Case Note & Summary
The petitioners, M/s. Agar Distributors (India) and Shri Siraj Amirali Soorani, filed a writ petition challenging an order dated 16 July 2010 passed by the Intellectual Property Appellate Board (IPAB). The IPAB had dismissed the petitioners' miscellaneous petition seeking to take on record additional documents along with their reply to the counter statement in a trademark opposition proceeding. The background of the case involves an application for registration of the trademark 'BRIGHT STAR' in Class 1 filed by respondents 2 and 3 (M/s. Lakh Enterprises and Juzer M. Lakhwala) under the Trade and Merchandise Marks Act, 1958. The petitioners opposed the registration on grounds under Sections 9, 11, 12, and 18 of the Act, claiming prior use and registration of their trademarks '5 STAR'/'FIVE STAR' since 1976. The Joint Registrar of Trade Marks, by order dated 23 July 2003, dismissed the opposition and granted registration to respondents 2 and 3, noting that the petitioners had not filed any evidence in support of their claim of use. The petitioners then appealed to the IPAB, and during the proceedings, they filed a miscellaneous petition to bring additional documents on record. The IPAB dismissed that petition, leading to the present writ petition. The legal issue before the High Court was whether the IPAB's refusal to allow additional documents was perverse or arbitrary. The court, after hearing arguments, held that the IPAB's order was within its discretion and not shown to be perverse. The court noted that the petitioners had ample opportunity to produce the documents earlier and failed to show sufficient cause for the delay. The writ petition was dismissed, and the rule was discharged.
Headnote
A) Civil Procedure - Additional Evidence - Discretion of Appellate Board - The court considered whether the IPAB's refusal to allow additional documents was perverse or arbitrary. The court held that the Board's order was within its discretion and not shown to be perverse, and that the petitioners failed to demonstrate sufficient cause for not producing the documents earlier. (Paras 2-6)
B) Trademark Law - Opposition Proceedings - Onus of Proof - The court noted that the initial onus to sustain an objection under Section 11(a) of the Trade and Merchandise Marks Act, 1958 lies on the opponent. The petitioners had not filed evidence in support of their claim of use of the trademark 'STAR' and 'FIVE STAR' since 1976. (Para 5)
Issue of Consideration
Whether the Intellectual Property Appellate Board (IPAB) erred in dismissing the petitioners' miscellaneous petition to take on record additional documents along with the reply to the counter statement in a trademark opposition proceeding.
Final Decision
The High Court dismissed the writ petition, upholding the IPAB's order. The rule was discharged.
Law Points
- Trademark opposition
- additional evidence
- discretion of appellate board
- judicial review
- perversity
- sufficient cause
Case Details
2011 LawText (BOM) (04) 51
Writ Petition No.364 of 2011
Mr. Pravin Samdani, Sr. Advocate with Mr. Snehal Mhatre i/by M & M Legal Ventures for the petitioners; Mr. S. Shamin i/by M/s. Shamim & Co. for respondents 2 and 3
M/s. Agar Distributors (India) and Shri Siraj Amirali Soorani
Intellectual Property Appellate Board, M/s. Lakh Enterprises, Juzer M. Lakhwala
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Nature of Litigation
Writ petition challenging an order of the Intellectual Property Appellate Board dismissing a miscellaneous petition to take additional documents on record in a trademark opposition proceeding.
Remedy Sought
The petitioners sought to quash the IPAB order dated 16 July 2010 and to allow their miscellaneous petition to take additional documents on record.
Filing Reason
The petitioners' miscellaneous petition to file additional documents in support of their opposition to the registration of the trademark 'BRIGHT STAR' was dismissed by the IPAB.
Previous Decisions
The Joint Registrar of Trade Marks by order dated 23 July 2003 dismissed the opposition and granted registration to respondents 2 and 3. The petitioners appealed to the IPAB, which dismissed their miscellaneous petition for additional evidence.
Issues
Whether the IPAB's order refusing to take additional documents on record was perverse or arbitrary.
Whether the petitioners showed sufficient cause for not producing the documents earlier.
Submissions/Arguments
The petitioners argued that the additional documents were necessary for the just decision of the case and that the IPAB erred in dismissing their petition.
The respondents contended that the petitioners had ample opportunity to produce the documents earlier and failed to show sufficient cause.
Ratio Decidendi
The IPAB's refusal to allow additional evidence was within its discretion and not perverse. The petitioners failed to demonstrate sufficient cause for not producing the documents earlier, and the Board's order did not warrant interference under writ jurisdiction.
Judgment Excerpts
The Petitioners have challenged the order dated 16 July, 2010 passed by the Intellectual Property Appellate Board (Appellate Board), thereby dismissed the Misc. Petition filed by the Petitioners to take on record additional documents along with the reply to the counter statement.
The Joint Registry of Trade Marks dismissed the opposition of the Petitioner and proceeded to grant registration to Respondents 2 and 3 by observing as under : 'The Applicant’s trade mark is BRIGHT STAR along with device of Star... the Opponents although have claimed the use of the trade mark STAR and FIVE STAR since the year 1976, but they have not filed any evidence in support thereof.'
Procedural History
The respondents filed an application for registration of the trademark 'BRIGHT STAR' under the Trade and Merchandise Marks Act, 1958. The petitioners filed a notice of opposition on 1 June 1994. By order dated 14 December 2000, an amendment in the notice of opposition was allowed. On 23 July 2003, the Joint Registrar dismissed the opposition and granted registration. The petitioners appealed to the IPAB. During the appeal, the petitioners filed a miscellaneous petition to take additional documents on record, which was dismissed by the IPAB on 16 July 2010. The petitioners then filed the present writ petition in the High Court.
Acts & Sections
- Trade and Merchandise Marks Act, 1958: 9, 11, 12, 18, 21(1)
- Trade Marks & Merchandise Rules: 51, 53, 54, 55
