=2006 (33) PTC 321, page 326 (Bom—DB).) the Bombay High Court held as follows;
“If Rule 47(6) as it now stands has to be accepted, then it confers power to extend time only if the application is made before the expiry of period of three months. Such a rule will be clearly ultra vires Section 21(1) of the Ct of 1999. It is also not possible to read down rule 47(6) so to make the rule intra vires section 21. Nothing also has been brought before us to point out any mischief that was being occasioned and which mischief was required to be remedied. In the Act of 1940, Section 15(2), did not set out the period, but left it to the rule making authority. The Rule making authority provided a period of four months to file opposition. Under the Act of 1958, the period was fixed by the Legislature itself, though the delegate made rules in an exercise of subordinate legislation. The same is the position in the Cat of 1999. In these circumstances, we are clearly of the view that Rule 47(6) is clearly ultra vires of Section 21 of the Act and consequently will have to be struck down as null and void.”
The provisions of Rule 47(6) having been struck down by the Court, the request on Form TM-44 for extention of time could be filed any time after the expiry of the 3 months period. In The Circumstances the Government decided to remove the discretion of the Registrar to extend the time for filling of notice of opposition in respect of published application and provide a uniform time limit of 4 months in all cases. This is given effect to in the amendment made to section 21(1) of the Act. The other requirements in connection with the filing of opposition remain unchanged.