A well established tenet in the legal domain is that
"it is the substance that counts and must take precedence
over mere form." Accordingly, a procedural provision would
have to be regarded as not being mandatory and unless some
prejudice was caused to the other side. When the Legislature
does not itself state what ought to be mandatory and what
merely directory, the judges must determine the matter vide
their discretionary powers and sort out one from the other
along broadbased lines. The Supreme court echoes the same
responsiveness in Pratap Singh v. Shri Krishna Gupta AIR 1956
SC 140, by stating that "some rules are vital and got to
be the root of the matter: they cannot be broken; others are
only directory and a breach of them can be overlooked provided
there is substantial compliance with the rules read as a whole
and provided no prejudice ensues." In the case of BDA
Private Limited v. Paul P. John & Others 2008 (37) PTC 41
(Del.), an issue having similar bearings cropped up.
The plaintiffs were the registered users of the trademark
'OFFICERS CHOICE' in class 33 for Alcoholic
Beverages. The defendants applied for registration of their
mark 'ORIGINAL CHOICE' in the same class,
against which the plaintiff filed a notice of opposition which
was not taken on record as being filed after the prescribed
time limit. After the registration of the defendant's
mark, plaintiff preferred an appeal against the order of the
Deputy Registrar in IPAB and took refuge under Section 124 of
the Trademarks Act 1999 challenging the validity of
registration of the defendant's mark and stay of the
proceedings. The defendant's averred that the rights
stemming from registration could not be challenged in view of
Sections 28(3) and 30(2)(e) of the statute. When the plaintiffs
stated that the appeal before the IPAB was a proceeding for the
rectification of the register, the defendants refuted by saying
that the application for registration had to be made in a
prescribed form which had not been done. The questions to be
determined by the court were :
Whether the proceedings under Section 124 of Trademarks
Act 1999 were in the nature of rectification?
Whether the plea of invalidity of defendant's
registration was tenable?
Regarding the first question, the court observed that the
relief for granting the rectification of the register was not
available at the current stage of the appeal. The appeal was in
the nature of an opposition and not of rectification. The
application for rectification had to be made in a prescribed
manner which had not been done. Such a relief could be granted
after hearing of the appeal and not on a prima facie
review. When the act itself gives a definitive meaning to
rectification, and outlines the procedure, then any other
proceeding incidentally resulting in rectification of register
would not be regarded as rectification proceedings under
The court answering the second question acquiesced with the
plaintiffs to uphold the plea of invalidity of registration.
The court held that the plea of the plaintiff is "not
frivolous and definitely raises a substantial triable issue
even in respect of the question of rejection of the
plaintiff's notice of opposition on the grounds of
limitation. Agreeing to the plaintiff's contention, the
court observed that to judge the true character of the
legislation, the true object of the provision of law and its
design and context had to be ascertained. If the object of the
law is to be defeated by non-compliance with it, it has to be
regarded as mandatory. The court even affirmed the contention
taken at this stage by the plaintiffs that the mark ORIGINAL
CHOICE was impeded by Section 11(1) (b) of Trademarks Act being
similar to the plaintiff's mark in relation to same
goods which similarity was admitted by the defendants.
According to the rule of evidence, admissions in pleadings or
judicial admissions made by the parties stand on a higher
footing than evidentiary admissions. Such admissions constitute
a waiver of proof.
The plaintiffs at the same time pleaded that inadvertently
unsigned cheque as the payment of fees was a curable defect
because it did not prejudice the other parties interests per
se. in this regard, the court examined Sections 21(1) and
150(1) of the Act to aver that the plaintiffs plea was merited
and the entire purpose of the Act would be defeated if the
plaintiff's case was rejected on this ground. The court
said, "The plaintiff has clearly and categorically
challenged the validity of defendant's
registration." Accordingly, the court adjourned the case
for three months to enable rectification of the Register.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).