S.N. Variava, CJ.
1. All these three matters can be disposed of by this common Judgment. In all these matters the questions referred to the Full Bench are :
"(a) Whether Rule 53 (2) of the Trade and Merchandise Marks Rules 1959 is directory or mandatory ?
(b) 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 pre- scribed under Rule 53 (1) of the Trade and Merchandise Marks Rules, 1959 ?
(c) What is the effect of Rule 106 of the said Rules on the exercise of powers by the Registrar under Rule 52(2)?
2. These questions had arisen for consideration before a learned Single Judge in FAO 21/68. This was decided on 21st December, 1971. In that case the learned Single Judge held as follows :
"This provision deals with the extension of time which has not been expressly provided by the Act. The time mentioned in Rule 53(1) i.e., two months is a time which has not been expressly provided in the Act and, is therefore, capable of being extended by the Registrar himself. This time can be extended even if the time has expired i.e., even if the two months' period has expired and Rule 53(2) has come into operation and the opposition has been deemed to have been abandoned; the Registrar has still power under Section 101 to extend the time, which necessarily means that the opposition becomes alive again if this power is exer- cised. The Rule made under the Act cannot operate so as to defeat the Act. It is clear, therefore, that even if the deeming provi- sion in Rule 53(2) has come into application, if time is subsequently extended by the Registrar, the time for doing the acts mentioned in Rule 53(1) will stand extended and, therefore, the opposition will again be deemed to be subsisting inspite of Rule 53(2)."
It must be mentioned that in this case the learned Single Judge has also held that by virtue of the legal fiction in Rule 53(2) the deemed abandonment became operative automatically and no specific order was required to be passed by the Registrar. The learned Single Judge held that an order passed by the Registrar to the effect that the opposition had stood abandoned was passed without jurisdiction and it had no legal existence.
3. In this very case, after the above mentioned Judgment, the Registrar issued a Notice under Rule 54. The matter was again carried to this Court. It resulted in a Judgment which is reported in 1978 (3) IPLR
148. Coinci- dentally this Judgment was also delivered by the same Judge. While consid- ering the questions which had been raised in this matter the learned Single Judge now holds as follows :
"At first sight, it would seem that the view I have taken works a hardship, but any other interpretation does violence to the Rule 53. It is not possible for the Registrar to resuscitate an appli- cation which had to be deemed to be abandoned long before by legal action, merely by giving a direction that evidence should now be filed. Of course, if during the period of two months before the deeming effect of Rule 53(2) came into operation, the Registrar could have directed that the opposition shall not be deemed to be abandoned. If he had extended time under Rule 106 for filing the evidence in opposition, he could act thus within the extended period although beyond two months. If however, the Registrar did not choose to make any direction under Rule 53(2) during the period, he was not entitled to later on issue a notice allowing evidence to be filed, because by this method he would be defeating the purpose and provisions of Rule 53(2). No such discretion is given to the Assistant Registrar and, therefore, I have to hold that the opposition had to be deemed to be aban- doned."
4. Reading of the two Judgments indicates that contrary opinions have been expressed by the same Judge.
5. These questions again arose in CM (M) 59/95. In an Order dated 30th January 1995 the learned Single Judge follows the observations made in the case reported in 1978 (3) IPLR 148. It would appear that the earlier observations, made by the same Judge, were not brought to the notice of the learned Single Judge.
6. These questions also came up for consideration in CM (M) 77/89 wherein by an Order dated 8th September 1980 the questions had been referred to a larger Bench for its opinion. However, in this Order there is an observa- tion to the following effect :
"To my mind also the deeming provision contemplated by Rule 53(2) is mandatory".
In this view of the fact that the learned Judge was referring this matter to a larger Bench it is clear that these observations were merely prima facie observations.
7. These questions were then considered by a Division Bench of this Court in CM (M) 77/79. The two Judges differed and dictated separate Judgments. They however did not sign their respective Judgments but on 19th February 1982 referred the questions to a Full Bench. However, before the matter could be decided by the Full Bench the parties settled the matter.
8. The same questions again arose in CM (M) 525/94. On 4th April, 1995 a Single Judge has referred these questions for decision to a larger Bench. On 22nd September 1995 the Division Bench has referred these questions to a Full Bench for consideration. These questions, therefore, have been taken up for consideration by this Full Bench.
9. It would be convenient, at this stage, to set out the relevant provisions.
10. Section 18 of the Trade and Merchandise Marks Act 1958 provides for an application for registration of trade mark. Section 20 provides that such an application would be advertised. Section 21 is relevant. It reads as follows :
21. Opposition to registration - (1) Any person may, within three months from the date of the advertisement or re-advertise- ment of an application for registration or within such further period, not exceeding one month in the aggregate, as the Regis- trar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the appli- cant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds, on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.
(3) If the applicant sends such counter-statement the Registrar shall serve a copy thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the cost of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.
11. At this stage it must be noted that the Act provides specific periods in Section 21(1) and Section 21(2). It must also be noted that Section 21(4) does not prescribe any specific period within which, the evidence upon which the opponent and the applicant rely, has to be submitted.
12. Section 101 of the said Act reads as follows :
"101. "Extension of time. - (1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extend- ing the time for doing any act (not being a time expressly pro- vided in the Act), whether the time so specified has expired or not, he may, subject to such conditions as he may think fit to impose, extend the time and notify the parties accordingly.
(2) Nothing in sub-section (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time, and no appeal shall lie from any order of the Registrar under this section."
Thus under Section 101 if the Registrar is satisfied that there is sufficient cause for extending time he may subject to such conditions as he may think fit to impose, extend the time. However, the powers of the Regis- trar are circumscribed by the fact that he cannot extend a time which has been expressly provided in the Act. A plain reading of this Section sug- gests that where the time has not been expressly provided in the Act, the Registrar has power to extend the time. As has been seen above Section 21(4) does not expressly provide any time. Section 21(4) however talks of "prescribed time". Therefore a time limit had to be prescribed in the Rules.
13. Rules 51 to 60 deal with oppositions to registration. The relevant Rule for consideration is Rule 53 which reads as follows :
"53. Evidence in support of opposition. (1) Within two months from the service on him of a copy of the counter-statement by the Registrar, the opponent shall either leave the Registrar such evidence by way of affidavit as he may desire to adduce in sup- port of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evi- dence in support of his opposition but intends to rely on the facts stated in the notice of opposition. He shall deliver to the applicant copies of any evidence that he leaves with the Regis- trar under this sub-rule.
(2) If an opponent takes no action under sub-rule (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned this opposition.
Thus under this Rule the opponent must, within two months of the service on him of a copy of the Counter-Statement, either file evidence by way of affidavit or intimate to the Registrar and the applicant that he does not desire to adduce evidence in support of his opposition but merely intends to reply on the facts stated in the notice of opposition. If the opponent does neither then he is deemed to have abandoned his opposition. However this deeming fiction is subject to the words "unless the Registrar otherwise directs". Thus the deeming fiction is subject to the discretion of the Registrar.
14. Rule 106 provides for extension of time.
It reads as follows :
106. Extension of time - (1) An application for extension of time under section 101 not being a time expressly provided in the Act or prescribed by rule 81 or by sub-rule (4) of rule 82 or a time for the extension of which provision is made in the rules shall be made on Form TM-56.
(2) Upon an application made under sub-rule (1) the Registrar, if satisfied that the circumstances are as to justify the exten- sion of the time applied for, may, subject to the provisions of the rules where a maximum time limit is prescribed and subject to such conditions as may be think fit to impose, extend the time and notify the parties accordingly and the extension may be granted though the time for doing the Act or taking the proceed- ings for which it is applied for has already expired."
Thus a plain reading of this Rule shows that no application for exten- sion of time can be made where: (1) time has been expressly provided in the Act; (2) time is prescribed by Rule 81; (3) time is prescribed by Rule 82(4); and (4) time for the extension of which a provision is already made in the Rules. In all other cases an application for extension of time can be made in Form TM-56. At this stage it must be mentioned that apart from Rules 81 and 82 there are a number of other Rules wherein also time has been prescribed. Many of them also prescribe the contingency which is to take place if the act is not performed within that time. Yet the only cases in which an application for extension of time cannot be made are those set out above. Where an application for extension of time can be made the Registrar has power to extend the time on such conditions as he thinks fit to impose if he is satisfied that the circumstances justify an extension of time. It must also be noted that both under Section 101 as well as Rule 106 the Registrar could extend the time even though the time for doing the act or taking the proceedings had already expired.
15. Mr. Singh pointed out to this Court all the above mentioned Judgments as well as a Judgment of a Single Judge of the Bombay High Court in the case of K.T. Jobanputra Vs. The Registrar of Trade Marks & Another, 1982 PTC 127. In this case it has been held that Rule 53 (2) is merely directory and not mandatory.
16. Attention of this Court was also drawn to an unreported judgment dated 7th April 1998 in Special Civil Application No. 8914/97 (Torrent Pharmaceuticals Limited Vs. Union of India) delivered by a Single Judge of the Gujarat High Court. In this case also it is held that the Registrar had power to extend time even though the deeming provision had come into effect.
17. Mr. Singh submitted that Rule 53 (2) was merely directory and not mandatory. He submitted that Section 101 and Rule 106 make it clear that Registrar had power to extend time, even after time had expired, in cases falling under Rule 53 (2). He submitted that this was so as no specified time was prescribed in Rule 53 (2). He submitted that as no time was pre- scribed in the Statute Section 101 gave to the Registrar power to extend time even if the time has expired. He submitted that this was further supported by fact that Rule 106 made a mention of Rules 81 and 82 but significantly did not mention Rule 53.
18. On the other hand Mr. Luthra and Mr. Bansal submitted that the various provisions had to be read harmoniously. They submitted that under Section 21 time was of the essence. They submitted that Objects and Reasons for laying down time limits was to minimise delays. They submitted that Section 21 provided that evidence was to be filed within "the prescribed time". They submitted that Rule 53 prescribed the time. They submitted that thus the time of two months, prescribed in Rule 53, gets incorporated into Section 21 and become time prescribed by the Statute. They submit that thus the Registrar cannot extend time, once the time is over, as the Rule has become part of the Act.
19. We have considered the rival submissions and read the various Judg- ments. 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 stretched beyond the purpose for which it was enacted. As seen above the legal fiction is 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 possi- ble 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 provi- sion, in Rule 53 (2), comes into play only if the Registrar does not other- wise 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 other- wise 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.
20. In this view of the matter we answer the questions accordingly :-
(a) Rule 53(2) of the Trade and Merchandise Marks Rules 1959 is merely directory and not mandatory.
(b) & (c) The Registrar has power to extend time for filing evidence even though the period mentioned in Rule 53 or the extended period thereof has expired and even though an applica- tion for extension of time is made beyond that period."
21. Of course it must immediately be clarified that the Registrar has to exercise his powers judicially and for valid reasons.
22. The Reference stands answered accordingly. The matters are now referred back to the Single Judge for decision on merits in accordance with law laid down herein.
23. To be placed on Board on 17th January 2000 for direction.