Extension of Time under the Trademarks Law

The Supreme Court of Pakistan, in its ruling on M/s Tri-Star Industries (Pvt.) Limited vs. TRISA Burstenfabrik AG (2023 SCMR 1502), addressed a pivotal trademark dispute, shedding light on the procedural requirements for filing an opposition to trademark registration and the scope of discretion afforded to the Registrar of Trademarks under Pakistani law. This decision underscores the strict adherence required to procedural rules in intellectual property cases and clarifies the limits of the Registrar's discretionary powers.

Background:

M/s Tri-Star Industries, the petitioner, has been manufacturing toothbrushes and other related products under the trademark "TRISA" since 1983. This trademark, registered in Pakistan under Class 21, had gained a significant market presence. However, TRISA Burstenfabrik AG, a Swiss company, sought to register a similar trademark in Pakistan, leading to a conflict between the two entities.

The petitioner alleged that they were not properly notified of the respondent’s trademark application, which was advertised in the Trade Mark Journal. Consequently, they failed to file an opposition within the prescribed two-month period as required under the Trade Marks Act, 1940, and the Revised Trade Mark Rules, 1963. Upon realizing the oversight, the petitioner sought an extension of time from the Registrar of Trademarks, who, after consideration, granted a 108-day extension, allowing the petitioner to file their opposition late. The respondent challenged this decision in the Sindh High Court, which set aside the Registrar’s extension, prompting the petitioner to seek redress from the Supreme Court.

Key Issues:

Discretionary Powers of the Registrar: The primary issue revolved around whether the Registrar of Trademarks had properly exercised his discretion in granting an extension of time for the petitioner to file an opposition. The petitioner argued that the extension was necessary due to procedural failures on the part of the Trade Mark Office, particularly the lack of proper notification of the respondent's trademark application. The respondent, however, contended that the Registrar’s decision to grant an extension was arbitrary and contrary to the legal framework governing such extensions.

Mandatory vs. Directory Nature of Procedural Rules: Another critical issue was the interpretation of Rule 76 of the Revised Trade Mark Rules, 1963, which provides the Registrar with the authority to grant extensions of time under certain conditions. The Supreme Court needed to determine whether this rule was mandatory, requiring strict compliance, or directory, allowing for some degree of flexibility based on the circumstances.

Court’s Analysis and Conclusion: The Supreme Court upheld the Sindh High Court's decision, emphasizing the importance of strict adherence to procedural rules in the administration of justice, particularly in matters involving intellectual property rights. The Court concluded that the Registrar's decision to grant an extension of time was flawed for several reasons:

Improper Exercise of Discretion: The Court noted that the Registrar had failed to provide adequate reasoning for granting the 108-day extension. The Registrar is required to be "satisfied" that there are justifiable circumstances warranting an extension, which was not demonstrated in this case. The blanket approval of multiple retrospective extensions, without proper justification for each, was deemed to be an abuse of discretion.

Interpretation of Rule 76: The Court held that Rule 76, while allowing for extensions, must be applied in a manner consistent with the principles of fairness and justice. The rule permits the Registrar to extend time on a month-by-month basis, with a total extension not exceeding six months. The Registrar's decision to condone a 108-day delay in one go was found to be inconsistent with the rule's requirement that extensions be considered on a monthly basis, reflecting a lack of adherence to the procedural safeguards embedded in the rule.

Precedents and Legal Principles: The judgment extensively referred to past rulings that reinforce the principle that when a statute prescribes a particular procedure, it must be followed strictly. The Court cited cases such as Chaudhry Shujat Hussain vs. The State (1995 SCMR 1249) and Khalid Saeed vs. Shamim Rizvan and others (2003 SCMR 1505), which stress that statutory procedures are not merely formalities but essential steps that must be observed meticulously to ensure fairness in legal proceedings.

Final Determination: Based on the above analysis, the Supreme Court dismissed the petition, affirming the High Court's decision that the Registrar’s extension was improperly granted. The Court’s ruling underscores that procedural rules in trademark law are designed to ensure transparency and fairness, and any deviation from these rules must be justified with compelling reasons, which were absent in this case.

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