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Gopal Krishan v. M/S Mex Switchgear (P) Ltd. & Anr. .
Factual and Procedural Background
The appellant filed an application on April 19, 1982 before the Registrar of Trade Marks for registration of the mark "MAX STANDARD" in Class 11 for electric switch gears and other electrical goods, claiming use from January 1, 1982. After scrutiny under Rule 38 of the Trade & Merchandise Marks Rules, 1959, the application was accepted. Subsequently, on January 23, 1986, the appellant sought to amend the application by restricting the goods to electric switch gears, changing the class from 11 to 9, and altering the date of user to January 1, 1979.
The amended application was advertised on November 1, 1988, and the respondent filed an opposition. The appellant replied on August 23, 1989, but an order dated October 18, 1989 declared the application abandoned, allegedly ignoring the appellant's reply. The appellant filed a review application on October 28, 1989. Meanwhile, the respondent filed an interlocutory application alleging that the appellant acted with knowledge of the respondent’s registered mark "MEX" in Class 9 and deliberately sought registration under Class 11 to gain acceptance improperly.
In March 1991, the Deputy Registrar of Trade Marks allowed the respondent’s interlocutory application, withdrew acceptance of the appellant’s application, and closed the opposition filed by the respondent. The review petition was also rejected. The Deputy Registrar held that the amendment sought substantially altered the original application, which was impermissible under law.
The appellant challenged this decision by filing an appeal under section 109(5) of the Trade & Merchandise Marks Act, 1958. The Single Judge upheld the Deputy Registrar’s decision but directed the appellant to file a fresh application, noting that a fresh search should have been conducted for the amended application.
Legal Issues Presented
- Whether an amendment to a trademark registration application that changes the class of goods and the date of user is permissible under the Trade & Merchandise Marks Act, 1958 and the Trade & Merchandise Marks Rules, 1959.
- Whether the appellant’s application could be treated as continuing with the original filing date after such an amendment.
- Whether the appellant was entitled to the benefit of seniority and conclusive validity period under Section 92 of the Act if a fresh application was required.
Arguments of the Parties
Appellant's Arguments
- The appellant contended that the amendment relates back to the original application date of April 19, 1982, thus preserving seniority in registration.
- It was argued that registration granted after amendment would be deemed effective from the original filing date, benefiting the appellant in terms of the seven-year conclusive validity period under Section 92 of the Act.
- The appellant challenged the requirement to file a fresh application, asserting that it would lose the benefit of seniority and the conclusive period would not commence.
Respondent's Arguments
- The respondent alleged that the appellant knowingly filed an application under Class 11 despite being aware of the respondent’s registered mark in Class 9, thereby obtaining acceptance improperly.
- The respondent contended that the amendment sought by the appellant substantially altered the original application, which was impermissible and amounted to filing a new application under a different class.
- The respondent prayed for dismissal of the appellant’s amended application and supported the withdrawal of acceptance by the Deputy Registrar.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Order VI Rule 17 of the Code of Civil Procedure | Principle that an amendment cannot change the character of the original application to create a new one. | The Court applied this analogy to hold that the appellant's amendment effectively amounted to filing a new application, which is impermissible. |
| Rule 26 of the Trade & Merchandise Marks Rules, 1959 | Requirement that an application must be confined to one class, and applications for the same mark in different classes are separate and distinct. | The Court held that the appellant could not amend the application to change the class from 11 to 9, as separate applications must be filed for different classes. |
| Rule 38 of the Trade & Merchandise Marks Rules, 1959 | Procedure for scrutiny and search before acceptance of an application. | The Court emphasized that acceptance under one class cannot be amended to another class without a fresh search and application. |
Court's Reasoning and Analysis
The Court analyzed the provisions of Rule 26 and Rule 38 of the Trade & Merchandise Marks Rules, 1959, emphasizing that each application for registration must be confined to one class and that separate applications are required for different classes. The acceptance of the original application was based on a search and scrutiny limited to Class 11 goods. Allowing the appellant to amend the application to Class 9 would circumvent the mandatory search and acceptance procedure applicable to that class and would effectively create a new application under the guise of amendment.
The Court reasoned that the amendment sought to change the class and the date of user, which substantially altered the original application. Applying the analogy of Order VI Rule 17 of the Code of Civil Procedure, the Court held that such an amendment is impermissible as it changes the character of the original application to a new one.
The Court acknowledged that while Section 22 of the Act permits amendments, it does not authorize amendments that result in a change of class. Any mistake involving multiple classes could only be rectified prior to the search by deleting one class to comply with Rule 26. The Deputy Registrar’s decision to withdraw acceptance and close the opposition was found to be correct.
The Single Judge’s direction that the appellant file a fresh application was affirmed, recognizing that a fresh search should have been conducted for the amended application. The Court concluded that the appellant’s desired amendment was not permissible under the law.
Holding and Implications
The Court DISMISSED the appeal with costs.
The direct effect of this decision is that the appellant is required to file a fresh application for registration under Class 9, losing the benefit of seniority claimed from the original application date. The Court clarified that amendments which change the class of goods in a trademark application are impermissible and that separate applications must be filed for different classes. No new precedent beyond the application of existing rules and procedural principles was established.
1. This is an appeal filed under section 109(5) of the trade & marchandise marks act, 1958 (hereinafter called the ‘said Act’.) wherein the appellant has challenged the correctness of the order of a Single Judge of this Court dated November 4, 1991 who, in turn, has upheld the decision of the Deputy Registrar of Trade Marks withdrawing the acceptance of the application which had been filed by the appellant.
2. Briefly stated the facts are that on April 19, 1982 the appellant filed before the Registrar of Trade Marks an application for the registration of his mark. T???e application was in respect of electric switch gears and other electrical goods. The application was filed for registration under Class 11 of the 4th schedule to the Trade & Me???chanbise Marks Rules, 1959, (hereinafter called as the Rules). In the application the user was claimed of the mark ‘MAX STANDARD’ with effect from January 1, 1982.
3. It appears that after scrutiny had been conducted in accordance with the provisions of Rule 38 of the said Rules the said application was accepted. Thereafter on January 23, 1986, the appellant filed an application seeking amendment of the earlier application dated April 19, 1982. The amendment which was sought was that the description of goods, for which the registration was sought was confined to electric switch apears.” In addition thereto the amendment application sought to change the class from 11 to 9. The date of user was also proposed to be changed from January 1, 1982 to January 1, 1979. The next relevant circumstance is that the amended application for registration filed by the appelant was advertised in the Trade Marks Journal on November 1, 1988 and to that application, opposition was filed by the rsspondent herein. On August 23, 1989 the appellant herein tiled a reply to the opposition. It is alleged by the appellant that by ignoring this reply an order was passed on October 18, 1989 by the Trade Marks Authority to the effect that the application for registration had been abandoned by the appellant herein. Soon thereafter on October 28, 1989 an application in TM-57 for the revew of the order dated October 18, 1989 was filed by the appellant. Pending hearing of the review application the respondent herein filed an application, from which the present proceedings arise, in which it was, inter alia, contended that the appellant herein had not come before the Trade Marks Authority with clean hands. It was alleged that the appellant herein khow that the respondent was owner of the registered trade marks ‘MEX’ in Class 9 and thereafter the appellant deliberately filed an application for registration under class 11 and thereby got an order of the acceptence of the application for advertisement. The prayer made in the interlocutory application filed by the respondent was that the application No. 383954 which had originally been filed by the appellant on April 19, 1982 and which was later on amended should be dismissed. Reply was filed to the said application and on March 1991, the Deputy Registrar of Trade Marks allowed the said interlocutory application of the respondent. He withdrew the acceptence of the applicant's application and further ordered that the opposition which had been filed by the respondent shall be treated as closed. The review petition was also rejected. In coming to this conclusion the Deputy Registrar observed that by the said amendment the appellant had sought to substantially alter the earlier application and the same was not permissible under law.
4. This decision was challenged by filing an appeal in this court. Mahinder Narain. J, vide this order dated November 4, 1991, observed that in view of Rule 38 of the Rules there should have been a fresh search in connection with the application for amendment which ought to have been treated as an amended application but then directed that in veiw of the peculiar circumstances of the case appellant herein should file a fresh application for registration of trade mark.
5. The contention of the appellant is that if a fresh application for registration is filed it will not get the benefit of seniority in the date of application for registration. The submission is that registration so granted relates back to the date of the application. The initial application was filed on April 19, 1982 and the amendment was sought on January 24, 1986. It was contended that the same relates back to April 19, 1982 and when registration is granted in Class 9 of the 4th schedule the effect of this would be that the trade mark of the appellent herein would be regarded as having been registered with effect from April 19, 1982. The significant advantage of this for the appellant would be, it was contended, that the period of seven years for the purposes of conelusiveness as to the validity of the registration as contempleted by the Section 92 of the said Act would expire on April 19, 1989, but if a fresh application is fifed, this period of seven years would not even have commenced.
6. It is, no doubt, true that under Section 22 of the said Act the Registrar may, on such terms as he thinks just, permit the correction of any error in or in connection with the application or permit an amendment of the application. The question which however, arises for consideration is that even assuming the power to grant amendment is there, can such a power be exercised which has the result of permitting an applicant to amend his application resulting in change of Class in which he is seeking registration.
7. In order to find an answer to the aforesaid query it is necessary to refer some of the Rules regarding the filing of the application and the procedure for registration thereof.
8. The most important rule in this behalf is Rule 26. The same reads as follows:
“26”. Application to be confined to one class, etc. (1) Every application for the registration of a trade mark Shall be in respect of goods comprised in one class only of the Fourth Schedule.
(2) In the case of an application for registration in respect of all the goods included in a class or of a large variety of goods in a class, the Registrar may refuse to accept the application unless he is satisfied that the specification is justified by the use of the mark which the applicant has made or intends to make if and when it is registered.
(3) Applications for the registration of the same trade mark in different classes shall be treated as separate and distinct applications and in all class where a trade mark is registered under the same official number for goods in more than one class, whether on conversion of the specification under rule 105 or otherwise, the registration in respect of the goods included in each separate class shall be deemed to be a separate registration for all the purposes of the act.”
9. A perusal of the said rule would show that if one type of ‘goods’ is sought to be registered in more than one class then separate applications have to be filed. Subrule (3) specifically provides that each application for registration of the same trade mark in different classes shall be treated as a separate and distinct application. For each application which js filed specific fee has to be paid. After the application is filed. Rule 38 postulates a search baing carried out amongst the registered trade marks and amongst the pending applications for the purpose of ascertaining whether there is on record, in respect of the same goods or description, any similar trade mark registered or an earlier application pending. After searcn is completed, the application is accepted and thereafter is advertised and objection invited. It is obvious that a search which is conducted would relate to the class in which the goods are sought to be registered. In the present case when the application sought registration in class 11 the search was carried out in respect of the items in question undar class 11. It is only when no similar mark was found that the application was accepted and advertised. By allowing the amendment the result would have been that an entirely new application would have come into existence. If the applicant had any doubt as to under which of the classes the goods fell then the same could have been just resolved by applying for a registration both under class 11 and under class 9. All that would have cost the appellant is extra fee. If the goods fell under both the classes then registration would have been granted under both of them The Trade Marks Authority could have, on the other hand, come to the conclusion that the registration does not fall under class 11 but fall under class 9 and if otherwise the appellant was entitled to the registration the same would have been granted. In such a case it is possible that no loss of fee would have also been suffered by the appellant because of the provisions of rule 40 which contemplate the withdrawal of application for registration in a particular class if the Registrar, inter alia objects to the acceptance of the application. Be that as it may. Rule 26 read with Rule 38 leave no manner of doubt that separate applications have to be filed for registration being sought in different classes. If amendment like the present was to be allowed not only will it result in the application of appellant being considered to have been filed with effect from April 19, 1982 but by permitting the change to class 9 the appellant would also avoid paying the fee which he would have, otherwise had to pay if he had to file an independent application in respect thereto. We are informed at the Bar that the fee for an application for each of class under Rule 26 is approximately Rs. 300/- while an application for amendment requires a fee of only Rs. 20/- to be paid. While the quantum of fee may not be much but what is important is that by allowing amendment the provisions of rule 38 will also be by-passed. Ohce acceptance has been granted under class 11, then the question of amending the application can under no circumstances arise for the purpose of changing the class. This is precisely what has been alleged by the respondent in the present case and in our opinion rightly so. Applying the analogy of Order VI Rule 17 of the Code of Civil Procedure, it would appear to us that by seeking to amend the application, with a view to change the class and also the date of user, the appellant is in effect filing a new application which is nor permissible under the said provisions. In the garb of amendment the character of the earlier application is sought to be changed and a totally new application will come into existence by-passing the provisions of rule 38 and this cannot be allowed.
10. The amendment contemplated by Section 22 of the Act cannot in our opinion permit the change of class of an application w???nich is the substance of the matter. If by mistake or otherwise both classes 11 and 9 are written in application then certainly amendment could have been allowed prior to the search, allowing the applicant to delete one of the two classes so as to bring the application in conformity with the provisions of rule 26 which contemplates one application for one class. The said rule does not contemplate joinder of classes in respect of one item. Any other mistake which may occur possibly even with regard to the date of user but within the same class may be permitted to be amended. Under no circumstances can, in the garb of amendment, a new application be filed under a different class. The Deputy Registrar was, therefore, right in allowing the interlocutory application of the respondent and in withdrawing the acceptance.
11. The learned Single judge has, of course, observed that a fresh search should have been conducted in connection with the application for amendment but it appears that no arguments were addressed on the question as to whether such an amendment can at all be allowed. The learned Single Judge has rightly come to the conclusion that the petitioner should file a fresh application for registration of trade mark.
12. This direcation, in effect, means that amendment of the type sought by the appellant herein was not permissible.
13. For the aforesaid reason, this appeal is dismissed with costs.
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