S. Jagadeesan, J. (Chairman)

1. The petitioner has filed this petition under Sections 56 and 107 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the), for cancellation of the entry dated 25.10.1980 by entering the respondents as registered proprietors of the impugned mark. Originally, the petition was filed in CO 32/1995 on the file of the High Court of Delhi at New Delhi and subsequently transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TRA/147/2004/TM/DEL.

2. The claim of the petitioner is that in 1971, four brothers, namely, S/Shri Kesar Singh, Ajit Singh, Teg Bahadur Singh and Navrattan Singh, all sons of Kirpal Singh, applied for registration of the trade mark RIAT in respect of crank shaft, grinding machines and centreless grinding machines. The said mark was duly registered under No.276200 in the name of the said four brothers trading as M/s. Riat Machine Tools in class 7 of the Fourth Schedule of the said Act. By mutual consent, the partnership was dissolved under the dissolution deed dated 1.9.1978. S/Shri Ajit Singh and Teg Bahadur Singh retired from the said partnership business and as per clause 8 and 9 of the dissolution deed, they are entitled to manufacture centreless grinders, duplex surface grinders, bar straightening machines of all sizes, planners of all types and sizes and they are also entitled to use the mark RIAT in respect of the four items alone. By virtue of the dissolution deed, the four items became the exclusive property of the retiring partners and after the death of Shri Ajit Singh, his wife Smt. Balwant Kaur, joined the firm M/s. Riat Grinders, which had the sister concern namely, Ajit Machine Tools. On 31.3.1992, a dissolution took place between Shri Teg Bahadur Singh and Smt. Balwant Kaur, wife of Shri Ajit Singh by which M/s. Riat Grinders was taken over by Shri Teg Bahadur Singh and M/s. Ajit Machine Tools was taken over by the legal representatives of Shri Ajit Singh. There was a subsequent agreement dated 28.10.1993 between Shri Teg Bahadur Singh and Smt. Balwant Kaur, wife of Shri Ajit Singh, by which the rights of centreless grinders and duplex grinders along with the trade mark RIAT came to the share of Smt. Balwant Kaur. Hence, the legal representatives of Shri Ajit Singh under the trading name of M/s. Ajit Machine Tools are entitled to use the trade mark RIAT. Respondents No.2 and 3 are the sons of the first respondent and they are carrying on the business of partnership concern under the name and style of Riat Machine Tools. The petitioners came to know that the respondents No.1 to 3 applied for the change of the name in the Register pertaining to the trade mark No.246200 by filing TM 24 dated 13.5.1980 and the same was ordered. The petitioners came to know about the same through the criminal complaint filed by the respondents No.1 to 3 against the petitioners under Sections 78 and 79 of the said Act. The respondents No.4 and 5 ordered and the TM 24 filed by the respondents No.1 to 3 and changed the proprietorship of the said trade mark in the Registry on 25.10.1980. The present application is to rectify the said entry on the ground that respondents No.4 and 5 did not issue any notice on Form TM 24 to the petitioners. Since the issue of notice is a mandatory one, failure to do so by the respondents No.4 and 5 vitiates the entries made in the Register. Even apart from that, on the canons of natural justice, respondents No.4 and 5 ought to have issued notice to the petitioners before ever any modification is made in the Register pursuant to the claim made by third parties.

3. The respondents No.1 to 3 filed their reply stating that the petitioners partnership concern is an unregistered one and as such the proceedings is barred under Section 69 of the Partnership Act. The respondents denied the claim of the petitioners that they are entitled to use the trade mark RIAT pursuant to the dissolution deed of the partnership concern. Further, the petition is barred by limitation since already 15 years had elapsed and the petitioners had full knowledge of the change in the Register. Hence, the petitioners are guilty of delay and latches and as such, the petition is liable to be dismissed. The respondents also claimed that they are the proprietors, inventors and creators of the impugned trade mark and the registration of which had been periodically renewed from 11.11.1978 and till today it is valid. In the criminal complaint one of the petitioners Shri Kartar Singh, son of Shri Hazara Singh, partner of M/s. Ajit Machine Tools had given a statement on oath that he will not use the trade mark RIAT either himself or in the name of the firm in future nor he would sell or offer for sale any goods manufactured by them having trade mark RIAT. Pursuant to this undertaking, the Criminal complaint filed by the respondents No.1 to 3 was dismissed. Having given an undertaking before the Criminal Court, now, it is not open to the petitioners to claim any right in the said trade mark RIAT. Consequently, the petition is liable to be dismissed. The petitioners filed a rejoinder stating that the entry made in the Register incorporating the names of the respondents No.1 to 3 as the proprietors is by fraud and the fraud being a continuous offence, the question of limitation does not arise. In support of the petition, the petitioners have also filed the certified copy of the deed of dissolution dated 31.7.1979 marked as Annexure-P3.

4. Shri Surinder Singh appeared on behalf of the petitioners and Shri Samar Bansal on behalf of the respondents No.1 to 3.

5. The learned counsel for the petitioners contended that the notice to the registered proprietors of the trade mark before ever any order is being passed on TM 24 is a mandatory one. Failure to carry out mandatory requirement by the respondents No.4 and 5 vitiates the impugned entry. On this short ground, the petition has to be ordered. He also placed his reliance on the two judgments viz., the case of Kohinoor Paints Faridabad (P) Ltd. v. Paramveer Singh and Anr. Reported in 1996 (16) PTC 69 and the case of Darshan Lal Dhooper v. Motia Rani and Ors. reported in 2002(26) PTC 587 (Del). He further contended that the undertaking given before the Criminal Court is due to various reasons, mostly to avoid the criminal prosecution and as such, the same cannot be taken against the petitioners either as estoppel or otherwise. The impugned entry is in violation of the principles of natural justice and as such, the same is ab initio void. In such circumstances, as and when the respondents claim the benefit of the impugned entry, it is open to the petitioners to object the same and hence the limitation does not arise.

6. The learned counsel for the respondents No.1 to 3 contended that the petitioners have failed to mention the date of knowledge of the impugned entry. The criminal complaint was filed against the petitioners as early as in 1982. Immediately on receipt of the summons, the petitioners ought to have known about the same. There is absolutely no explanation on their part for the delay in filing the present petition which was in 1995. The entry being in the Register for more than 15 years at the time of filing this petition and as such, the petition is liable to be dismissed on the ground of latches. The Courts have held that Article 137 of the Limitation Act will come into play in cases of rectification as held by the Delhi High Court in the case of Fedders Lloyd Corporation Pvt. Ltd. and Anr. v. Fedders Corporation and Anr. Reported in 69(1997) DELHI LAW TIMES 474 and in the case of Rakesh Kumar Gupta v. Goresh Domestic Appliances and Ors. reported in 2003(26) PTC 517. He contended that even assuming that the limitation is not attracted, still the petitioners ought to have approached the Court within a reasonable time after their knowledge. They cannot sleep over the matter for years together and approach the Court after allowing the respondents to use the mark for a considerable length of time. Above all, the respondents filed TM 24 pursuant to the assignment and after the dissolution deed dated 1.9.1978. The petitioners as such have no right in the disputed trade mark and hence, the petition is liable to be dismissed.

7. We have carefully considered the above contentions of both the counsel.

8. Though, prima facie, there is something to be said with regard to the notice contemplated on TM 24, we are of the view that the same does not arise in the case on hand due to the lapse on the part of the petitioners. Admittedly, the respondents filed criminal complaint against the petitioners in the year 1982. The petitioners had deliberately suppressed the date on which they received the summons. It is the date on which the petitioners had the knowledge about the impugned entry in the Register. When that be so, the petitioners deliberately committed delay in filing this petition. Even though earlier, the view was that there is no limitation, but, now, to avoid any unnecessary harassment like this, the Courts have taken the view that the provisions of limitation Act is applicable atleast in the proceedings before the High Court. The Delhi High Court in the case of Fedders Lloyd Corporation Pvt. Ltd. and Anr. v. Fedders Corporation and Anr. Reported in 69(1997) DELHI LAW TIMES 474 has held as under:

"It will be seen from Sub-section (4) of Section 108 that the provisions of the CPC would apply to the application to the High Court under this section. In this case, we are concerned only with the question what is the period of limitation for rectification petition filed in the High Court or in any Civil Court. Article 137 of the Limitation Act, 1963 is the relevant article and the same is as follows:

Description of suit Period of Time from Limitation which period begins to run Any other application for which no Three years When the right to period of limitation is provided apply accrues. elsewhere in this Division.

It is well settled in construing an article in a Statute of limitation that all the three columns have to be read together. The third column states that the application must be filed within three years from the date when the right to sue accrues. The petitioners ought to have filed an application for rectification when the right to sue accrued in 1972 when the first respondent filed the suit before the Calcutta High Court. The petitioners cannot contend relying upon the provisions of Section 46 which provides that conditions for rectification and then contended that provisions provide for five years and one month and, therefore, the petition for rectification is not governed by any of the provisions of the Limitation Act, 1963. Section 46 of the Trade & Merchandise Marks Act, 1958 reads as under:-

Removal from register and imposition of limitation on ground of non-use (1) Subject to the provisions of Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either:-

(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or in a case to which the provisions of Section 45 apply, by the Company concerned, and that there has in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application; or

(b) that upto a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being:

Provided that, except where the applicant has been permitted under Sub-section 3 of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Clause (a) or (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description being goods in respect of which the trade mark is registered.

(2) Where in relation to any goods in respect of which a trade mark is registered:-

(a) the circumstances referred to in Clause(b) of Sub-section (1) are shown to exist so far as regards non-use of the trade in relation to goods to be sold, or otherwise traded in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and

(b) a person has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark;

on application by that person in the prescribed manner to a High Court or to the Registrar, the Tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that registration shall cease to extend to such use.

(3) An application shall not be entitled to rely for the purposes of Clause (b) of Sub-section (1) or for the purpose of Sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon, or not to use the trade mark in relation to the goods to which the application relates.

The Trade Mark Act is both substantive and procedural law. The petitioners cannot keep quite for a considerable length of time and then take their own time for filing an application for rectification.

In my view, the petition is barred by limitation under Article 137 of the Limitation Act, 1963.".

9. The Delhi High Court in yet another judgment in the case of Patel Field Marshal Agencies v. P.M. Diesels Ltd. - 1998 (18) PTC 463 also held that the proceedings under Section 56 read with Section 46 of the said Act is governed by the provisions of Article 137 of the Limitation Act. The Delhi High Court in the case of Rakesh Kumar Gupta v. Goresh Domestic Appliances and Ors. reported in 2003(26) PTC 517 held that Article 137 of the Limitation Act would apply to an application under Section 56 of the Trade and Merchandise Marks Act, 1958, for consideration, to which the period is three years from the date when the right to apply accrues in the following terms:

"........... The learned counsel appearing for the petitioner, however, submits that right to apply under section 56 of the Trade and Merchandise Marks Act would accrue to the petitioner when he came to know of the entry made of the respondent No.1s trade mark and not on the date when the entry was actually made. Even assuming that the learned counsel for the petitioner is right in submitting that his right to apply under section 56 would accrue to him when he came to know of the entry made in the Register and that the period of limitation will have to be computed from the date of the knowledge. The facts that are required to be disclosed for decision of this claim are (a) that the petitioner was not aware of the entry made on the date when the entry was made and (b) that he for the first time came to know of the entry at a subsequent point of time. The petitioner will have to state the exact date and time when he came to know of the entry made. Perusal of the petition shows that there is no claim made in the petition that the petitioner was not aware of the entry made either on the date when the entry was made. It is also not claimed that the petitioner became aware of the entry or that the entry was brought to his knowledge at any subsequent point of time. The learned counsel for the petitioner submits that the petitioner has sought leave of this Court to refer to and rely on the papers of the civil suit that the petitioner had filed in Delhi High Court and in the plaint filed in Delhi High Court, such averments have been made in my opinion, this will not comply with the requirements of making specific averments in this petition. In this petition, in order to claim that the starting point of limitation would be some other date than the date of entry in the register, the petitioner will have to make that claim first and then he can rely on document to support of that claim. In the present petition, that claim itself is absent. In my opinion, therefore, the petitioner cannot succeed in establishing that his petition has been filed within the period of limitation provided by law."

10. Though it can be said that the Limitation Act is applicable only in the proceedings before the Court, we would like to make it clear that the constitution of the Appellate Board under the Trade Marks Act, 1999, is to discharge the functions of the High Court which is clear from the fact that the appeals and the petitions arising out of the Trade and Merchandise Marks Act, 1958 are to be transferred to this Board. Moreover, this Board is discharging only the judicial functions and as such, it cannot be termed as a quasi judicial Tribunal or an Executive Tribunal. Virtually, the Board has stepped into the shoes of the High Court in respect of the transferred matters assuming the jurisdiction of the High Court in disposal of such matters.

11. In the case on hand, the petitioners admitted about the knowledge of the impugned entry immediately after the criminal complaint against them. The complaint is of the year 1982. But, nowhere they have stated the date of knowledge of the criminal complaint to postpone the limitation as held in Rakesh Kumar Guptas case 2003 (26) PTC 517. Hence, at least from 1983, the petitioners must have knowledge and as such, the petition is barred by limitation.

12. Apart from this, one other aspect is that the petitioner appeared before the Criminal Court pursuant to the complaint given by the respondents under Section 78 and 79 of the said Act. The third petitioner had given a statement which is as under: "I shall not use the trade mark RIAT either myself or in the name of the firm in future nor I sell or offer for sale any goods manufactured by us having trade mark RIAT." Pursuant to this statement, the Judicial Magistrate of Ludhiana has passed the following: "In view of the statement of the parties recorded above, the present complaint stands dismissed as withdrawn.". This statement is dated 5.6.1996 and the order is also of the same date. Though the original petition was filed in the High Court of Delhi as early as on 26.10.1995, the statement of the third petitioner before the Criminal Court is subsequent to the filing of the petition. The statement forms part of the defence as there is a specific mention in the reply filed by the respondents.

13. The learned counsel for the petitioner, however, contended that the said statement cannot be taken into consideration as the same was given by the third petitioner to avoid the criminal prosecution and the same is not admissible for any other purpose. We are not able to agree with the said contention of the learned counsel for the petitioner. At the outset, we would like to state that whatever the statement given by a party before a Court of law is an admissible one. It is not open to the party to contend that to avoid any criminal liability he has given such statement which means to escape from the clutches of the criminal proceedings he has given the statement. It should be remembered that by such statements, he persuaded the respondents to get the criminal complaint dismissed. So, on the basis of this statement, the respondents have acted and the Court also passed the order dismissing the complaint. Having got the benefit of acquittal or the dismissal of the criminal complaint, now, it is not open to the petitioners to contend that such undertaking given before the criminal court cannot be taken into consideration. If that statement is taken into consideration, the petitioners have no right in the disputed trade mark and consequently, they cannot be considered to be the aggrieved persons. In light of the above, we are of the view that the petition is devoid of any merit as the same is barred by limitation and the undertaking given by the third petitioner before the Criminal Court deprive their right to make any claim in the disputed trade mark.

14. Accordingly, the TRA is dismissed. However, there will be no order as to costs.