This writ petition raises a question as to whether the Registrar of Trade Marks can allow a notice of opposition to the registration of a trade mark to be given beyond the period prescribed under Section 21 of the Trade Marks Act, 1999.

2. In other words, this writ petition raises the question as to whether the Registrar of Trade Marks can receive a notice of opposition to the registration of a trade mark given beyond the period prescribed under Section 21 of the Trade Marks Act, 1999.

3. The short facts leading to the filing of this writ petition are hereunder:

The petitioner and the respondent 3 herein are both companies engaged in the manufacture and marketing of alcoholic beverages including Indian Made Foreign Liquor (IMFL). One of the brands under which the petitioner sells its alcoholic beverages being whisky is known as Officer’s Choice. The petitioner claims that the product under this brand name is in the market since 1988, but the petitioner became the proprietor thereof from 23rd February, 2007. The trade mark registration for the mark Officer’s Choice in Class No.33 in respect of alcoholic beverages namely, whisky has been registered under Registration No.538927B with effect from 26th October, 1990, the same has been renewed subsequently, and presently it is duly recorded in the name of the petitioner.

4. The respondent 3 claims to be selling another alcoholic beverage being whisky under the mark Original Choice, and it claims that it was earlier used by its predecessor viz., one National Distillery and Allied Products Private Limited since about 1995. On 4th April, 1996 the respondent 3 applied for the trade mark registration of Original Choice by making Application No.722161 in Class No.33 in its name. The respondent 3 had also obtained a copy right registration for that label on 04th March, 2000 by claiming the date of first use in the year 1996.

5. In May, 2002 the petitioner filed a suit bearing Civil Suit (O.S.) No.1058 of 2002 in the High Court of Delhi for passing off on the ground of deceptive similarity, but did not get the injunction as sought for. It subsequently filed one more suit in the year 2007 on the basis alleged infringement. (We have been informed that ultimately the application for interim injunction in both the suits were rejected by a common order of the Delhi High Court on 11th July, 2008, and the appeal there from was rejected by a Division Bench of that Court on 29th September, 2008, and the Special Leave Petitions being Special Leave to Appeal (Civil) Nos.4601-4602/2009 were also dismissed by the Apex Court on 06th March, 2009).

6. The above referred petition of the respondent 3 for registration of the trade mark Original Choice was published in the Trade Mark Journal Mega-2 on 2nd December 2003 (at page 5307) inviting the objections from the public.

7. Section 21 of the Trade Marks Act requires a party opposing such registration to file a notice of opposition to the registration within three months from the date of the advertisement. The Registrar, however, has the power to extend the period by one month, if any such application is made in the prescribed manner and on payment of the prescribed fees. Accordingly, the petitioner filed the necessary application for extension of time on 01st March, 2004 in Form TM-44 along with the requisite fee of Rs.500/-i.e., within three months period, and got the extension of one month. The period of four months was to expire on 01st April, 2004. On 31st March, 2004, the petitioner presented a paper book with the requisite From TM 5 before the Registry along with the leaflet of a cheque on which the requisite fee of Rs.2,500/-was written, but the cheque was not signed. The Trade Mark Registry sent a letter to the petitioner on the next day i.e., on 01st April, 2004 returning the cheque for compliance. The petitioner re-presented the cheque duly signed on 13th April, 2004, which was received by the Trade Mark Registry on 15th April, 200