JUDGMENT
J.K. Mehra, J.
(1) This appeal has arisen from the order of the Deputy Registrar, Trade Marks allowing the application of the applicant treating the opposition proceedings as having been abandoned by operation of Rule 52 sub-rule (2) of the Trade & Merchandise Marks Rules, 1959 (hereinafter referred to as “the said Rules”).
(2) In the present case, Notice of opposition was filed on 10.8.92 and the counter- statement thereto was filed on 20.11.93. The evidence in support of opposition should have been filed latest by 20th January 1994 us provided under Rule 53(1) of the said Rules. As the opponents did not seek extension of time for filing the evidence within the period prescribed under Rule 53(1), it was held by the impugned order that the deeming provisions of Rule 53(2) of the said Rules had already come into operation and the opposition was deemed to have been abandoned and the Registrar had no power to extend the time after the deeming provision came into play.
(3) Before proceeding further with the case, it is relevant to peruse the provisions of Rules 53 and 106 of the said Rules which are reproduced hereunder:-
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 cither leave with the Registrar such evidence by way of affidavit as he may desire to adduce in support of his opposition or shall intimate to the Registrar and to the applicant in writing that he does not desire to adduce evidence 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 Registrar .under this sub-rule
(2)If an opponent lakes no action under sub- rule (1) within the time therein prescribed he shall, unless the Registrar otherwise directs he deemed to have abandoned his opposition.”
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 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 such as to justify the extension 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 he may 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 proceeding for which it is applied for has already expired.”
(4) In support of the impugned order and the interpretation of rule 53(2), reliance has been placed on the decision of this Court in C.M.(Main) No. 20 of 1977 Hindustan Embroidery Mills Pvt Ltd Vs. Hemla Embroidery Mills Pvt Ltd and another, wherein a single Judge ( D.K. Kapur, J., as his Lordship then was) has held that “unless the Registrar otherwise directs” the opposition under Rule 53(2) is deemed to have been abandoned and that Rule 53(2) is mandatory and operates automatically. The court in that case has held that it is not possible for the Registrar to extend time beyond the period prescribed under Rule 53(1), if no action is taken by the opponent and no extension is sought before the time runs out because the deeming effect of Rule 53(2) would then come into operation. However, before the deeming provision of rule 53(2) came into operation, the Registrar could have directed that the opposition shall not be deemed to have been abandoned and that he could also extend the time under rule 106 of the said rules for filing evidence.
(5) This matter again came up for consideration before another single bench of this Court ( B.N. Kirpal, J, as his Lordship then was) in the case of Richardson-Merrel Inc. Vs. La-Medica Private Ltd etc. in C.M.(Main) No.77 of 1979. After detailed discussion, the question of the powers of the Registrar to extend time was referred to a larger bench after referring the relevant provisions and the decision of D.K. Kapur, J., referred to hereinabove as also another decision of the same Judge. The matter was argued at length before the Division Bench comprising Prakash Narain, C.J. and S.Ranganathan, J. (as their Lordships then were), when both the judges took different views, as a consequence whereof the said Judges did not sign their respective judgments which were merely annexed to a short order passed by them referring to full bench the said question. I am informed that before the full bench could consider the matter, the parties reached a settlement and the controversy regarding interpretation of the aforesaid rules remained unresolved.
(6) This very controversy came up before Bombay High Court in the case of Kantilal Tulsidas Jobanputra Vs. The Registrar of Trade Marks and Lion Pencils Pvt Ltd reported as 1981 Iplr 93, where after considering various provisions of law Pendse, J. held that Rule 53(2) of the said Rules was directory and not mandatory and that the Registrar’s power to extend the time for filing evidence in support of the opposition did not stand extinguished if an application for extension of time was not filed or extension was not granted before the expiry of the period of two months prescribed by Rule 53(1). The said Judge further observed that it could not be overlooked that ultimately the Rules of Procedure before any Tribunal were for advancement of the cause of justice and not to close the doors preventing the parties to get determination on merits.
(7) I feel that the view taken by the Bombay Judge reflects the true intent of legislature because the effect of giving a restricted meaning to Rule 53(2) and holding it to be mandatory will only result into multiplicity of proceedings inasmuch as opponents will be driven to institute rectification proceedings for removing the trade marks from the register. Such an interpretation could not have been contemplated by the legislature otherwise there was no need of providing in Rule 106(2) that the Registrar could extend the time even if the time had already run out and also to provide in Rule 53(2) the words “unless the Registrar otherwise directs”. Under that rule the Registrar has an authority to extend the time, even if the time prescribed had already run out. Wherever it was intended that the lime can not be extended under Rule 106 that was so provided under Rule 106(1). For instance the time for filing notice of opposition which is fixed under Section 21 of Trade & Merchandise Marks Act, 1958 cannot be extended under Rule 106 by virtue of restriction contained in Rule 106(1) which provides for cases where the power to extend time cannot be exercised by the Registrar. Rule 53 does not figure in that category of cases.
(8) Recently my brother Anil Dev Singh, J. in C.M.(M) 59 of 1995 Vip Industries Vs. Registrar of Trade Marks has also delivered a judgment wherein he has followed the judgment of D.K.Kapur, J. A perusal of that judgment shows that the attention of my brother was not drawn to the decision of the Bombay High Court and also the difference of opinion which had come to exist between the two Judges of this Court.
(9) In my opinion the view of this court giving a very restricted meaning to .the Rule 53(2) needs to be reconsidered in the light of the views expressed by Hon’ble S.Ranganathan, J, as his Lordship then was, in his unsigned judgment while sitting in Division Bench and the views of Bombay High Court in the above referred judgment of Pendse J. I feel that a wider and less restricted view, in the circumstances, should be preferred. In the light of the above discussion, it would be appropriate to refer the following questions for decision to a larger Bench of this Court:-
(A)Whether Rule 53(2) of the Trade & 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 prescribed under Rule 53(1) of the Trade & 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 53(2)?
(10) Let the papers of this case be placed before Hon’ble the Chief Justice for constituting a larger Bench.