STASEEN EXPORTS LTD .vs. REGISTRAR OF PATENTS AND TRADE MARKS AND OTHERS

043-SLLR-SLLR-2006-V-1-STASEEN-EXPORTS-LTD-.vs.-REGISTRAR-OF-PATENTS-AND-TRADE-MARKS-AND-OTHERS.pdf


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(2006) 1 Sri L. R.
STASSEN EXPORTS LTD.
VS.
REGISTRAR OF PATENTS AND TRADE MARKS AND OTHERS
COURT OF APPEALBALAPATABENDI, J ANDIMAM, JCA 723/92(F)
D.C. COLOMBO 3263/SPLNOVEMBER 15TH 2004
Code of Intellectual Property Act, No. 52 of 1979, sections 172(2) and 182-Failure to file notice of opposition to the registration of eight trade marks – Oneaction instituted – Seeking extension of time of tender notice of oppositionrejected-Should there be one action or eight actions? -Civil Procedure Code,sections 8 and 36.
The plaintiff-appellant failed to file to file notice of opposition within theprescribed time in the Registry of the Registrar of Trade Marks; consequentlyapplication for time to file oppossition had been rejected and the applicationsof the 2nd defendant respondent to registrar eight trade marks were acceptedand registered by the name "Rabea”. The plaintiff appellant instituted actionunder section 172(2) of the Code of Intellectual Property Act to expunge theTrade Marks.The District Court dismissed the action on the basis that theplaintiff ought to have filed eight separate actions, but permitted the plaintiff tofile eight actions if he so desires.
On appeal –
CA
Stassen Exports Ltd. Vs. Registrar of Patents &
Trade Mardks and others (Jagath Balapatapendi, J.)
341
HELD:
Any person aggrieved by any decision or order made by the Registrarof Trade Marks could come to court under the provisions of section172(2) or section 182 of the Code of Intellectual Property Act. Theprocedure followed by the plaintiff was under section 172(2).
Both sections do not provide any specific procedure to be followedin an appeal to the District Court against the order.
When there is no procedure laid down, section 8 of the CivilProcedure Code applies. In the absence of any reference to thesummary procedure in the relevant section of the Act, the applicationcould be filed under regular procedure.
The procedure adopted was regular and the causes of action whichwere on the same Trade Mark “R bea” in respect of the eightapplications registered was between the same parties and couldbe united in one action.
Per Balapatabendi, J
“ In a situation of this kind the court should adopt a common sense approachnot prohibited by law to prevent multiplicity of actions – District Judge could nothave dismissed the action when he could have ordered separate trials, if anysuch causes of action cannot be conveniently tried or disposed together, interms of section 36 of the Civil Producre Code.
APPEAL from the judgment of the District Court of Colombo.
Cases referred to: GTE Directories Lanka (Pvt) Ltd. vs. Mukthar Marikkar and another(1998) 3 Sri LR 180
Malhotra International (Pvt.) Ltd. vs. Anglo Asia Distributors andothers (2003) 3 Sri LR 116
Shibly Aziz, P.C. with Gomin Dayasiri for plaintiff appellant
P.A.D. Samarasekera, P.C. with Hiran de Alwis for 2nd defendant respondent
Eva Wanasundera, Deputy Solicitor General for 1 st defendant respondent
cur. adv. vult.
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Editors Note:
“ The Supreme Court on 30.05.2005 in S.C. Spl. LA 38/2005 dismissed theSpecial Leave to Appeal application.
January 30,2005
JAGATH BALAPATAPENDI, J.Since the Appellant – Petitioner – Plaintiff – Respondent • Respondentthe Stassen Exports Ltd. (hereinafter referred to as plaintiff appellant) hadfailed to file notice of opposition within the prescribed time in the registryof the Registrar of Trade Marks consequently the application for time tofile opposition had been rejected and the applications of the 2nd respondent- respondent- defendant (hereinafter referred to as 2nd Defendant-Respondent) to register eight Trade Marks by the name –
“ Rabea” were registered and gazetted by the Registrar of TradeMarks. Thereafter, the plaintiff-appellant had instituted an action in theDistrict Court of Colombo in terms of the procedure laid down in the Code
of Intellectual Property Act, No. 52 of 1979.
The Plaintiff • appellant in his plaint dated 1 st March 1991, had allegedinter alia that he moved for extension of time to tender notice of oppositionto the Registrar, but the Registrar (the first respondent – respondent -defendant failed to consider the applications for extension of time andneglected to reply the Plaintiff -appellant for the said applications made.Further, he had alleged that he is the registered proprietor of the TradeMark No. 40849 Spring Brand (which in Arabic language is Rabea”) Thus,the purported registration and placement of eight applications in the nameof the 2nd defendent – respondent in the Register of Trade Marks waswrongful, unlawful and was made without complying with the procedurelaid down in the said Act, Also, he had alleged that there was travesty ofjustice as he was not given an opportunity to file notice of opposition andright of hearing to the said eight applications of the 2nd defendant -respondent. Hence he had prayed for the following :-
a declaration to expunge the said marks 47711,47712, 47713,
and 49305 from the Registrar of TradeMarks.
a declaration that a fresh inquiry be held into application relating tothe registration of the said marks 47711, 47712, 47713, 47714,
and 49305.
Stassen Exports Ltd. USs. Registrar of Patents <S
Trade Mardks and others (Balapatapendi, J.)
343
CA
a declaration that the Petitioner has the right to file objections andparticipate at the fresh'inquiry.
to set aside the decision of the 1st Respondent to register themarks 47711, 47712, 47713, 47714, 47715, 47716, 47717 and49305 in the name of 2nd respondent.
for costs, and
for such other and further relief as Your Horlours court shall seemfit.
At the trial in the District Court a preliminary objection had beenraised by the 2nd Defendant-Respondent that “ instead of filing eightapplications/actions in Court, the plaintiff-appellant had institued a singleapplication/action for eight different registration of Trade Mark, hence theapplication/action should be dismissed as it is bad in law. The learnedDistrict Judge upheld the preliminary objection and dismissed the actionof the plaintiff – appellant, and further held that “ if the plaintiff -appellantso desires he could tender eight different applications/actions to court".
The appeal bearing No. 732/92 is preferred by the plaintiff-appellantagainst the order upholding the preliminary objection and dismissal of theaction, the appel bearing No. 733/92 is preferred by the 2nd defendant-respondent against the order permitting the plaintiff- appellant to file eightdifferent applications/actions.
At the hearing of the appeal counsel for the plaintiff-appellantcontended that the action in the District Court was in relation to one TradeMark by the name “ Rabea" on which eight applications have been madeto the Registrar of Trade Marks by the 2nd defendant-respondent, andwere registered in eight different classifications, such as :- Services ofeducation and entertainment, services of material treatment, services oftransport and storage, services of communication, services of constructionand repair, services of advertising and financial and under the classificationof goods-Tea, therefore the registration carry different numbers. The questionto be determined in the action before the District Court was between thesame parties on the identical issue in respect of a Trade Mark carrying thename “Rabea". The said action filed was in terms of the Code of IntellectualProperty Act under the provisions of the Section 172(2) praying for a
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declaration to rectify the Register by expunging entries sanctioned by theRegistrar under the said Act. He further contended that, there is noprocedure laid down and no reference to causes of action within which aparty has to bring a case under the Code of Intellectual Property Actunlike in the Civil Procedure Code. The only procedure to be followed isunder the provisions of section 172(2) of the said Act.
He referred to the provisions of section 172(2), which states as followsSubject and without prejudice to other provisions of this Code a) “ theCourt may on the application in the prescribed manner of any personaggrieved by the non-insertion in or omission from any register, of anyentry, or by any entry made in any register without sufficient cause or byany entry wrongly remaining in any register, or by any error or defect inany entry in any register, make such order for making, expunging, orvarying such entry, as it may think fit."
His contention was that the “prescribed manner1' referred to in theabove section, has not been prescribed up to date, hence the action undersection 172(2) is sui-juris. When there is an absence of laid down rules,regulations and procedure in the said Act, the procedure to be followed isthe procedure laid down in the Civil Procedure Code. Thus, the eight differentcauses of action could be brought and determined in one action since thedispute is between the same parties and on the same Trade Mark “Rabea”.Also, there is no requirement that separate applications/actions must befiled in Court in respect of each application made to the Registrar of TradeMark, and all eight applications could be consolidated and attended togetherin one action in the interest of justice, expediency and convenience.Therefore the order made by the learned District Judge was erroneous andwithout any rational justification.
The contention of the counsel for the Defendant-respondent was thatthe said eight applications were accepted, separately registered, separatelyadvertised and published in Government Gazettes. Thus the action filedby the plaintiff-appellant in the District Court praying for a declaration toset aside the registation of the Trade Mark of eight different classess inone application/action was bad in law; hence the order of the learnedDistrict Judge was a correct order which could have made in Law.
CAStassen Exports Ltd. Vs. Registrar of Patents &345
Trade Mardks and others (Balapatapendi, J.)
The Deputy Solicitor General had informed Court that no submissionswill be made on behalf of the 1 st Defendant – respondent the Registrar ofTrade Marks, and that she would abide by whatever order made by Court.
It is apparent that the question to be decided in this appeal is whetherthe procedure adopted by the plaintiff-appellant in the District Court undersection 172(2) of the Code of Intellectual Property Act was valid in law.
Any person aggrieved by any decision or order made by the Registrarof Trade Marks could come to Court under the provisions of section172 (2) or section 182 of the said Act.
Both sections do not provide any specific procedure to be followedin an appeal to the District Court against the order of the Registrar, the“Prescribed manner” referred to in section 172(2) had not been prescribedin the Act or in any Gazette notification. When there is no procedure laiddown for such an application/action the section 8 of the Civil ProcedureCode enacts that Save and except in actions in which it is by thisOrdinance specially provided that proceedings may be taken by way ofsummary procedure, every action shall commence and proceed by a courseof regular procedure, as hereinafter prescribed. “ Thus, I am of the opinionthat in the absence of any reference to the summary procedure in therelevant section of the said Act, the application/action could be filed underregular procedure. It is apparent that the plaintiff-appellant had institutedthe action rightly by the plaint dated 1st March 1991 was correct underregular procedure, (vide the decisions ofG.T.E. Directories Lanka (Pvt)Ltd vs. Mukthar Marikkar and others(n and Malhotra International (Pvt)Ltd. vs Anglo Asian Distributors and others<2>
It is to be noted that in the instant action the plaintiff-appellant hadsought inter alia a declaration to expunge the Trade Mark – “ Rabea” inrespect of eight applications registered in the register of Trade Marks. Iam of the view that as the procedure adopted by the plaintiff appellant wasregular procedure and the causes of action which were on the same TradeMark "Rabea” in respect of the eight applications registered was betweenthe same parties could be united in one action.
Further, in a situation of the kind, the Court should adopt a commonsense approach not prohibited by law, to prevent multiplicity of actions.
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However, having considered the facts and circumstances of the casethe learned District Judge could not have dismissed the action of thePlaintiff – appellant, when he could have ordered separate trials if any suchcauses of action cannot be conveniently tried or disposed together, interms of section 36 of the Civil Procedure Code.
For the reasons mentioned above, I set aside the Ordei of the learnedDistrict Judge dated 08.12.1992 on the preliminary objections raised withcosts of Rs. 10,000.
In view of the above mentioned order, it is needless to make an orderin the connected appeal bearing No. 733/92
IMAM, J. -1 agreeAppeal allowed.