India: The Effect Of An Abandonment Order On The Pending Appeal Would Have To Be Considered By The IPAB On Merits

In the case of Sharp Kabushiki Kaisha (Petitioner) v Sunil Grover and Ors (Respondents), Sunil Grover (Respondent No.1) sought for registration of the trademark "SHARP" in respect to "Television Boosters, two in one, television antenna and converters". Two parties, one Sharp Kabushiki Kaisha ("SKK") and secondly M/s Associated Electronics and Electricals Industries (Bangalore) Pvt. Limited (AEEIPL), opposed this. The registration was refused by the Deputy Registrar of Trade Marks, Delhi (Respondent No.2). Respondent No.1 filed an appeal against the said refusal which was pending before the court. As regards opposition filed by AEEIPL, the Deputy Registrar of Trade Marks held that the application filed by Respondent No. 1 was to be abandoned for the want of prosecution in terms of Rule 56(3). The said order according to the Petitioner SKK became final, as respondent No.1 filed no appeal against it.

Later, after the hearing of the Respondent's appeal, the Intellectual Property Appellate Board (IPAB) in an order dated 16 August 2007, observed and held, that the order which had been passed by the Deputy Registrar of Trade Marks holding the trade mark registration application of Respondent No.1, as having been abandoned, was not directly connected with the issue involved in the appeal, and that the IPAB had no jurisdiction to pass any order in relation to the said order of the Deputy Registrar of Trade Marks. This order of the IPAB was impugned in the present petition.

Thereafter, the IPAB by a second impugned order dated 12 December, 2001, declined to entertain SKK's prayer that the IPAB should dispose of the appeal with regard to the abandonment of the application, but clarified that it would be open to SKK to raise all such contentions in the main hearing.

The Court, therefore with regard to the submissions made by the Petitioner for disposing the impugned order observed:

• That the view taken by the IPAB in the second impugned order could not be faulted, for Respondent No.1 had the right to appeal against the order refusing the registration, which was pending before the IPAB.
• That the effect of an abandonment order on the pending appeal would have to be considered by the IPAB on merits.
• Further it was not necessary for the court to pronounce on the effect of such abandonment.

It was thus held by the Court that, neither the impugned order dated 16 August, 2007, nor the order dated 12 December, 2007, of the IPAB called for any interference. The Court thus requested that the IPAB had to endeavor to dispose of the appeal within a period of six months. The writ petition was therefore disposed of.

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