' ZULFIQAR AHMAD KHAN, J.---Facts giving rise to the instant petitions are that the petitioner, a company engaged in the manufacture of sweets, candies and chocolates etc., having seen a trade mark advertised in the Trade Mark Journal No, 707 published on 09.10.2011 for public opposition under section 28(1) of the Trade Marks Ordinance, 2001 ("the Ordinance"), allegedly resembling with some of its trade marks, decided to oppose the said trade mark as per the procedure provided under subsections (2) and (3) of section 28 the Ordinance, where any person interested to oppose a trade mark is required to make an application in the prescribed manner and file the same along with the prescribed fee, within two months from the date of the advertisement (or re-advertisement) or within such further period, not exceeding two months in the aggregate. Elaboration of the said scheme capitulated under the Ordinance and the applicable Trade Marks Rules 2004 ("the Rules") is that once a trade mark has been advertised under section 28(1) and the person interested to file an opposition is not in a position to make up his mind or to prepare necessary documents to oppose the so advertised trade mark within two months' of initial period, he can seek an extension of time under Rule 80(2) of the Rules by making an application on Form TM-56 (along with the prescribed fee) seeking an extension of time (before the expiry of the initial two months' period) for one month initially and if the party concerned needs another month's extension, law requires that he has to file a second application for the extension of time (before the last date of the expiry of the time extended by filing the first extension of time) on Form TM-56 and pay the prescribed fee again.
2. In the instant case when the mark was advertised on 09.10.2011 initial two months' period to file opposition (without seeking any extensions) lapsed on 09.12.2011. It is an admitted position between the parties, however, no documents have been attached to substantiate the same, that the petitioner timely sought two extensions of time (one month - at a time) thereby making him eligible to file the opposition up to the maximum extended time limits of four months falling due on 09.02.2012. It is also admitted (and evident per record) that the petitioner filed the appropriate opposition on the prescribed Form TM-5 on 08.02.2012 (which was a day before the expiry of the extended period of total four months), however, the said application on the Form TM-5 did not accompany the prescribed fee of Rs,6,000; which error was rectified by the petitioner on 24.02.2012 (14 days after the maximum four months' time limit fallen due on 09.02.2012) by paying the prescribed fee.
3. With this background, counsel for the petitioner contended that under section 123 of the Ordinance, the Registrar, who vide his letter dated 22.03.2012 (Annexure P-10) refused to consider the opposition filed by the petitioner (alleging that the opposition shall be deemed to have been filed on the date when the prescribed fee was paid, was thus 14 days late), could have extended the said statutory time limit from 09.02.2012, up to 24.02.2012, as he has discretion under section 123 of the Ordinance in this respect, and he ought not to have refused the opposition filed on the prescribed Form TM-5 of the petitioner, in limine.
4. Since we will dilate upon provisions embodied in the above referred section, we find it appropriate to reproduce the same in verbatim hereunder:-
123. Extension of time.-
(1) If the Registrar is satisfied, on application made to him in the prescribed manner and accompanied by the prescribed fee, that there is sufficient cause for extending the time for doing any act not being a time expressly provided in this Ordinance, whether the time so specified has expired or not, he may subject to such conditions as he may think fit to impose, extend the time and inform the parties accordingly. [Emphasis Supplied]
(2) Nothing in subsection (1) shall be deemed to require the Registrar to hear the parties before disposing of an application for extension of time and no appeal shall lie from any order of the Registrar under this section.
5. Provisions of the above referred section, in our view, does not come to the rescue of the petitioner's case. As evident from the language thereof, the Registrar acting under subsection (1) of the above quoted section can only extend time for doing any act for which the time limit is not so expressly provided in the Ordinance. As mentioned in the foregoing paragraphs, section 28(2) of the Ordinance specifically prescribes that an opposition can be filed within an initial period of two months or after a further extended period of additional two months in aggregate (therefore totaling four months from the date of the advertisement). The Registrar is thus handicapped under subsection (1) of section 123 from exercising any power to extend the time limit for filing an opposition beyond the time limit of total four months so expressly provided under section 28(2).
The rigidity embodied in the said subsection (1) regarding adherence to the time frame is carried over to subsection (2) of the section 123, which on the face of it, though appears to be against the principle of natural justice, where the Registrar is not required to hear parties before deciding the matter against them (bonded by the force that the said order of the Registrar is not even appealable) has very fundamental and principled reasoning. The touchstone of the safeguard of public policy is behind this strict rule aiming that once statutory time limit for doing an act specifically provided by the legislation has expired and period in question thus lapsed, with the turning of the clock over, rights of those parties become more stronger who have been waiting for this window of time to close and any extension of that time-limit would be at the cost and disadvantage to those persons whose rights accrue from the date of expiry of the said statutory dead-line and enabling the Registrar to be in a discretionary position to extended such time-limit would inversely affect legit and long awaited rights of other set of persons and, generally against the public at large.
6. Amplifying on these grounds, the learned counsel for the Respondent No, 1 submitted that the rejection of the petitioner's opposition as being beyond time was rightly rejected by the Trade Marks Registry because the legislature provided a fixed term for moving the application under section 28(2). It was contended that the initial period prescribed for an opposition application is two months from the date of advertisement or re-advertisement of an application for registration.
Section 28(2) itself provides for a further period, not exceeding two months in the aggregate, which may be allowed by the Registrar on an application made to him. In the present case the petitioner has (seemingly) submitted applications for the extensions for time twice, which were accompanied with the prescribed fee and were found to be in order and time was therefore extended up to 09.02.2012. The notice of opposition on Form TM-5 was filed on 08.02.2012 but since the prescribed fee was only paid on 24.02.2012, the notice of opposition on Form TM-5, would be construed as having been filed on 24.02.2012 and not on 08.02.20012. That being the case, it would be beyond the prescribed tithe-limit of total four months and, therefore, the Registrar has correctly rejected the same on the ground of limitation by virtue of the order dated 22.03.2012.
7. For the foregoing reasons, we are of the view that the first contention of the learned counsel for the petitioner is rebutted by the aforesaid discussion concluding that the legislature is very firm in this respect and the Registrar has no power to extend the time-limit to any further period (let alone 14 days) from the total aggregated period of four months from the date of advertisement (or re- advertisement) of the trade mark in the Trade Marks Journal.
8. In our mind, the true case of the petitioner is whatever any rights accrued to the petitioner, who did not pay the prescribed fee in respect of the Form TM-5 in time and when he turned around to pay the prescribed fee, the statutory time-limit of payment has already lapsed? In other words the question before us is whether the Registrar should have accepted the opposition made on the TM- 5 filed without accompanying fee on 08.02.2012 as a legit and live document, thereby should the Court consider the said TM-5 appropriately filed for the purpose of opposition made under section 28?
9. To attend to this query, we find it prudent to consider law and regulations regarding fees payable in respect of trade mark applications etc., which are contained in section 128 of the Ordinance as well as in Rule 4 of the Rules. These provisions are reproduced in the following: Section 128 - Fees.
(1) There shall be paid in respect of applications and registration and other matters under this Ordinance such fees as may be prescribed.
(2) Provisions may be made by rules for-
(a) the payment of a single fee in respect of two or more matters; and
(b) the circumstances' if any in which a fee may be repaid or remitted. [Emphasis Supplied] ' Rule 4 - Requirement as to fee.
(1) Any fee to be paid in respect of an application, registration or any other matter under the Ordinance or these rules shall be as specified in the First Schedule.
(2) Fee may be paid in cash at the Registry or any Branch Registry or may be sent by money order, postal order, cheque, bank draft or pay order payable to the Registrar.
(3) Cheques not carrying the correct addition for commission, and other cheques on which the full value cannot be collected in cash within the time allowed for payment of the fee shall be accepted only at the discretion of the Registrar.
(4) Stamps shall not be received in payment of any fee.
(5) Any Form required to be filed with the Registrar in respect of any specified matter shall be subject to the payment of the fee, if any, payable in respect of that matter under these rules.
[Emphasis Supplied]
10. An analysis of the aforesaid provisions of the law and regulations depict that while the ambit of the fee chargeability is enveloped by section 128, the provision as to fees are given in Rule 4.
Sub-rule (1) read with Sub-rule (5) which specifically provide that fees must be paid in respect of an application, registration or other matter. Notice of Opposition, per First Schedule is to be made on the prescribed Form TM-5 and fee prescribed in respect of the filing of the said Form is specified in the First Schedule as Rs,6,000. Therefore a combined reading of these Sub-rules in the light of section 128 depicts that it was mandatory that the application on Form TM-5 should have been made in the prescribed manner and along with the prescribed fee. If the same was not done then the consequences thereof would flow, a hint of which is given in Sub-rule (3) which creates a situation similar to one in hand in the instant case, where a cheque was not attached along with Form TM-5 at all. To highlight intention of the said sub-rule, imagine a scenario in which the petitioner had attached a cheque of say Rs,5,000 (or of any amount lesser than Rs,6,000) along with the Form TM-5. The said Sub-rule (3) would have then been applicable, and when we read this sub-rule in the given example of this case, we still are clear of the intention of the legislature, that even in such circumstance where an applicant has made payment of fees in amounts lesser than those required to be paid in terms of First Schedule, law requires the Registrar to accept such short of fees only in the circumstance when the application is made "within the time allowed for payment". In the present case where the petitioner completely forgotten to attach a cheque of the prescribed fee of Rs,6,000 along with Notice of Opposition filed on Form TM-5 and only paid the required fee after the time allowed for the payment of the fees on 09.02.2012 had already lapsed.
So even in terms of the above referred provision, we do not find it a legal possibility for the Registrar to have accepted the payment made in respect of Form TM-5 on 24.02.2012 instead of 09.02.2012.
11. Also of relevance is Sub-rule (5) of Rule 80 regarding extension of time which provides that where a request for extension is made after the time thereof has expired, the Registrar may at his discretion extend period of time if he is satisfied with the explanation for the delay in requesting the extension and it appears to him that any extension would not disadvantages any other person or party effected by it. If we read this clause within the scope of section 123 and section 28(2), while we can deduce that the Registrar is not competent to provide any extension beyond the term of aggregate four months, which already has been specified by the legislature, notwithstanding therewith as discussed in the foregoing, when the time allowed in respect of any legal act expires, the clock moves against the person sleeping over his rights towards the other person whose rights get the sunshine, and no act can put later at a disadvantageous position by granting an extension of time beyond the period stipulated by the legislature.
12. While we note that no request was made after the lapse of four months aggregate period envisaged under section 28(2), we are still of the view that even if such a request was made, Registrar was not competent to allow such an extension because right of the petitioner has extinguished on the mid night of 09.02.2012 and any extension to such a date would be disadvantageous to the legally matured rights of people at large, waiting for the sun to rise.
13.The upshot of the foregoing discussion is that the petitioner's opposition though filed within the statutory period, but without the prescribed fee stoned on 09.02.2012, and when he reached to the Registrar on 24.02.2012 to pay fee in respect of the said opposition, Registrar has no powers to put life in the stone-dead opposition and he thus rightly refused to consider the application filed on Form TM-5.
14.These are the reasons for the order dismissing these petitions I announced in the Court on 09.03.2016.
15.Office is directed to send a copy of these reasons to the Registrar of Trade Marks, Trade Marks Registry for any possible future use, as well as, for the electronic publication in the forthcoming Trade Marks Journal.