Ferid Allani v. Uoi Others.

Gita Mittal, J:

1. By this writ petition, the petitioner assails the communication dated 21st September, 2005 whereby the Controller of Patents and Designs omitted certain objections in the patent application of the petitioner and at the same time, informed the petitioner that the last date of putting the application in order for acceptance will expire on 21st September, 2005. Inter alia this communication is assailed on the ground that the same was received by the petitioner only on the 24th of September, 2005 and consequently, the petitioner has been deprived of an opportunity of complying with the requirements communicated in the same.

2. It has further been contended that as notified by the respondent No. 2 in the communication, it has treated the patent application of the petitioner as having been abandoned. The challenge is on the ground that the communication and the action of the respondent is patently illegal and liable to be set aside and quashed.

3. The facts giving rise to the present writ petition have to be examined upon a consideration of the scheme of the Patents Act, 1970. The statutory provisions which are also required to be examined are those which were applicable on the date of consideration of the petitioner's application.

4. The petitioner submitted an Indian Patent Application No. IN/PLT/2002/00705/DEL on the 17th of July, 2002. A request for examination of the same was submitted on 19th November, 2004 which was within a period of two years and seven months of making of the application. The respondent No. 3, that is the Examiner of the Patent and Designs, issued the first examination report on the 21st February, 2005.

5. It now becomes necessary to examine the statutory scheme which governs the undertaking of an examination of the patent application. In accordance with stipulations contained in Section 11(A) of the Patent Act, 1970 read with Rule 24 of the Patent Rules, 2003 the patent has to be published in the Gazette after expiry of 18 months from the date of filing of the patent application.

The applicant for the patent has to file a request for its examination under Section 11(B) read with Rule 24(B)(i) within 36 months from the date of the application or its date of priority or within 12 months from 1st January, 2005, whichever is earlier.

The petitioner submitted this application on the 19th November, 2004, within a period of two years and seven months of the making of the application.

6. The Examiner of Patents, respondent No. 3 has to examine the application in accordance with the provisions of section 12 of the statute and submit the examination report within three months of the date of reference of the application for examination.

In the instant case, the first examination report was issued by the respondent No. 3 on the 21st February, 2005.

7. The next step prescribed under the rules is the right of the petitioner to respond to the first examination report. Such response has to be submitted in compliance with Rule 24(B)(i) within a period of six months from the first statement of objections. Therefore, such period of six months in the instant case would have expired on or about 21st August, 2005. Putting of the application in order for grant under Section 21 includes a response to all objections raised in the examination report and also compliance with all directions made thereunder as stipulated in Rule 24(B)(4)(i).

The rules, however, have permitted that this period of six months may be extended by a further period of three months when a request is made for such extension in the manner prescribed under Rule 24 (B)(4)(ii).

8. Before the expiry of the period of sex months on the 21st August, 2005, the petitioner filed a request on 15th July, 2005 seeking extension of the period to comply with the objections and the first examination report. The extension was allowed by the respondents and the petitioner was permitted extension of one month i.e. upto 21st September, 2005 to file his reply.

9. There is no dispute that the petitioner filed his reply on the 17th September, 2005 which was three days prior to the expiry of the period of one month. The respondent has disputed that the petitioner submitted his reply on the 17th September 2005 and has contended that the same was given only on the 19th September 2005.

Be that as it may, the position admittedly is that the same was within the period as extended by the respondents.

10. However, the matter did not end here. On the 21st September, 2005, the respondent No. 3 issued a second examination report containing a second set of objections for the petitioner to respond to. Apart from pointing out the objections, the respondent No. 3 indicated that the last date for the petitioner to put the application in order for acceptance would expire on the 21st September, 2005.

11. Ms. Shwetasree, learned counsel for the petitioner has vehemently contended that this second statement of objections which was in the nature of a second examination report, was received by the petitioner only on 24th September, 2005. Consequently, it was impossible for the petitioner to respond to the objections which had been pointed out by the respondents in the communication.

12. Yet, without application of mind and without consideration of the legal principles which would apply in the instant case, it has been submitted that the respondents are treating the petitioner's patent application as abandoned without even communicating a formal order or a speaking order on the same. This action of the respondents and the communication dated 21st September, 2005 have been assailed by the petitioner before this Court in the present writ petition.

13. The issue which has been raised by the petitioner primarily arises out of on the interpretation of the expression "within the time prescribed" in Section 21 of the Patents Act with respect to the petitioner putting an application for grant of a patent, The petitioner has submitted that the Act and the rules framed thereunder are silent on the time limit after which it is to be considered that the applicant has failed to put an application in order for grant of the patent after a second or more statement of objections are issued by the patent office.

14. It is urges, that the outer limit of six months extendable by the three months period under Rule 24 (B)(i) and (ii) relates to the first examination report alone and would not control or restrict the second examination report or multiple statement of objections which are usually issued by the patent office.

15. The argument is that, in any case, the period which is prescribed under Rule 24(B)(4)(i) and (ii) is directory and cannot be mandatory nor can the same be read to the prejudice of the applicant to deprive the applicant of his substantive right of grant of the patent inasmuch as the rule concerns procedural aspects of the matter alone.

16. The action of the respondents is also assailed on grounds of violation of principles of natural justice and statutory violation inasmuch as the mandatory procedure of hearing in an application where objections have been raised as prescribed under Section 14 of the Act has been ignored.

According to the petitioner, there was no act on the part of the petitioner which could lead into a conclusion of an expressed intention on the part of the petitioner to abandon its application and consequently, the respondents have grossly erred in the manner in which they have proceeded in the instant case.

17. The writ petition has been opposed by Mr. J.P. Sengh, learned counsel for the respondents primarily on the ground that the respondents are justified in holding that there was deemed abandonment of the petitioner's application on the provisions of Section 21.

It has further been urged that the letter dated 21st September, 2005 was not complied with by the petitioner who was informed of the objections on the same date even though there was no service of the communication.

18. Having heard learned counsel for the parties at length, I find that the first issue which requires to be considered is the impact of the deemed abandonment of an application for grant of patent. The impact is prescribed inasmuch as the applicant is deprived of the valuable rights which flow in favour of any invention as are guaranteed under Section 48 of the Patents Act. Furthermore, under the statutory scheme, an appeal has been provided from any decision, order or direction made or issued under the Patents Act, 1970 by the Central Government or from any act or order of the Controller for the purposes of giving effect to any such decision, order or direction under Section 117(A). Similarly, an appeal lies to the Appellate Board from any decision, order or direction of the Controller or Central Government under Sections 15 to 19, 20, 25(4), 28, 51, 54, 57, 60, 61, 63, 66, 69(3), 78, 84(1) to 84 (5), 85, 88, 91, 92, and 94.

It is noteworthy, that no appeal is provided against an order of deemed abandonment of the application for patent which is passed under Section 21 of the statute.

19. It is apparent that by an order of deemed abandonment, substantive rights of the applicant claiming entitlement to exclusive rights for its invention are denied.

It is also necessary to examine the provisions which provide the limitation for putting an application for patent in order. Section 21 of the Patents Act requires the applicant to put an application in order for grant "within the time prescribed". The word `prescribed' is defined under Section 2(u)(c) to mean that it is prescribed by rules made under the Act.

Rule 24(B)(4)(i) and (ii) provide the period of six months extendable by a period of three months for responding to such objections as are communicated on an examination of the patent application.

Section 12 of the Act requires examination of the application and issuance of the examination report within three months of the date of reference of the application for examination.

20. The statute has provided that an applicant makes a request for examination of the application as provided under Section 11-B read with Rule 24(B)(i) which results in the first examination. No statutory provision akin to Section 12 of the Act has been also placed in the statutory scheme which enables issuance of the second examination report. Therefore, if the interpretation suggested by the respondents were to be accepted, it is apparent that the second examination report would require to be rejected. But certainly this cannot be so. Consequently, the statutory provisions require a harmonious interpretation and not such interpretation as would result in an absurdity. The second examination report which has been issued on 21st September, 2005 is also not within the three months period referred to for examination of an application under Section 12 of the statute.

The statutory scheme provides no procedure or method in which the second examination report is to be made, served, dealt with or heard by the respondents.

21. In the instant case, it is not disputed that the first examination report was issued on the 21st February, 2005 within three months of the petitioner's request which was made on 19th November, 2004.

The petitioner made a request for extension of one month to file his reply by a communication which was dated 15th July, 2005.

It is not disputed that the petitioner's reply dated 17th September, 2005 was within the period which was extended.

The respondents have relied on a second examination report dated 21st September, 2005 containing a second set of objections.

The interpretation of the statute in the manner in which it has been considered by the respondents would require it to be held that three is no provision for a second set of objections.

22. The respondents have placed reliance on the period which has been prescribed under Section 24(B)(4)(i) and (ii) which provide the period in which the applicant has to respond to the examination report and to remove the objections which have been pointed out therein.

23. It is noteworthy that the various steps which are provided under these rules relate to the procedural aspects of the matter. Section 14 of the statute is the substantive provision which provides for consideration of the report of the examiner by the Controller and reads thus:-

"14. Consideration of the report of examiner by Controller: --Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard."

24. Thus, it is the statutory mandate that when the report of the examiner received by the Collector is adverse to the applicant or requires any amendment to the application, the specification or other documents to ensure compliance with the provisions of the Act or the Rules framed thereunder, before proceeding to dispose of the application in accordance with the provisions of the statute, the Controller is required to communicate the gist of the objections and shall also afford him an opportunity of being heard.

25. It is an admitted position that no opportunity of such hearing was afforded to the petitioner either after the petitioner filed its response to the first examination report or after the second examination report. The action of the respondents therefore is rendered illegal for failure to comply with the specific statutory mandate of Section 14 of the Patents Act, 1970 and failure to abide by the principles of natural justice as statutorily envisaged.

26. It has been urged by the petitioner that the abandonment requires a conscious act on the part of the applicant which would manifest his expressed intention to abandon the application and that there can be no presumption as has been drawn by the respondents in the facts of the instant case.

27. My attention has been drawn to the observations in Browning Manufacturing Co. v. Brothers Inc. 134 USPQ 231, wherein it was observed that the question of abandonment is fundamentally a question of intent, though express or implied by action or conduct. Abandonment is never presumed.

28. Akin to the provisions in the instant statute and the impact thereof, the Code of Civil Procedure was amended to prescribe the time limit within which a written statement was required to be filed under Order 8 Rule 1 of the Code of Civil Procedure after service of summons on the defendant.

29. In a pronouncement of the Apex Court reported at (2005) 4 SCC 480 Kailash v. Nanhku & Ors., it was held that Order 8 Rule 1 is a provision contained in the Code of Civil Procedure and belongs to the domain of procedural law. It was also noticed that the language of the provision was that although it appointed time within which the written statement has to be presented and also restricts the power of the Court by employing language couched in a negative way that the extension of time appointed for filing the written statement was not to be later than 90 days from the date of service of summons. Yet, it did not itself provide for penal consequences to follow if the time schedule as laid down, is not observed.

The Court cited with approval on the celebrated works of Justice G.P. Singh in the titles "Principle of Statutory Interpretations" (9th Edition), 2004, wherein, while dealing with the mandatory and directory provisions, the learned author had observed thus:-

"The Study of numerous cases on this topic does not lead to formulation of any universal rule except this that language alone most often is not decisive, and regard must be had to the context, subject-matter and object of the statutory provision in question, in determining whether the same is mandatory or directory. In an oft-quoted passage LORD CAMPBELL said: `No universal rule can be laid down as to whether mandatory enactments shall be considered directory only or obligatory with an implied nullification for disobedience. It is the duty of Courts of justice to try to get at the real intention of the Legislature by carefully attending to the whole scope of the statute to be considered'"

"For ascertaining the real intention of the Legislature" points out SUBBARAO, J. "the Court may consider inter alia, the nature and design of the statute, and the consequences which would follow from construing it the one way or the other; the impact of other provisions whereby the necessity of complying with the provisions in question is avoided; the circumstances, namely, that the statute provides for a contingency of the non-compliance with the provisions; the fact that the non-compliance with the provisions is or is not visited by some penalty; the serious or the trivial consequences, that flow therefrom; and above all, whether the object of the legislation will be defeated or furthered". If object of the enactment will be defeated by holding the same directory, it will be construed as mandatory, whereas if by holding it mandatory serious general inconvenience will be created to innocent persons without very much furthering the object of enactment, the same will be construed as directory.:(pp. 339-340)

30. In Kailash v. Nanku (supra), the Court also relied upon the principles laid down by the Apex Court in (2002) 6 Topline Shoes Ltd. v. Corporation Bank., wherein a para materia provision contained in Section 13 of the Consumer Protection Act, 1986 had come up for consideration.

The Court observed that the strong terms in which the provision was couched were an expression of `desirability' but do not create any kind of substantive right in favour of the complainant by reason of delay to respond to the petition so as to debar the respondent from placing his version in any circumstances whatsoever.

31 The Court inter alia declared that the object of the provision under Order 8 Rule 1 was to curb the mischief of unscrupulous defendants adopting dilatory tactics. The object was to expedite the hearing and not to scruttle the same. Therefore, while the process of justice may be speeded up and hurried but the fairness which is the basic element of justice cannot be permitted to be hurried. Certain observations of the Apex Court deserve to be considered in extenso rather than paraphrased and read thus:-

28. All the rules of procedure are the handmaid of justice. The language employed by the draftsman of processual law may be liberal or stringent, but the fact remains that the object of prescribing procedure is to advance the cause of justice. In an adversarial system, no party should ordinarily be denied the opportunity of participating in the process of justice dispensation. Unless compelled by express and specific language of the Statute, the provisions of the CPC or any other procedural enactment ought not to be construed in a manner which would leave the Court helpless to meet extraordinary situations in the ends of justice. The observations made by Krishna Iyer, J. in Sushil Kumar Sen v. State of Bihar, are pertinent: (SCCp.777, paras 5-6)

"The mortality of justice at the hands of law troubles a Judge's conscience and points an angry interrogation at the law reformer.

The processual law so dominated in certain systems as to overpower substantive rights and substantial justice. The humanist rule that procedure should be the handmaid, not the mistress, of legal justice compels consideration of vesting a residuary power in judges to act ex debito justitiae where the tragic sequel otherwise would be wholly inquitable....Justice is the goal of jurisprudence ... processual, as much as substantive."

29. In The State of Punjab and Anr. v. Shamlal Murari and Anr., the Court approved in no unmistakable terms the approach of moderating into wholesome directions what is regarded as mandatory on the principle that: (SCCp.720)

"Processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. Procedural prescriptions are the handmaid and not the mistress, a lubricant, not a resistant in the administration of justice."

30. It is also to be noted that though the power of the Court under the proviso appended to Rule 1 of Order VIII is circumscribed by the words --"shall not be later than ninety days" but the consequences flowing from non-extension of time are not specifically provided though they may be read by necessary implication. Merely, because a provision of law is couched in a negative language implying mandatory character, the same is not without exceptions. The Courts, when called upon to interpret the nature of the provision, may, keeping in view the entire context in which the provision came to be enacted, hold the same to be directory though worded in the negative form."

32. Following Kailash v. Nanku (supra), the Apex Court in the pronouncement reported at (2005) 6 SCC 705, Smt. Rani Kusum v. Smt. Kanchan Devi and Ors., expanded the principles laid down thus"-

"10. All the rules of procedure are the handmaid of justice. The language employed by the draftsman of processual law may be liberal or stringent, but the fact remains that the object of prescribing procedure is to advance the cause of justice. In an adversarial system, no party should ordinarily be denied the opportunity of participating in the process of justice dispensation. Unless compelled by express and specific language of the statute, the provisions of CPC or any other procedural enactment ought not to be construed in a manner in which would leave the Court helpless to meet extraordinary situations in the ends of justice.

xxxxx xxxx xxxx

14. "Processual law is not to be a tyrant but a servant, not an obstruction but an aid to justice. Procedural prescriptions are the handmaid and not the mistress, a lubricant, not a resistant in the administration of justice.""

33. In the matter of procedural law, the Apec Court in State of Punjab and Anr. v. Shamlal Murari and Anr., AIR 1976 S.C. 1977 was pleased to observe as under:-

"We must always remember that procedural law is not to be a tyrant but a servant not an obstruction but an aid to justice. It has been wisely observed that procedural prescriptions are the hand-maid and not the mistress, a lubricant, not a resistant in the administration of justice. Where the non-compliance, the procedural, will thwart fair hearing or prejudice doing of justice to parties, the rule is mandatory. But grammar apart, if the breach can be corrected without injury to a just disposal of the case. We should not enthrone a regulatory requirement into a dominant disderatum. After all, Courts are to do justice, not to wreck this end product on technicality. Viewed in this perspective, even what is regarded as mandatory traditionally may, perhaps, have to be moderated into wholesome directions to be complied with in time or in extended time."

34. In the case of Laghu Udyog Bharati and Anr. v. Union of India and Ors., the Apex Court observed:-

"The rules, therefore, cannot be so framed which do not carry out the purpose of the chapter and cannot be in conflict with the same."

35. In Additional District Magistrate (Rev) Delhi Admn. v. Sheo Ram and Ors., the Apex Court observed as under:-

"It is a well-recognised principle of interpretation of a statute that conferment of rule-making powers by an Act does not enable the rule-making authority to make a rule which travels beyond the scope of the enabling Act or which is inconsistent therewith or repugnant thereto. Form the above discussion, we have no hesitation to hold that by amending the Rules and Form P-5 the rule-making authority has exceeded the power conferred on it by the Land Reforms Act."

36. It would be useful to consider certain para materia provisions in Trademarks Act, 1999. The Trademark Rules, 2002 framed under the statutory provisions contain Rule 50 which is a provision for filing of evidence in support of an opposition to an application seeking registration of the trademark.

37. sub-rule (1) of Rule 50 provide that within two months from the service of the copy of the counter statement or extendable by one month, the opponent shall leave with the registration such evidence by way of an affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar or the applicant in writing that he does not desire to adduce any such evidence but intends to rely on facts stated in the notice of opposition.

Sub-rule (2) of Rule 50 provided that if an opponent takes no action under sub-rule (1) of within the time mentioned therein, he shall be deemed to have abandoned his opposition.

38. This rule came up for interpretation before the High Court of Gujarat in the Judgment reported at 2007 (34) PTC 1, Wyeth Holdings Corporation & Anr. v. Controller General of Patents, Designs and Trade Mark. Placing reliance on the pronouncement of the Apex Court in 2006 (2) GLR 1312, Salem Advocate Bar Association, T.N v. Union Of India, it was urged that the use of word `shall' is ordinarily indicative of the mandatory nature of the provisions but having regard to the context in which it is used or having regard to the intention of the Legislature, the same can be construed as directory.

The Court brought into service the principle of `harmonious construction' of statutory interpretation and held that Sub-rule (2) of Rule 50 is directory.

It was observed that such interpretation would serve the interest of justice which interpretation would not take away the power of the Assistant Registrar to refuse extension of time in a given case.

The Court also reiterated the settled proposition of law that the provisions in subordinate legislation have to be in conformity with the provisions of the principal legislation.

39. A similar issue arose for consideration before the Full Bench of this Court wherein the Full Bench was required to answer inter alia the question as to whether Rule 53(2) of the Trade and Merchandise Marks Rules, 1959 is directory or mandatory and whether the Registrar's power to extend the time for filing evidence in support of the opposition stands extinguished if an application for extension of time is not filed or extension is not granted before the expiry of the period of two months prescribed under Rule 53(1) of the Trade and Merchandise Marks Rules, 1959.

40. In the pronouncement reported at 2000 PTC 24 (FB), Hasti Mal Jain Trading as Oswal Industries v. Registrar of Trade Marks, the Court laid down the priciples thus"-

"19 We have considered the rival submissions and read the various Judgement. The determination of the questions raised would depend on whether Rule 53(2) can be said to be mandatory or merely directory. Mere use of the word "shall" is not sufficient to treat the Rule as mandatory. Even though the word "shall" prima facie indicates that it is mandatory, still the Court must ascertain the real intention of the Legislature by looking to the Statute as a whole. It must also be remembered that a legal fiction cannot be streched beyond the purpose for which it was enacted. As seen above the legal fiction if not absolute. It is limited by the word "unless the Registration otherwise directs". In our view it is significant that wherever the Legislature intended to prescribe a fixed time, which could not be extended, it has specifically so done. The necessary implication of this is that in all other cases the time was not to be fixed but one which would be within the power of the Registrar to extend. Undoubtedly the intention of the Legislature was to minimise delays, For that fixed time is laid down in the Statute itself. However a reading of Section 21 itself shows that for procedural matters like filing evidence the Legislature was not laying down a fixed time in the Statute. This view is supported by a reading of Section 101 and Rule 106. Section 101 indicates that the only circumstance under which time cannot be extended by the Registrar is where a time has been expressly provided in the Act. Similarly, under Rule 106 the time can be extended by the Registrar, in all cases, except for the four, which have been mentioned in paragraph 14 above. It is all the more significant that Rules 53 (2) and Rule 54 have not been included in Rule 106. To interpret it otherwise would be to add in Rule 106 the words "or Rule 53". The Legislature has purposely omitted to do so. It is not possible to accept submission that Rule 53 gets incorporated in Section 21. If The Legislature wanted to provide a fixed term of two months in Section 21(4) as they have done in Section 21(1) and (2), they would have done so. This interpretation is also borne out by the fact that the deeming provision, in Rule 53(2), comes into play only if the Registrar does not otherwise directs. The fact that the legal fiction is subject to the direction of the Registrar also shows that it is not absolute but is being controlled by discretion of Registrar. In our view Section 101 and Rule 106 permit the Registrar to extend time, even though the time has expired. To hold otherwise would be to negate the words to that effect used both in Section 101 as well as Rule 106. We are thus in agreement with the view expressed by the Bombay High Court and the Gujarat High Court. We disagree with the view expressed in the case reported in 1978 (3) PLR 148 and in the Order dated 30th January 1995 in C.M. (M) 59/95"

41. This being the position in law, it becomes necessary to examine the spirt and intendment of the statutory provisions. A Division Bench of the High Court of Bombay had occasion to consider the issue raised before this Court in the context of interpretation of Section 21 of the Trade Marks Act, 1991 which prescribes the time period for filing opposition to registration and Rule 47(6) of the Trade Mark Rules, 2002 which enabled extension of time for filing application for apposition. In the Judgment reported at 2006 (33) PTC 321 (Bom.), Sardar Gurudas Singh Bedi v. Union of India & Others, the Court observed that the object of the opposition was to maintain the purity of the register so that the public should know whose goods they are buying and with whom the particular goods are associated. It was essential that the register should not contain any trademark which is identical or which so closely resembles each others, that an unwary purchaser may be likely to be deceived into believing that he is buying the goods of a particular person whereas he is in fact buying the goods of another person. It is this object which is to be borne in mind while interpreting the provisions so as to maintain the purity of the register.

On this basis, the Court held that:-

"....in matters of procedural law Court should normally read the provisions as directory and the rule should sub serve the object of the Act and not defeat it or in other words be in conflict and travel beyond the scope of the enabling Act. In an exercise in subordinate legislation, it is not open to the delegate conferred with power to make subordinate legislation, to make a rule which would be inconsistent or contrary to the provisions of the principal Act itself. If there be a purported conflict in interpretation, to save the rule it is, possible for the Court to read down the rule to make it in conformity with the provisions of the substantive law. Bearing this principle in mind, let us consider the issue as framed. Is Rule 47(6) in conformity with Section 21 and if it be in conflict, whether it can be read down to make it in conformity with the mandate of Section 21.

8. The power conferred to file opposition to registration is not merely to the person who is the proprietor of the mark or claims interest in the mark. The expression `any person' has to be given a wider meaning. As the object of the opposition is to maintain the purity of the register, Shavaksha in The Trade and Merchandise Marks Act, 1958, Third edition, has observed as under"

The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom the particular goods are associated. It is, therefore, essential that the register should not contain trade marks which are identical, or which so closely resemble each other, than an unwary purchaser may be likely to be deceived into thinking that he is buying the goods of a particular person whereas he is in fact buying goods of another.

It is therefore, essential that the register should not contain any trade mark which is identical or which so closely resembles to each other, that the common purchaser may be likely to be deceived by believing that he is buying the goods of a particular person whereas he is in fact buying the goods of another person. That being the object, the Court while interpreting the provisions must bear that in mind so as to maintain the purity of the Register.

The expression "any person" would have to be given wider meaning to include even a consumer and not necessarily the proprietor of person having interest in the mark. If this is so understood, then the object behind Section 21 manifests itself. The ordinary period for a person to file an objection would be three months. The period for extension of time on reading of Section 21 of the Act could be before the expiry of the period of three months or can be even after the expiry of three months. At the first blush considering the expression "within such further period" it would appear that granting extension of time of one month in aggregate can only be before the expiry of the period. If it is so read, then the time to file objection will have to be before the expiry of three months and the discretion in the Registrar to extend time is only before the expiry of three months. The rule as framed, if the construction is accepted, will be intra vires Section 21. The rule so read would mean that only a class of persons who had knowledge or were vigilant of the publication before the expiry of the period of three months, can alone apply for extension. The other class of persons whose attention is drawn after the expiry of three months, even by a day or though aware for reasons beyond their control, will be barred from filing their opposition, however sufficient their cause. Rule 47(6) as now framed is couched in the same language as Rule 51(3) under the Rules of 1959. The said rule was omitted by S.O. 397 dated 23rd July, 1969. In other words, the delegate entrusted to make the rules, itself found that the rule was acting harshly and or oppressive and not in conformity with the object of the Act. The language of Section 21 in the Act of 1958 and Act of 1999 is substantially the same. If that be the position, the question is, what is that made the delegate frame a rule smilar in language to a rule which was omitted. No explanation has come from the Respondents. The section uses the word three months and such further time of one month. That period can also be beyond three months. It would therefore have to be held that the power in the Registrar to extend the period, can be before the period of three months has expired, as also even after the period of three months has expired. In such event, the expression one month in aggregate will have to be read to mean also on the expiry of the period of three months. The discretion in the registrar therefore, to extent the time would also be on the expiry of the period of three months. It is not as it the Registrar is bound to give a period of one month. It is open to the Registrar considering the facts of the matter, to give such additional period and if discretion is to be exercised to extend time, then to grant such time, so that it does not exceed in the aggregate one month. This is how the delegate, understood the law when Rule 51(3) was omitted in 1969, in the Rules of 1959. The period of one month in aggregate therefore, in Section 21, will has to be read to mean aggregate of one month even on the expiry of the period of three months."

It would be useful to advert to the judicial pronouncement of this Court wherein the issue as to whether the requirement of making an application under Section 269 UC of the Income Tax Act was mandatory or directory. It is noteworthy that failure to comply with this statutory provision provided for penal consequences and prescription. The compliance was to be effected strictly in terms of the period prescribed under the rules. In this case, the Court held that Chapter XX-C of the Income Tax Act, 1961, is not in any manner intended to prohibit or even regulate the right to trasfer immovable properties under the general law. The provisions have been introduced solely for the purpose of guarding the economic interest of the State and the welfare of the society which is held to ransom on account of black money entering the economy. Only so much restrictions are to be read, interpreted and applied with caution as would enable the object behind the enactment of Chapter XX-C being achieved. Else the provisions of Chapter XX-C may amount to an unreasonable and arbitrary encroachment on the rights of the citizen to enter into transactions relating to immovable property having no nexus with the object sought to be achieved and hence would be violative of Article 14 of the Constitution. The Judgment of the Division Bench was reported at 1999 (236) ITR 793, Ansal Properties & Industries Limited v. Appropriate Authority & Ors.

Upon a consideration as to whether the time for submitting agreement in Form 37-I was mandatory or directory, the Court held thus:-

"The time of fifteen days as appointed by Rule 48L is directory and not mandatory. This we say for many reasons. The law nowhere provides that in the absence of the performa agreement being drawn up pursuant to the private agreement between the parties or the same having not been filed before the appropriate authority or the same having been rejected, the private agreement (oral or in writing) as entered into between the parties is rendered void or stands vitiated in any manner whatsoever. On the general law relating to transfer of property as contained in the Transfer of the Income Tax Act and the Contract Act, etc., the provisions of Chapter XX-C of the Income Tax Act can make an inroad only to the extent specifically provided for an not beyond. The only penalty which the parties to a private agreement suffer by not complying with the provisions of Chapter XX-C where its applicability is attracted is that a deed of transfer pursuant to the agreement should not be registered. However, the rights and obligations incurred by the parties to a private agreement do not fall to the ground and are not avoided.

Look at it from the point of view of securing a specific performance of a contract for sale through a Court of law. The parties having entered into an agreement, one of them may resile from the contract and may not agree to the performa agreement being filed before the appropriate authority. The party in breach may be sued by the other party in a Court of law and having been successful may have a decree for specific performance of the contract for sale, By that time a period of years and months, much beyond the period of 15 days, may have rolled by. If the period of 15 days was to be calculated from the date of the agreement or the period of 15 days was to be held mandatory then the said period having expired, compliance with Chapter XX-C would never be secured. The decree would be rendered a waste piece of paper. The Registrar of Deeds would not register the document executed in execution of the decree. On the other hand, if the period of 15 days has to be calculated from the date of the performa agreement being drawn up then on the decree for specific performance having been passed, on behalf of the JD the performa agreement shall be signed by the person authorised to act on behalf of the JD and compliance with Chapter XX-C shall be secured, also, the decree will be successfully executed. Any other interpretation would result in the valuable right of specific performance of a contract for sale of immovable property being defeated; a situation which leads to anomaly and certainly not contemplated by law.

There is no res judicata so far as filing of Form No. 37-I concerned. One form having been rejected, another could be filed so long as the parties are agreeable with each other and are prepared to honour agreement. If a new agreement could be entered into by the parties and filed before the appropriate authority within 15 days from the date of entering into thereof why not permit an agreement already entered into being filed, though beyond 15 days.

A mere delay in filing From No. 37-I does not defeat the object sought to be achieved by filing thereof. On the other hand, the object is fulfilled. Excluding Form No. 37-I from consideration on the ground of delay would result in the transaction for transfer of immovable property being excluded from the tax net and considered by the appropriate authority. On the other hand, if the from is permitted to be filed even with delay the object sought to be achieved by Chapter XX-C is fulfilled. The delay does not make a difference. The prescribed limitation of 15 days is, therefore, directory."

42. In the instant case, the second examination report has been made available to the petitioner long after the period prescribed under Section 12 of the statute for issuance of the examination report is over.

It is an admitted position that the objections which have been notified in the communication dated 21st September, 2005 were new and technical objections.

43. The petitioner has contended that these objections including those raised under Section 3(K) of the Act were raised for the first time and required proper technical responses which could not have been given casually. Counsel required consultation with the petitioner on the responses which have to be submitted thereto.

44. It is further urged that no action rejecting any application or accepting the objections or the examination reports could have been taken without compliance of Section 14 and affording a hearing to the petitioner. There is therefore substance in the contentions of the petitioner and the order was sustainable for failure to comply with the statutory mandate.

45. Even otherwise, the Rules prescribed that under Rule 24(B)(4)(ii), the petitioner would have been entitled to request for a period of three months for removing the objections.

The petitioner requested for grand of one month which was granted to him. This extended period was expiring on 21st September, 2005. So far as the statutory scheme was concerned, the petitioner had still available to it the period of two months within the extendable period. Therefore, for this reason as well, the action of the respondents in treating the petitioner's application for grant of patent as having been deemed to have been abandoned on the 21st September, 2005 is unjustified and unwarranted.

46. In view of the above discussion, it has to be held that having regard to the spirit, intendment and purpose of the statute, the requirement of Rule 24(B)(4)(i) and (ii) and the time stipulation therein is directory and is not mandatory.

47. Even otherwise, Rule 138 has to be understood as it existed at the relevant time and reads thus:-

"138 Power to extend time prescribed: --(1) Save as otherwise provided in the Rules 24, 55 and 80(1)(A), the time prescribed by these rules for doing of any act or the taking of any proceeding thereunder, may be extended by the Controller for a period of one month, if he thinks it fit to do so and upon such terms as he may direct.

(2) Any request for extension of time made under these rules shall be made before the expiry of the prescribed period."

Therefore, the Controller is adequately empowered to extend the time for a period of one month if fit to do so and upon such terms as may be directed. The only exception which has been provided to exercise of this power is contained in the rule itself which has clearly provided that the extension is restricted to Rules 24, 55 and 80(1)(A).

48. Rule 24 relates to publication of an application and prescribes the period of 18 months for which the application would not be open to the public.

Rule 55 provides the period within which opposition by representation against grant of the patent is to be effected while rule 80(1)(a) provides the period for payment of renewal fees.

There is no reference to the prescription under Rule 24(B)(i) and (ii). Therefore, it has to be held that even otherwise Rule 138 would adequately empower the Controller to extend the period for doing of any act or taking of any proceedings within further period of one month in addition to the period prescribed under the other rules.

49. Even otherwise, there is no evidence that the petitioner has failed to take action within the period prescribed. The request for the examination was made within the statutory period. The petitioner asked for only one month's extension of time for making its response by a communication submitted as back as on 15th July, 2005. Such communication was addressed well in time inasmuch as the period was expired on 21st August, 2005.

50. The petitioner filed its response on the 17th September, 2005 to the first examination report. In this background, it certainly cannot be contended or held that on 21st September, 2005, the petitioner would be deemed to have abandoned its application for the reason of non-response to a communication of the same date which had not even been served upon the petitioner.

In any case, the petitioner having submitted the reply barely for days before, it is most unreasonable to hold that there was anything which could lead to the conclusion that there was deemed abandonment of the petitioner's application four days later.

51. Mr. J.P. Sengh, learned counsel for the respondents has contended at lenght that the petitioner has admitted that in furtherance of the letter dated 17th September, 2005 its agent went to the office of the respondent No. 2 on 21st September, 2005 in order to defend its application and address all outstanding objections as raised in the first examination report of 21st February, 2005.

52. I find that the writ petitioner has contended that despite discussion with the respondent No. 2 on 21st September, 2005 meeting all the objections as contained in the first examination report, the letter was sent to the petitioner's agent on 21st September, 2005 which was only received by him on 24th September,2005.

The petitioner has contended on affidavit that no further objection was communicated to the petitioner's agent despite its physical presence there on the 21st of September, 2005.

53. The submission on behalf of the respondents is that the petitioner or its agent ought to have volunteered to respond to the second examination report when they were present in the office of the respondent No. 2.

54. This would certainly have been possible if the petitioner or its agent were aware of the second examination report and the further objections. The respondents have not urged that the second examination report was made available to the petitioner or its agent on the 21st of September,2005.

55. This discussion would be incomplete without referring to the discretionary powers of the Controller provided in Section 80 of the Patents Act, 1970 which reads so:-

"Section 80 --Exercise of discretionary powers by Controller --Without prejudice to any provision contained in this Act requiring the Controller to hear any party to the proceeding thereunder or to give any such party an opportunity to be heard, the Controller shall give to any applicant for a patent, or for amendment of a specification (if within the prescribed time the applicant so requires) an opportunity to be heard before exercising adversely to the applicant any discretion vested in the Controller by or under this Act.

[Provided that the party desiring a hearing makes the request for such hearing to the Controller at least ten days in advance of the expiry of the time -limit specified in respect of the proceeding.]"

Therefore, the petitioner could have asked for a heading which the Controller would have been statutorily required to grant. Such opportunity could have been asked for upon receipt of the first examination report or even after the receipt of the second examination report. However, from the schedule set down by the respondent and the manner in which the respondents have proceeded, there was just no occasion for the petitioner to exercise such option.

56. Rule 129 of the Patents Rules, 2003 was inserted by the Patents (Amendment) Act, 2002 dated 25th June, 2002 with effect from the 20th of May, 2003 which provides thus:-

"129. Exercise of discretionary power by the controller --Before exercising any discretionary power under the Act or these rules which is likely to affect an applicant for a patent or a party to proceeding adversely, the controller shall give such applicant or party, a hearing, after givin him or them, ten days notice of such hearing ordinarily."

This statutory rule casts a duty on the controller to give a hearing to an applicant, before exercising any discretionary power, which was likely to affect an applicant for a patent adversely.

57. The petitioner has been deprived of these opportunites as well before taking the adverse action against the petitioner.

58. From the facts noticed hereinabove, under rule 24b(4)(ii), the petitioner could have asked for an extension of time for a period of a month at a time till a total period of three months expired i.e. till 21st Novermber, 2005. Certainly to treat the petitioner's application as having been deemed to have been abandoned on 21st of September, 2005 was wholly unwarranted and improper.

For all these reasons, this writ petition deserves to be allowed.

The communication dated 21st September, 2005 issued by the office of the respondent No. 2 to the extent that the same results in deemed abandonment of the petitioner's application is hereby set aside and quashed.

The petitioner is permitted to submit its reply to the objection pointed out by the respondents in the communication dated 21st Septmber, 2005 within four weeks from the passing of this Judgment.

The respondents shall furnish appropriate opportunity to the petitioner, both written as well as by oral hearing, in accordance with the statutory mandate and thereafter proceed to pass appropriate orders on the petitioner's application seeking grant of the patent.

The writ petition is allwoed in the above terms.