Dharam Singh, ARTM
1. This hearing is fixed in respect on Form TM-16 dated 10.2.2004 filed by the applicants. Ms. Meghasy Adhayaru, Advocate of Y.J. Trivedi & Co., for the opponents and Mr. T.N. Daruwala, Advocate instructed by Drashtee & Co. appeared for the applicants. Ms. Meghasy Adhayaru submitted that the applicant had filed the said request on Form TM-16 at the time, when the opponents had filed opposition against the impugned application and filing of the application to amend the user and adding substantial matter to the application (TM-1) is after thought and bad in law, and therefore, cannot be allowed. She submitted that the opponents have already replied in detail on receipt of a copy of the aforesaid TM-16 from the Registrar. She strongly objected the said request on Form TM-16 stating that it was contrary to the provisions of law and procedure enumerated in the Trade Marks Act and Rules framed thereunder. She pointed out that Section 18(4) of the Act provides the discretionary power to the Registrar to refuse the application and not to filing TM-16. She contended that Sector 58 provides for an application for correction to be made by registered proprietor, whereas the applicant is not registered proprietor, therefore the request is not allowable under Section 58 of the Act. She argued that Rule 91 speaks about an application to be made by registered user and in the present matter, the applicant is not registered user. She pointed out that Rule 97 provides for an application for correction of the Register and this is not the case of correction of the Register, but to amend the application for registration. She added, that even otherwise, the amendment to be carried out under Section 22 of the Act read with Rule 41 enumerates to be substantial alterations which cannot be allowed. She prayed that in the premises as above, the aforesaid request on Form TM-16 should be rejected.
2. Mr. T.N. Daruwala, Advocate present at the hearing on behalf of the applicants submitted that after incorporation under the Company Law in the year 1998, the applicant Company filed the impugned application for registration directly claiming the user since 1999 and has been continuously using the trade mark RELIANCE on its goods since then. But before incorporation and commencement of business by the applicant company, its predecessors in title i.e. one Haji Fakhruddin Husseinbhai Pahadwala Trading under the style Amar Traders has been running the same business under the Trade Marks RELIANCE from January, 1982 until 12th October, 1999, which was overlooked and not taken into consideration by the applicant at the time of filing the impugned applications. He agreed that the eldest son of the Predecessors in title, Mr. Mannan Fakhruddin Pahadwala, one of the Directors promoted the impugned applicant company namely, Asim Plast Pvt. Ltd and that order to protest the business including the Proprietary Rights of the Trade Mark as well as for proper adjudication of the proceedings, it is barely needed to bring on record the said user of the mark by the predecessors in title; this is why the applicant has filed TM-16 to amend the user which is the subject matter of today's hearing. Mr. Daruwala contended that he was not concerned with the provisions of Sections 18(4), 58, Rules 91 & 97, which had been referred to and commented by Ld. Advocate of other side, but what he was concerned is that the request on Form TM-16 is properly filed under Section 22 & Rule 41. He argued the said amendment of user by the applicant neither amounts to be a substantial alteration nor is proposed after thought. The Ld. Counsel referred to the format of TM-1 and submitted that there was a provision of claiming the user for the applicant and his predecessors in title in the format itself. As the amendment proposed as such does not amount to be the substantial alterations it is a fit case to be allowed under the discretionary powers of the Registrar under Section 22 of the Act and if the Registrar allows the same, there would be no harm to the opponent at this stage. The main hearing will be appropriate Forum for the Opponents to raise any objection. He submitted that case laws relied and referred to by Ld. Advocate for the Opponents are not applicable in this matter. He prayed that the Tribunal may be pleased to allow the said request on Form TM-16 with an order as to an appropriate costs as the applicant is ready to pay.
3. In the present case, the applicant has filed TM-16 within the provisions of Section 22 of the Trade Marks Act, 1999 and Rule 41 to amend the user and expression in relation thereto.
4. Section 22 lays down as follows:
"The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under Section 18, permit the connection of any error in or in connection with the application or permit an amendment of the application."
5. Section 22 with corresponding provisions of Rule 41 deals with correction of an error or an amendment of an application for registration of trade mark whether before or after acceptance of the application but before the registration of the mark by way a request on Form TM-16 with prescribed fee and the Registrar is empowered to allow the said request until amendment sought amounts to be a substantial alteration.
6. Though, the provisions of the Civil Procedure Code are not directly applicable yet the principles of the said Code are applicable to proceedings before the Registrar, however, Order 6, Rule 17, clearly states that the Court may at any stage of the proceedings allow either party to alter or amend his pleadings in such manner an on such terms as may be just and all such amendments shall be made as may be necessary for the purpose of determining the real questions in controversy between the parties.
7. The applicants, by filing supporting evidence, have justified the proposed amendment of user and expression in relation thereto, which, in my opinion is allowable under the Provision of Section 22 and as the same does not amounts to be a substantial alterations. Since the said amendment is proposed after filing of opposition, apparently, it may appear to have been filed after thought, but the evidence, filed in support of the request leads to an inference that though at the time of filing the application, the applicants have claimed the user only since the year 1999, however, their predecessors in title have already been using the mark from early 1980s and thus, it cannot be said that the applicant has made out the evidence or proposed the said amendment after thought. I do not think that there should be any problem in allowance of the said request on Form TM-16. I do not agree with the arguments advanced by Ms. Adhayaru that amendment of user sought amounts to be a substantial alteration and the case laws referred to by her are not applicable in this case.
8. To sum up, the said request on Form TM-16 dated 10.2.2004 is hereby allowed and the user in TM-1 is amended accordingly.
9. It is hereby farther ordered that the applicant shall forthwith pay the opponent a sum of Rs. 3,000 (Rupees Three Thousand Only) as costs of these proceedings.