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 :

  1. Whether the proceedings under Section 124 of Trademarks Act 1999 were in the nature of rectification?

  2. 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 Section 124(1).

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.

© Lex Orbis 2008

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