The foundation of ‘Rules’ is presumed to be dependent on the statute and the main objective of ‘Rules’ is to provide ways to implement the substantive law. But at times, there emerges conflict between the substantive law and the procedural law. Even though the procedural rules are considered secondary to the substantive law, the rues of interpretation mandate that the same should be resolved by applying the principles of harmonious construction. Presently, the courts in India are witnessing a catena of cases that are dealt with the conflict with the Trademark Act, 1999 and Trademark rules 2002.
In B.M. Birla Heart Research Centre v. Shree Rajmoti Industries, Gujarat 2007 (34) PTC 288 (Reg.), the issue was with regard to the power of the Registrar to provide extension of time for filing opposition.
The Applicant B.M. Birla Heart Research Centre applied for trademark consisting of the device of ‘Open seed with pearl’ label and was the same was advertised in the Trademark Journal. But a notice of opposition along with an application for extension of filing notice of opposition was filed. This initiated the question as to whether the notice of opposition along with the request for extension of time was made with in the statutory period mandated.
The opponents contented that the Section 21 (1) of the Trademarks Act permits the filing of an extension application beyond three months period but not exceeding one month in aggregate. It is also contented that on the plain reading of the section it is evident that the legislature has not intended to prescribe the time limit of only three months for filing of notice of opposition and has not prescribed any time limit for filing the application for extension of time.
Rule 47 (6) of the Trademark Rules, 2002 provides that an application for extension for opposition has to be made on TM-44 along with the prescribed fee before the expiry of three months specified in section 21 (1) of the Act.
It is contented by Shree Rajmoti Industries that the Rule is contrary to the intention of the legislature and is against the established principles of law and that the discretion conferred by the Act cannot be taken away by the Rules. Strict construction of the Rules ends up in not providing discretion to the Registrar and would debar genuine cases, where the proprietor of the mark becomes aware of the conflicting mark only after three months of the publication but before the expiry of four months.
The Registrar while determining the question on whether Rule 47 can be said to be mandatory or merely directory held that it is a settled law that the procedural requirements must be construed as directory in nature and not mandatory, unless a statute prescribes otherwise. The Registrar also observed that the legal fiction is not absolute, but being controlled by the discretion of the Registrar. The Registrar further observed that if the Rules are strictly construed, that would result in fettering the discretionary power awarded to the Registrar which accordingly is not the mandate of the Act.
The Registrar instead of holding that the Rule as contrary to the Act, applied the principles of harmonious construction to hold that an application for extension of time beyond the period of three months could be permitted at the discretion of the Registrar as the Rule is directory in nature and not mandatory.
The Rules are procedural in nature and are subordinate to the Act which are substantive in character. The different High Courts have consistently took up the stand that the Trademarks Act should prevail over Rules.
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