REPORTABLE
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 430 OF 2016
(Arising out of S.L.P. (Civil) No.14444 of 2009)
JAGATJIT INDUSTRIES LIMITED …APPELLANT
VERSUS
THE INTELLECTUAL PROPERTY
APPELLATE BOARD & ORS. ...RESPONDENTS
J U D G M E N T
R.F. Nariman, J.
Leave granted.
The respondent No.4 is a corporation incorporated under the laws of the
United States of America. It is an ultimate subsidiary of Pernord Ricard
S.A., which is engaged in the business of manufacturing and marketing a
variety of alcoholic beverages worldwide. It claims that it has coined
and adopted the trademark ‘BLENDERS PRIDE’ through its licensee M/s Seagram
Company Limited in the year 1973. According to respondent No.4, on account
of extensive sales and marketing worldwide, the trademark ‘BLENDERS PRIDE’
has come to acquire a tremendous reputation in various countries including
India. In order to secure its proprietary rights in the said trademark,
respondent No.4 had applied for and was granted registration of the said
trademark in more than 50 countries and has been selling ‘BLENDERS PRIDE’
whisky in India through its licensee Seagram India Private Limited since
1995. It has also applied for registration of the trademark ‘BLENDERS
PRIDE’ under two applications in class 33 which are pending registration.
The appellant’s application for registration of an identical trademark
‘BLENDERS PRIDE’ was advertised in the Trademarks Journal Mega-I. This
journal was published on 7th October, 2003. Respondent No.4 had filed Form
TM-44 seeking extension of one month’s time for filing its notice of
opposition against the appellant’s application on 6.1.2004, i.e. within the
statutory period of three months. On 19.1.2004, respondent No.4 had filed
its notice of opposition before the Trade Marks Registry, New Delhi and the
same was numbered as DEL-160325. On 16.2.2004, the Trade Marks Registry
issued a notice to the appellant inviting its counter statement to the said
notice of opposition, and had stated that if the counter statement was not
filed within time, the trademark application would be deemed to be
abandoned. However, when the matter stood thus, respondent No.4 came to
know on 20.1.2005 that a trademark registration certificate bearing
No.618414 had been issued to the appellant on 13.1.2004 itself.
Immediately, however, through its attorneys, respondent No.4 informed the
Trade Marks Registry about the pending opposition proceedings which were
yet to be disposed of.
Since no communication was received from the Registry, respondent No.4
filed a writ petition before the Delhi High Court being Writ Petition Nos.
2712 and 2713 of 2005. Meanwhile, on 16.2.2005, a show cause notice was
issued by the Registrar under Section 57(4) of the Trade Marks Act, 1999 to
the appellant, in which it was said that the registration certificate had
been issued wrongly, and since the said trademark was wrongly on the
register of trademarks, it was proposed to rectify the register under
Section 57(4) as per representation made by the attorneys of respondent
No.4.
Meanwhile, the writ petition filed by respondent No.4 to remove the
trademark from the register came up for hearing and was disposed of by an
order dated 2.3.2005 with the observation that the Registrar shall proceed
to decide the issues arising out of the show cause notice as expeditiously
as possible and in accordance with law.
Thereafter, on 14.3.2005, a detailed reply was filed by the appellant
herein before the Registrar, in which it took the plea that the show cause
notice itself was not maintainable as it was issued by the Registrar of
Bombay and not New Delhi. Further, it was stated that the opposition filed
by respondent No.4 on 19.1.2004 was clearly beyond time as it was not filed
within three months from the relevant date, which is 6.1.2004, and it was
thereafter pleaded that the show cause notice be withdrawn.
Meanwhile, on 14.1.2005, a suit for infringement of its trademark had been
filed by the appellant herein in the District Court of Jalandhar inter alia
against the licensee of respondent No.4, namely, Seagram Distilleries
Private Limited. On 21.4.2005, Seagram India Private Limited filed a
written statement in which it took up a plea that the plaintiff’s
registration is under challenge and since rectification proceedings are sub-
judice before the Registrar of Trademarks, the suit is liable to be stayed
till final disposal of the said rectification proceedings. It further went
on to plead that the registration obtained by the plaintiff (i.e. the
appellant herein) is void ab initio and confers no right on the plaintiff
and, therefore, questioned the very maintainability of the suit for
infringement.
While matters stood thus, after considering the reply of the appellant, the
Registrar, on 26.5.2005, referred to the show cause notice dated 16.2.2005
and the reply of the appellant thereof and stated that the impugned mark
was registered by inadvertence/error and that it was proposed to rectify
the register under Section 57(4) of the Trade Marks Act, 1999 by removing
the mark referred to. By the self same letter the appellant was directed to
return the registration certificate wrongly issued forthwith, and further
directed not to use the said certificate of registration in respect of the
above-mentioned trademark in any manner for any purpose and in any
proceedings.
A Writ Petition bearing Nos.10080-81 of 2005 was filed by the appellant
against the aforesaid order, and an interim order of stay was obtained
against the said order on 31.5.2005. Ultimately, on 13.9.2005, the Delhi
High Court directed the Registrar to dispose of the proceedings before it
on or before 16.11.2005.
The Registrar, by his order dated 14.11.2005, recalled the show cause
notice issued, stating that he had no jurisdiction to proceed in the matter
inasmuch as, under Section 125 of the Act, the proceedings could only
legally continue before the Appellate Board and not before him.
In an appeal filed before the Appellate Board, the Appellate Board, by its
judgment dated 6.10.2006, reversed the Registrar’s order, and held that the
notice of opposition had been taken on record and numbered, which clearly
showed that Form TM-44 filed by respondent No.4 for extension of time had
been accepted by the Registrar. It is only after such acceptance that a
show cause notice had been issued to the appellant herein calling upon them
to file their counter-statement. This being so, the registration of the
trademark on 13.1.2004, that is even before the expiry of the extended one
month, would obviously be contrary to Section 23 of the Act and would
therefore be invalid in law. Significantly, the Appellate Board held that
when the show cause notice was issued on 16.2.2005, Seagram had not yet
filed its counter-statement as it was not even served with the suit papers,
and that, since the suit had not been filed against respondent no.4, but
had only been filed against Seagram, Section 125 would have no application
and that therefore the Registrar’s order dated 14.11.2005 would therefore
have to be set aside. The Registrar was, therefore, directed to
expeditiously decide the opposition proceedings under Section 21 of the
Act.
Against the order passed by the Appellate Board, the appellant herein filed
a Writ Petition in the Delhi High Court being Writ Petition (Civil)
No.16242/2006. The learned Single Judge, by his judgment dated 9.5.2008,
set aside the aforesaid Appellate Board order and sustained the order dated
14.11.2004 passed by the Registrar. According to the learned Single Judge,
Section 125 of the Act would apply and would therefore bar proceedings
before the Registrar. The learned Single Judge, therefore, following the
judgment of this Court in Whirlpool Corporation v. Registrar of Trade
Marks, Mumbai and others, (1998) 8 SCC 1, held that the Section would apply
as the defendant in the infringement suit had filed a written statement
questioning the validity of the trademark, and that this being so, the non
obstante clause in Section 25(1) would bar proceedings under Section 57 of
the Act before the Registrar.
In an appeal before the Division Bench, the Division Bench set aside the
learned Single Judge, holding that Section 23(1) of the Act had been
violated, and that Section 125 would not apply on the facts of this case as
it is the duty of the Registrar to maintain the purity of the register, as
has been held in Hardie Trading Ltd. and another v. Addisons Paint &
Chemicals Ltd., (2003) 11 SCC 92. It was further held that the power of
the Registrar to correct his own mistakes under Section 57(4) of the Act is
wholly independent of the right of a party to make or not to make an
application for rectification of the register, referred to in Section 125.
If Section 125 were to be applied, the effect would be that an error
committed by the Registrar may remain on the register if the defendant,
after raising a plea of invalidity in a suit for infringement, chooses not
to proceed with the filing of a rectification before the Appellate Board.
In such event, the purity of the register would not be maintained, a result
which could not have been envisaged if Section 125 is to be correctly
interpreted. The Division Bench finally held that the grant of
registration on 13.1.2004 was itself invalid being contrary to Section
23(1) of the Act. Ultimately, the appeal was allowed in the following
terms:
“Section 23(1) of the Act clearly mandates that only after the statutory
period for filling opposition has expired, a registration certificate could
be granted. The Appellant had filed an application for extension of time in
filing opposition to the registration of trade mark of the 4th Respondent
and the notice of opposition was taken on record by the Registrar. The
above fact is evident from the show cause dated 16th February, 2004 and the
interim order of 26th May, 2005. In the absence of an order rejecting such
application, it cannot be held that time for filing opposition had expired.
The entire issue was considered by the Appellate Board which is a tribunal
as per Section 2(ze) of the Act. The tribunal had ultimately come to the
conclusion that the registration was in contravention of the provisions of
the Act and directed the Registrar to decide the application of the 4th
Respondent on merits.
After taking into consideration the above facts and contentions of the
parties we hold that no injustice has been done by the Appellate Board in
directing de novo hearing of the case. Consequently the appeal is allowed
and the order of the learned single Judge is set aside. No order as to
costs.” [at para 22 and 23]
Smt. Prathiba Singh, learned senior advocate appearing on behalf of the
appellant herein, essentially argued that though the application for
extension of time by one month had been filed before the period of three
months ended, yet as the Registrar had not passed any order condoning the
delay, it is obvious that the period for filing the opposition had ended on
6.1.2004. She also argued that Section 21 of the Act speaks of the
Registrar “allowing” the application made to him in the prescribed manner,
and that therefore the expression “allows” in Section 21(1) would make it
clear that there has to be an order in writing by the Registrar, and no
implied order granting extension is therefore contemplated by the Section.
Therefore, the registration certificate issued on 13.1.2004 was in
accordance with law. Further, as the show cause notice dated 16.2.2005 had
been issued from Bombay, it was clearly without jurisdiction. Therefore,
in view of a written statement having been filed in the infringement suit
filed by the appellant’s licensee taking up the plea of invalidity of
registration, Section 125 applied on all fours, and the judgment of this
Court in Whirlpool Corporation (supra) would apply to render rectification
proceedings before the Registrar non est. She also argued that the fact
that Austin Nichols is not a defendant in the infringement suit would also
make no difference inasmuch as its licensee Seagram is a defendant and has
taken a plea as to invalidity of the registered trademark. Seagram is
merely enforcing Austin Nichols’ rights and the authorized signatory of
both parties happens to be the same. Thus, it would make no difference that
the defendant in the infringement suit is not Austin Nichols. She also
argued that the suo motu powers of the Registrar under Section 57(4) of the
Act are taken away by Section 125(1) of the Act inasmuch as the non
obstante clause covers the whole of Section 57. Where the legislature
intends to specify only a sub-section, it has made it clear in express
language to that effect. For that purpose, she referred to Section 107(1)
of the Trade and Merchandise Marks Act, 1958 which refers to the whole of
Section 46, the whole of Section 56, and only Section 47 sub-section (4).
She has also argued that in point of fact, though styled as a proceeding
under Section 57(4), being at the behest of Austin Nichols, in reality it
was not such a proceeding. She referred copiously to the Registrar’s order
dated 14.11.2005 as well as to the judgment of the Single Judge dated
9.5.2008, and said that since the show cause notice itself was without
jurisdiction, these orders were correct and ought to be reinstated.
Shri Sudhir Chandra, learned senior counsel appearing on behalf of
respondent No.4, supported the judgment of the Division Bench of the Delhi
High Court. He argued before us that when the Registrar issued the letter
dated 16.2.2004 under Section 21(2) of the Act and called for a counter-
statement under the said Section from the appellant herein to the notice of
opposition filed by respondent No.4, it was clear that the extension of
time applied for within time had been allowed. He referred in particular
to Section 131 of the Act and stated that the Registrar should be satisfied
that there is sufficient cause for extending time and if he is so
satisfied, he will not be required to hear the parties before disposing of
an application for extension of time. Further, no appeal shall lie from
such an order. He also argued that as respondent No.4 was not a party to
the suit for infringement, Section 125 would have no application to the
facts of this case. He further argued that suo motu powers of the Registrar
under Section 57(4) of the Act were not taken away by Section 125 of the
Act, stressing that Section 125 of the Act concerned itself with “an
application for rectification of the register.” He referred us to the
definition of “Tribunal” under Section 2(ze) and stated that where a
proceeding is pending before the Registrar, it would necessarily be a
“Tribunal” for all purposes under the Act. He argued that the judgment in
Hardie’s case (supra) was correctly referred to and relied upon by the
Delhi High Court and that the purity of the register would have to be
maintained by the Registrar as an independent duty cast upon him under the
Act. According to him, the judgment in Whirlpool’s case actually supported
his client’s case, and in any case, on the facts therein, it was clear that
Section 125 would have applied, unlike in the facts of the present case.
We have heard learned counsel for the parties. Before embarking upon a
discussion on the merits of the case, it is necessary to set out the
various statutory provisions contained in the Trade Marks Act, 1999:-
“Section 2 - Definitions and interpretation
In this Act, unless the context otherwise requires,--
(ze) "tribunal" means the Registrar or, as the case may be, the Appellate
Board, before which the proceeding concerned is pending;
Section 21 - Opposition to registration
(1) Any person may, within three months from the date of the advertisement
or re-advertisement of an application for registration or within such
further period, not exceeding one month in the aggregate, as the Registrar,
on application made to him in the prescribed manner and on payment of the
prescribed fee, allows, give notice in writing in the prescribed manner to
the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for
registration and, within two months from the receipt by the applicant of
such copy of the notice of opposition, the applicant shall send to the
Registrar in the prescribed manner a counter-statement of the grounds on
which he relies for his application, and if he does not do so he shall be
deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall
serve a copy thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall
be submitted in the prescribed manner and within the prescribed time to the
Registrar, and the Registrar shall give an opportunity to them to be heard,
if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and
considering the evidence, decide whether and subject to what conditions or
limitations, if any, the registration is to be permitted, and may take into
account a ground of objection whether relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a
counter-statement after receipt of a copy of such notice neither resides
nor carries on business in India, the Registrar may require him to give
security for the costs of proceedings before him, and in default of such
security being duly given, may treat the opposition or application, as the
case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error in, or
any amendment of, a notice of opposition or a counter-statement on such
terms as he thinks just.
Section 23 - Registration
(1) Subject to the provisions of section 19, when an application for
registration of a trade mark in Part A or Part B of the register has been
accepted and either--
(a) the application has not been opposed and the time for notice of
opposition has expired; or
(b) the application has been opposed and the opposition has been decided in
favour of the applicant,
the Registrar shall, unless the Central Government otherwise directs,
register the said trade mark in Part A or Part B of the register, as the
case may be, and the trade mark when registered shall be registered as of
the date of the making of the said application and the date shall, subject
to the provisions of section 131, be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the
applicant a certificate in the prescribed form of the registration thereof,
sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the part of
the applicant, the Registrar may, after giving notice to the applicant in
the prescribed manner, treat the application as abandoned unless it is
completed within the time specified in that behalf in the notice.
(4) The Registrar may amend the register or a certificate of registration
for the purpose of correcting a clerical error or an obvious mistake.
57. Power to cancel or vary registration and to rectify the register.—
(1) On application made in the prescribed manner to the Appellate Board
or to the Registrar by any person aggrieved, the tribunal may make such
order as it may think fit for cancelling or varying the registration of a
trade mark on the ground of any contravention, or failure to observe a
condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of
any entry, or by any entry made in the register without sufficient cause,
or by any entry wrongly remaining on the register, or by any error or
defect in any entry in the register, may apply in the prescribed manner to
the Appellate Board or to the Registrar, and the tribunal may make such
order for making, expunging or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any
question that may be necessary or expedient to decide in connection with
the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them an
opportunity of being heard, make any order referred to in sub-section (1)
or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall direct
that notice of the rectification shall be served upon the Registrar in the
prescribed manner who shall upon receipt of such notice rectify the
register accordingly.
Section 124 - Stay of proceedings where the validity of registration of the
trade marks is questioned, etc.
(1) Where in any suit for infringement of a trade mark--
(a) the defendant pleads that registration of the plaintiff's trade mark is
invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of
section 30 and the plaintiff pleads the invalidity of registration of the
defendant's trade mark,
the court trying the suit (hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the register in relation to the
plaintiff's or defendant's trade mark are pending before the Registrar or
the Appellate Board, stay the suit pending the final disposal of such
proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the
plea regarding the invalidity of the registration of the plaintiff's or
defendant's trade mark is prima facie tenable, raise an issue regarding the
same and adjourn the case for a period of three months from the date of the
framing of the issue in order to enable the party concerned to apply to the
Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such
application as is referred to in clause (b) (ii) of sub-section (1) within
the time specified therein or within such extended time as the court may
for sufficient cause allow, the trial of the suit shall stand stayed until
the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so
specified or within such extended time as the court may allow, the issue as
to the validity of the registration of the trade mark concerned shall be
deemed to have been abandoned and the court shall proceed with the suit in
regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in
sub-section (1) or sub-section (2) shall be binding upon the parties and
the court shall dispose of the suit conformably to such order in so far as
it relates to the issue as to the validity of the registration of the trade
mark.
(5) The stay of a suit for the infringement of a trade mark under this
section shall not preclude the court from making any interlocutory order
(including any order granting an injunction directing account to be kept,
appointing a receiver or attaching any property), during the period of the
stay of the suit.
Section 125 - Application for rectification of register to be made to
Appellate Board in certain cases
(1) Where in a suit for infringement of a registered trade mark the
validity of the registration of the plaintiff's trade mark is questioned by
the defendant or where in any such suit the defendant raises a defence
under clause (e) of sub-section (2) of section 30 and the plaintiff
questions the validity of the registration of the defendant's trade mark,
the issue as to the validity of the registration of the trade mark
concerned shall be determined only on an application for the rectification
of the register and, notwithstanding anything contained in section 47 or
section 57, such application shall be made to the Appellate Board and not
to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application for
rectification of the register is made to the Registrar under section 47 or
section 57, the Registrar may, if he thinks fit, refer the application at
any stage of the proceedings to the Appellate Board.
Section 131 - 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 Act), 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.
(2) Nothing in sub-section (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.”
The first important thing to note in this case is that respondent No.4
sought an extension of one month’s time for filing its notice of opposition
within the three month period granted to it under Section 21(2) and did
this in the prescribed statutory Form TM-44 stating that the reason for
extension would be that they have to seek legal advice before filing the
notice of opposition. The other important fact to notice is that the notice
of opposition dated 19.1.2004 was made within the extended period of one
month, and was expressly taken on record by the Registrar, as is reflected
in the Registrar’s letter dated 16.2.2004. Since this letter is of crucial
importance in deciding this case, it is set out in full:-
“REGD. POST A.D.
No. TOP/ Date: 16- Feb-2004
From: The Registrar of Trade Marks
To,
M/s. The ACME Co.
Delhi-110001
Subject: Opposition No. 160325 to Application No. 618414 in Class 33 in
the name of JAGATJIT INDUSTRIES LIMITED
Shriman/ Mahoday/ Madam,
In pursuance of section 21(2) of Trade & Merchandise Marks Act, 1999, I am
directed by the Registrar of Trade Marks to enclose herewith a copy of the
Notice of opposition filed to the application noted as above.
In this connection I am to invite your attention to Section 21(2) of the
Act and also to Rule 48 of the Trade and Merchandise Marks Rule, 2002 point
out that a counterstatement of the grounds, on which you/ the applicant
rely for your/ their application should be filed at this office in
triplicate on form TM-6 within two months from the receipt by you of the
copy of the notice of opposition. The counterstatement should also set out
what facts if any, alleged in the notice of opposition are admitted by you/
the applicants.
I am further directed to inform you that if such a counterstatement is not
received in this Registry within the aforesaid time you that applicants
will be deemed to have abandoned your/ their application (vide section
21(2) of the Trade and Merchandise Marks Act, 1999).
Yours faithfully,
6227 ASSISTANT EXAMINER OF TRADE MARKS
5.11.04 Dated: 16-Feb-2004
No. TOP/
Copy forwarded for information to REMFRY & SGAR
Sd/-
ASSISTANT EXAMINER OF TRADE MARKS
Dated: 16-Feb.2004.”
16. A perusal of this letter shows that the notice of opposition was
taken on record. This could not have been done unless time had been
extended by one month, as the said notice of opposition was filed only on
19.1.2004, i.e. within the 30 days period after three months were over on
6.1.2004. Though Section 131 of the Act refers to the Registrar’s
satisfaction and refers to conditions which he may think fit to impose, it
is clear that he need not pass a separate order in every case if he wishes
to extend the time. The decision of the Madras High Court being M/s Allied
Blenders and Distillers Private Limited, Mumbai v. Intellectual Property
Appellate Board, Chennai & Ors., AIR 2009 Madras 196 was referred to, in
particular paragraph 27 thereof, to show that Section 131 cannot apply to
the facts of this case because the said sub-section will not apply where
time to do a thing is expressly provided in this Act. It is true that time
to file a notice of opposition is to be done within the time that is
expressly provided in Section 21(1) and that Section 131 of the Act would
not therefore apply. However, Section 131 is a pointer to the fact that
the extension of time by the Registrar is a ministerial act for which no
hearing is required.
17. Smt. Prathiba Singh also argued that the expression “allows” in
Section 21(1) would further show that there has to be an order in writing
granting an extension of time and no such order has been produced in the
present case. She also cited M. Mazharuddin Ali v. Govt. of A.P., (2000)
10 SCC 383, at paragraphs 7 and 11, to show that in the context of
relaxation of Rules made under Article 309, a specific relaxation by a
written order is necessary or else there can be said to be no relaxation of
such Rules in law. We may note that the aforesaid judgment deals with the
Governor’s executive power under Article 166 of the Constitution. Such
power can only be exercised in writing and in the manner prescribed by the
said Article. Besides, the Governor’s power is an executive power and not
a quasi-judicial one, as is the power of the Registrar in the present case.
This judgment, therefore, does not further case of the appellant. Also, it
is settled law that procedural provisions are to be construed in a manner
that advances and does not subvert the cause of justice. This Court in
paragraphs 28 and 29 in Kailash v. Nanhku, (2005) 4 SCC 480, has held as
under:-
“All the rules of procedure are the handmaid of justice. The language
employed by the draftsman of processual law may be liberal or stringent,
but the fact remains that the object of prescribing procedure is to advance
the cause of justice. In an adversarial system, no party should ordinarily
be denied the opportunity of participating in the process of justice
dispensation. Unless compelled by express and specific language of the
statute, the provisions of CPC or any other procedural enactment ought not
to be construed in a manner which would leave the court helpless to meet
extraordinary situations in the ends of justice. The observations made by
Krishna Iyer, J. in Sushil Kumar Sen v. State of Bihar [(1975) 1 SCC 774]
are pertinent: (SCC p. 777, paras 5-6)
“The mortality of justice at the hands of law troubles a judge's conscience
and points an angry interrogation at the law reformer.
The processual law so dominates in certain systems as to overpower
substantive rights and substantial justice. The humanist rule that
procedure should be the handmaid, not the mistress, of legal justice
compels consideration of vesting a residuary power in judges to act ex
debito justitiae where the tragic sequel otherwise would be wholly
inequitable. … Justice is the goal of jurisprudence — processual, as much
as substantive.”
In State of Punjab v. Shamlal Murari [(1976) 1 SCC 719 : 1976 SCC (L&S)
118] the Court approved in no unmistakable terms the approach of moderating
into wholesome directions what is regarded as mandatory on the principle
that: (SCC p. 720)
“Processual law is not to be a tyrant but a servant, not an obstruction but
an aid to justice. Procedural prescriptions are the handmaid and not the
mistress, a lubricant, not a resistant in the administration of justice.”
In Ghanshyam Dass v. Dominion of India [(1984) 3 SCC 46] the Court
reiterated the need for interpreting a part of the adjective law dealing
with procedure alone in such a manner as to subserve and advance the cause
of justice rather than to defeat it as all the laws of procedure are based
on this principle.” [at paras 28 and 29]
18. It is thus clear that time has been extended by the Registrar, as is
evidenced by the letter dated 16.2.2004. Therefore, it is clear that any
registration certificate granted prior to the 30 days extended period from
6.1.2004 would be violative of Section 23(1) of the Act. In this view of
the matter, the Appellate Board and the Division Bench are clearly right in
declaring that the registration certificate, having been issued on
13.1.2004, would be violative of Section 23(1)(a), and the register would
have to be rectified by deleting the said trademark therefrom.
19. We may dispose of an argument made by Smt. Prathiba Singh that the
show cause notice dated 16.2.2005 under Section 57(4) of the Act was
without jurisdiction as it was issued by the Registrar in Bombay and not by
the authorities in Delhi. As the application for registration of the
trademark was made in Delhi, and all the subsequent proceedings took place
in Delhi, this show cause notice should also have been issued only in
Delhi.
20. We may observe that under Section 57(4) of the Act, the suo motu
power can only be exercised by the Registrar himself, being the “Tribunal”
referred to in sub-sections (1) and (2) of the said Section. Section 3 of
the Trade Marks Act, 1999 is apposite. Section 3 states:
“Section 3 - Appointment of Registrar and other officers
(1) The Central Government may, by notification in the Official Gazette,
appoint a person to be known as the Controller-General of Patents, Designs
and Trade Marks, who shall be the Registrar of Trade Marks for the purposes
of this Act.
(2) The Central Government may appoint such other officers with such
designations as it thinks fit for the purpose of discharging, under the
superintendence and direction of the Registrar, such functions of the
Registrar under this Act as he may from time to time authorise them to
discharge.”
21. It is clear therefore that the power to be exercised under Section
57(4) can only be exercised by the Registrar of Trade Marks himself. There
is only one such Registrar – and his registered office is in Bombay. The
Assistant Registrars in the other parts of the country including Delhi all
act under the superintendence and directions of the Registrar, Bombay, as
is clear from Section 3(2) of the Act. This point is, therefore, without
substance.
22. We now come to an important argument raised by both parties: the
correct interpretation of Section 125 of the Act. Section 124 of the Act
inter alia states that where, in a suit for infringement of a trademark,
the defendant pleads that the registration of the plaintiff’s trademark is
invalid, then the court trying the suit shall stay the suit pending final
disposal of rectification proceedings either before the Registrar or the
Appellate Board, as the case may be.
23. The scheme under Section 124 is of great importance in understanding
the scope of Section 125. It is clear that where proceedings for
rectification of the register are pending before the filing of the suit for
infringement in which the defendant pleads that the registration of the
plaintiff’s trademark is invalid, such proceedings may be made either
before the Registrar or before the Appellate Board, in view of Section
57(1) and (2) of the Act. But, if rectification proceedings are to be
instituted after the filing of such suit for infringement in which the
defendant takes the plea that registration of the plaintiff’s trademark is
invalid, then rectification proceedings can only be taken before the
Appellate Board and not before the Registrar.
24. It will be noticed that Section 124(1) refers only to the plaintiff
and defendant of a suit for infringement, and Section 124(1)(ii)
specifically refers to the “party concerned” who will apply to the
Appellate Board for rectification of the register. Similarly, Section 125
also refers only to the “plaintiff” and the “defendant” in a suit for
infringement of a registered trademark. It is obvious, therefore, that an
application for rectification of the register can either be made by the
defendant who raises a plea in the suit that the registration of the
plaintiff’s trademark is invalid, or by the plaintiff who questions the
validity of the registration of the defendant’s trademark in a situation
where the defendant raises a defence under Section 30(2)(e). It is clear
therefore that the application for rectification of the register referred
to in Section 125(1) could only be an application (given the facts of the
present case) by the defendant in the suit for infringement. The defendant
being Seagram and not Austin Nichols, it is clear that the Section would
have no application. The submission of Smt. Prathiba Singh that Seagram is
only the licensee of Austin Nichols and that the authorized signatory of
both parties are the same holds no water for the reason that Austin Nichols
is not said to violate the registered trademark of the appellant herein.
Seagram again happens to be two separate Companies – Seagram Manufacturing
Private Limited and Seagram Distillers Private Limited. The plaint
allegations are that both the aforesaid companies are engaged in the
manufacture and distribution of liquor and sell and export alcoholic
beverages under the trademark “BLENDERS PRIDE” which is the registered
trademark of the plaintiff. The plaint does not state that the first and
second defendant are licensees of the said trademark of the Austin Nichols.
In fact, in paragraph 10 of the plaint, there is a specific averment by
the plaintiffs that upon necessary inquiries being made, the plaintiffs
have learnt that the defendants have not even applied for registration of
the trademark ‘BLENDERS PRIDE’ in their favour. It may also be noticed
that the suit is both a suit for infringement as well as passing off, and
it is significant that Austin Nichols has not been made a party defendant
to the said suit. Also, the very issue as to validity of the registration
of the trademark concerned has to be determined in the application for
rectification of the register, which would obviously bind only the parties
to the suit and nobody else. For these reasons, the application for
rectification, not having been made by any of the party defendants in the
said suit for infringement and passing off, Section 125(1) would have no
application.
25. Secondly, the Division Bench of the High Court is also correct in
reasoning that Section 125(1) would only apply to applications for
rectification of the register, and not to the exercise of suo motu powers
of the Registrar under Section 57(4). The reason is not hard to seek. If
the Registrar is barred from undertaking a suo motu exercise under Section
57(4) to maintain the purity of the register, there could conceivably be
cases where a defendant, after raising the plea of invalidity in a suit for
infringement, chooses not to proceed with the filing of a rectification
petition before the Appellate Board. This may happen in a variety of
circumstances: for example, take the case where, after raising the plea of
invalidity in a suit for infringement, the matter is compromised and the
defendant therefore does not file a rectification petition before the
Appellate Board. The Registrar’s power to maintain the purity of the
register of trademarks would still remain intact even in such cases, as has
been held by the judgment in Hardie’s case. This Court, in the said
judgment, while adverting to the meaning of “person aggrieved”, held as
follows:-
“The phrase "person aggrieved" is a common enough statutory precondition
for a valid complaint or appeal. The phrase has been variously construed
depending on the context in which it occurs. Three sections viz.
Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals with
the removal of a registered trademark from the register on the ground of
non-use. This section presupposes that the registration which was validly
made is liable to be taken off by subsequent non-user. Section 56 on the
other hand deals with situations where the initial registration should not
have been or was incorrectly made. The situations covered by this section
include: - (a) the contravention or failure to observe a condition for
registration; (b) the absence of an entry; (c) an entry made without
sufficient cause; (d) a wrong entry; and (e) any error or defect in the
entry. Such type of actions are commenced for the "purity of the register"
which it is in public interest to maintain. Applications under
Sections 46 and 56 may be made to the Registrar who is competent to grant
the relief. "Person's aggrieved" may also apply for cancellation or varying
an entry in the register relating to a certification trademark to the
Central Government in certain circumstances. Since we are not concerned
with a certification trademark, the process for registration of which is
entirely different, we may exclude the interpretation of the phrase "person
aggrieved" occurring in Section 69 from consideration for the purposes of
this judgment.
In our opinion the phrase "person aggrieved" for the purposes of removal on
the ground of non-use under section 46 has a different connotation from the
phrase used in section 56 for cancelling or expunging or varying an entry
wrongly made or remaining in the Register.
In the latter case the locus standi would be ascertained liberally, since
it would not only be against the interest of other persons carrying on the
same trade but also in the interest of the public to have such wrongful
entry removed. It was in this sense that the House of Lords defined "person
aggrieved" in the matter of Powell's Trade Mark 1894 (11) RFC 4:
"... although they were no doubt inserted to prevent officious interference
by those who had no interest at all in the Register being correct , and to
exclude a mere common informer, it is undoubtedly of public interest that
they should not be unduly limited, inasmuch as it is a public mischief that
there should remain upon the Register a Mark which ought not to be
there, and by which many persons may be affected, who, nevertheless, would
not be willing to enter upon the risk and expense of litigation.
Wherever it can be shown, as here, that the Applicant is in the same trade
as the person who has registered the Trade Mark, and wherever the Trade
Mark, if remaining on the Register, would, or might, limit the legal rights
of the Applicant, so that by reason of the existence of the entry on the
Register he could not lawfully do that which, but for the existence of the
mark upon the Register, he could lawfully do, it appears to me he has a
locus standi to be heard as a person aggrieved." (Emphasis added)” [para 30
– 32]
26. However, Smt. Prathiba Singh has argued, referring to Section 107 of
the 1958 Act, that the non obstante clause in Section 125 refers to the
whole of Section 57 including the suo motu power of the Registrar contained
in Section 57(4), and that therefore even such power cannot be exercised
once the ingredients of Section 125(1) are otherwise met. We are afraid
that we are not able to agree. Section 47(4) was referred to in Section
107 for the reason that the said sub-section refers to applications made to
the High Court or to the Registrar for cancellation of the registration of
a trademark as a defensive trademark. The other sub-sections of Section 47
do not refer to any such application but only explain what is meant by
defensive trademarks, and it is for that reason that Section 107 refers
only to Section 47(4) and not the entirety of Section 47. However, in
Section 125(1) of the Trade Marks Act, 1999, the width of the expression
“Section 57” is cut down by the expression “and an application for
rectification of the register”. Such rectification applications are
referable only to Sections 57(1) and (2) and not to the suo motu power of
the Registrar under Section 57(4). Therefore, apart from the substantive
reason given above of maintaining the purity of the register, even on a
literal construction of Section 125(1), it is clear that Section 57 (4)
would have to be excluded.
27. Whirlpool’s case, which is relied upon strongly by the appellant’s
counsel, has to be understood on its own facts. In paragraphs 6 and 7 of
the said judgment this Court set out the facts as follows:
“On 28.2.1997, the appellant filed an application in Form TM-12 for renewal
of the Trade Mark "Whirlpool" in Class 7 and the Registrar, by his order
dated 29.07.1997, allowed the renewal for three successive periods, namely,
22.2,1977,22.2.1984 and finally 22.2.1991. Thereafter, on 8.08.1997
appellant made an application under Order 6 Rule 17 C.P.C. for amendment of
the plaint in Suit No. 1705 of 1994, referred to above, so as to include
the ground of infringement of the Trade Mark also in the suit but the
application is still pending in the Delhi High Court which has already
granted time twice to the defendants, namely, Chinar Trust to file a reply.
In the meantime, Chinar Trust, through its attorneys, wrote on 10.09.1997
to the registrar to take suo motu action Under Section 56(4) for
cancellation of the Certificate of Renewal granted to the appellant on
29.07.1997 and the registrar, acting on that request, issued a notice to
the appellant on 26th Sept., 1997 requiring it to show cause why the
Certificate of Registration be not cancelled. Against this notice, the
appellant filed a writ petition in the Bombay High Court which was
dismissed on 8.12.1997. It is against this judgment that the present appeal
has been filed.” (at paras 6 and 7)
28. Finally, this Court’s decision turned on the facts of that case as
set out in paragraph nos. 72 and 73 therein.
“In the instant case, it has already been indicated above that when the
Assistant Registrar of Trade Marks dismissed appellant's opposition to the
registration of respondent's Trade Mark by its order dated 12.8.1992, it
filed an appeal in the Delhi High Court, which was admitted on 01.02.1993
and has since been registered as C.M.(Main) 414 of 1992. Thereafter, on
04.08.1993, the appellant filed a rectification petition Under Sections
45 and 46 of the Act for removing the entry relating to the Trade Mark for
which Registration Certificate was granted to the respondents on
30.11.1992. The appellant has also filed a suit for passing-off (Suit No.
1705 of 1994) in the Delhi High Court against the respondents in which an
order of temporary injunction has been granted in favour of the appellant
which has been upheld by the Division Bench of the High Court as also by
this Court. In that suit, an amendment application has also been filed so
as to include the ground of infringement of the appellant's Trade Mark but
that application has not yet been disposed of. It is, however, obvious that
if the application is allowed, the amendments will relate back to the date
of the application, if not to the date of plaint.
In view of the pendency of these proceedings in the High Court and
specially in view of Section 107 of the Act, the Registrar could not
legally issue any suo motu notice to the appellant Under Section 56(4) of
the Act for cancellation of the Certificate of Registration/Renewal already
granted. The appeal is consequently allowed and the show-cause notice
issued by the Deputy Registrar (respondent No. 2) on 26th of Sept. 1997
Under Section 56(4) of the Act is hereby quashed. The appellants shall be
entitled to their costs.” [at paras 72 and 73]
29. While arriving at this conclusion on facts, this Court held:-
“The extent of jurisdiction conferred by Section 56 on the Registrar to
rectify the Register, is, however curtailed by Section 107 which provides
that an application for rectification shall, in certain situations, be made
only to the High Court. These situations are mentioned in Sub-section (1)
of Section 107, namely, where in a suit for infringement of the registered
Trade Mark, the validity of the registration is questioned by the defendant
or the defendant, in that suit, raises the defence contemplated by
Section 30(1)(d) in which the acts which do not constitute an infringement,
have been specified, and the plaintiff in reply to this defence questions
the validity of the defendant's Trade Mark. In these situations, the
validity of the registration of the Trade Mark can be determined only by
the High Court and not by the Registrar.
Section 107 thus impels the proceedings to be instituted only in the High
Court. The jurisdiction of the Registrar in those cases which are covered
by Section 107 is totally excluded. Significantly, Section 107(2) provides
that if an application for rectification is made to the registrar Under
Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks
fit, refer that application, at any stage of the proceeding, to the High
Court.
Similarly, Under Section 111 of the Act, in a pending suit relating to
infringement of a Trade Mark, if it is brought to the notice of the Court
that any rectification proceedings relating to plaintiffs or defendant's
trade Mark are pending either before the Registrar or the High Court, the
proceedings in the suit shall be stayed pending final decision of the High
Court or the Registrar. Even if such proceedings are not pending either
before the Registrar or the High Court, the trial court, if prima facie
satisfied that the plea regarding invalidity of plaintiff s or defendant's
Trade Mark is tenable, may frame an issue and adjourn the case for three
months to enable the party concerned to apply to the High Court for
rectification of the Register. If within three months, the party concerned
does not approach the High Court, the plea regarding invalidity of Trade
Mark would be treated as abandoned but if such an application has been
given hearing,, the suit would be stayed awaiting final decision of the
High Court. The finding of the High Court would bind the parties and the
issue relating to the invalidity of Trade Mark would be decided in terms of
those findings.
In this background, the phrase "before which the proceeding concerned is
pending" stands out prominently to convey the idea that if the proceeding
is pending before the "Registrar", it becomes the "TRIBUNAL" Similarly, if
the proceeding is pending before the "High Court", then the High Court has
to be treated as "TRIBUNAL". Thus, the jurisdiction of the Registrar and
the High Court, though apparently concurrent in certain matters, is
mutually exclusive. That is to say, if a particular proceeding is pending
before the registrar, any other proceeding, which may, in any way, relate
to the pending proceeding, will have to be initiated before and taken up by
the Registrar and the High Court will act as the Appellate Authority of the
Registrar Under Section 109: It is obvious that if the proceedings are
pending before the High Court, the registrar will keep his hands off and
not touch those or any other proceedings which may, in any way, relate to
those proceedings, as the High Court, which has to be the High Court having
jurisdiction as set out in Section 3, besides being the Appellate Authority
of the Registrar has primacy over the Registrar in all matters under the
Act. Any other interpretation of the definition of "TRIBUNAL" would not be
in consonance with the scheme of the Act or the contextual background set
out therein and may lead to conflicting decision on the same question by
the Registrar and the High Court besides generating multiplicity of
proceedings.” [at paras 59 – 62]
30. No argument was made in Whirlpool’s case that Section 57(4) would be
independent of Section 125(1) for the reasons stated hereinabove. Further,
it is clear that one of the parties to the suit for passing off in the said
decision applied for rectification, unlike the present factual scenario.
For these two reasons also the said judgment would have no application to
the facts of the present case. Also, it is not clear from the facts stated
in the said judgment as to how Section 107(1) would be attracted. A suit
for passing off alone had been filed – an amendment application to add the
relief of infringement of trademark was pending. This is perhaps why this
Court referred to the said amendment application and said that if it were
to be granted it would relate back to the date of the suit itself. The
defendant in the said suit obviously could not have filed a written
statement taking up a plea of invalidity of the registered trademark before
an amendment application of the plaintiff adding the relief of infringement
had been allowed. For this reason also we find that the aforesaid judgment
cannot be said to have laid down any principle of law touching upon
Sections 125 and 57 of the Act.
31. We are, therefore, of the view that, for the reasons given by us, the
Division Bench judgment requires no interference. The appeal is,
therefore, dismissed. No costs.
……………………J.
(Kurian Joseph)
……………………J.
(R.F. Nariman)
New Delhi;
January 20, 2016.
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE JURISDICTION
CIVIL APPEAL NO. 430 OF 2016
(Arising out of S.L.P. (Civil) No.14444 of 2009)
JAGATJIT INDUSTRIES LIMITED …APPELLANT
VERSUS
THE INTELLECTUAL PROPERTY
APPELLATE BOARD & ORS. ...RESPONDENTS
J U D G M E N T
R.F. Nariman, J.
Leave granted.
The respondent No.4 is a corporation incorporated under the laws of the
United States of America. It is an ultimate subsidiary of Pernord Ricard
S.A., which is engaged in the business of manufacturing and marketing a
variety of alcoholic beverages worldwide. It claims that it has coined
and adopted the trademark ‘BLENDERS PRIDE’ through its licensee M/s Seagram
Company Limited in the year 1973. According to respondent No.4, on account
of extensive sales and marketing worldwide, the trademark ‘BLENDERS PRIDE’
has come to acquire a tremendous reputation in various countries including
India. In order to secure its proprietary rights in the said trademark,
respondent No.4 had applied for and was granted registration of the said
trademark in more than 50 countries and has been selling ‘BLENDERS PRIDE’
whisky in India through its licensee Seagram India Private Limited since
1995. It has also applied for registration of the trademark ‘BLENDERS
PRIDE’ under two applications in class 33 which are pending registration.
The appellant’s application for registration of an identical trademark
‘BLENDERS PRIDE’ was advertised in the Trademarks Journal Mega-I. This
journal was published on 7th October, 2003. Respondent No.4 had filed Form
TM-44 seeking extension of one month’s time for filing its notice of
opposition against the appellant’s application on 6.1.2004, i.e. within the
statutory period of three months. On 19.1.2004, respondent No.4 had filed
its notice of opposition before the Trade Marks Registry, New Delhi and the
same was numbered as DEL-160325. On 16.2.2004, the Trade Marks Registry
issued a notice to the appellant inviting its counter statement to the said
notice of opposition, and had stated that if the counter statement was not
filed within time, the trademark application would be deemed to be
abandoned. However, when the matter stood thus, respondent No.4 came to
know on 20.1.2005 that a trademark registration certificate bearing
No.618414 had been issued to the appellant on 13.1.2004 itself.
Immediately, however, through its attorneys, respondent No.4 informed the
Trade Marks Registry about the pending opposition proceedings which were
yet to be disposed of.
Since no communication was received from the Registry, respondent No.4
filed a writ petition before the Delhi High Court being Writ Petition Nos.
2712 and 2713 of 2005. Meanwhile, on 16.2.2005, a show cause notice was
issued by the Registrar under Section 57(4) of the Trade Marks Act, 1999 to
the appellant, in which it was said that the registration certificate had
been issued wrongly, and since the said trademark was wrongly on the
register of trademarks, it was proposed to rectify the register under
Section 57(4) as per representation made by the attorneys of respondent
No.4.
Meanwhile, the writ petition filed by respondent No.4 to remove the
trademark from the register came up for hearing and was disposed of by an
order dated 2.3.2005 with the observation that the Registrar shall proceed
to decide the issues arising out of the show cause notice as expeditiously
as possible and in accordance with law.
Thereafter, on 14.3.2005, a detailed reply was filed by the appellant
herein before the Registrar, in which it took the plea that the show cause
notice itself was not maintainable as it was issued by the Registrar of
Bombay and not New Delhi. Further, it was stated that the opposition filed
by respondent No.4 on 19.1.2004 was clearly beyond time as it was not filed
within three months from the relevant date, which is 6.1.2004, and it was
thereafter pleaded that the show cause notice be withdrawn.
Meanwhile, on 14.1.2005, a suit for infringement of its trademark had been
filed by the appellant herein in the District Court of Jalandhar inter alia
against the licensee of respondent No.4, namely, Seagram Distilleries
Private Limited. On 21.4.2005, Seagram India Private Limited filed a
written statement in which it took up a plea that the plaintiff’s
registration is under challenge and since rectification proceedings are sub-
judice before the Registrar of Trademarks, the suit is liable to be stayed
till final disposal of the said rectification proceedings. It further went
on to plead that the registration obtained by the plaintiff (i.e. the
appellant herein) is void ab initio and confers no right on the plaintiff
and, therefore, questioned the very maintainability of the suit for
infringement.
While matters stood thus, after considering the reply of the appellant, the
Registrar, on 26.5.2005, referred to the show cause notice dated 16.2.2005
and the reply of the appellant thereof and stated that the impugned mark
was registered by inadvertence/error and that it was proposed to rectify
the register under Section 57(4) of the Trade Marks Act, 1999 by removing
the mark referred to. By the self same letter the appellant was directed to
return the registration certificate wrongly issued forthwith, and further
directed not to use the said certificate of registration in respect of the
above-mentioned trademark in any manner for any purpose and in any
proceedings.
A Writ Petition bearing Nos.10080-81 of 2005 was filed by the appellant
against the aforesaid order, and an interim order of stay was obtained
against the said order on 31.5.2005. Ultimately, on 13.9.2005, the Delhi
High Court directed the Registrar to dispose of the proceedings before it
on or before 16.11.2005.
The Registrar, by his order dated 14.11.2005, recalled the show cause
notice issued, stating that he had no jurisdiction to proceed in the matter
inasmuch as, under Section 125 of the Act, the proceedings could only
legally continue before the Appellate Board and not before him.
In an appeal filed before the Appellate Board, the Appellate Board, by its
judgment dated 6.10.2006, reversed the Registrar’s order, and held that the
notice of opposition had been taken on record and numbered, which clearly
showed that Form TM-44 filed by respondent No.4 for extension of time had
been accepted by the Registrar. It is only after such acceptance that a
show cause notice had been issued to the appellant herein calling upon them
to file their counter-statement. This being so, the registration of the
trademark on 13.1.2004, that is even before the expiry of the extended one
month, would obviously be contrary to Section 23 of the Act and would
therefore be invalid in law. Significantly, the Appellate Board held that
when the show cause notice was issued on 16.2.2005, Seagram had not yet
filed its counter-statement as it was not even served with the suit papers,
and that, since the suit had not been filed against respondent no.4, but
had only been filed against Seagram, Section 125 would have no application
and that therefore the Registrar’s order dated 14.11.2005 would therefore
have to be set aside. The Registrar was, therefore, directed to
expeditiously decide the opposition proceedings under Section 21 of the
Act.
Against the order passed by the Appellate Board, the appellant herein filed
a Writ Petition in the Delhi High Court being Writ Petition (Civil)
No.16242/2006. The learned Single Judge, by his judgment dated 9.5.2008,
set aside the aforesaid Appellate Board order and sustained the order dated
14.11.2004 passed by the Registrar. According to the learned Single Judge,
Section 125 of the Act would apply and would therefore bar proceedings
before the Registrar. The learned Single Judge, therefore, following the
judgment of this Court in Whirlpool Corporation v. Registrar of Trade
Marks, Mumbai and others, (1998) 8 SCC 1, held that the Section would apply
as the defendant in the infringement suit had filed a written statement
questioning the validity of the trademark, and that this being so, the non
obstante clause in Section 25(1) would bar proceedings under Section 57 of
the Act before the Registrar.
In an appeal before the Division Bench, the Division Bench set aside the
learned Single Judge, holding that Section 23(1) of the Act had been
violated, and that Section 125 would not apply on the facts of this case as
it is the duty of the Registrar to maintain the purity of the register, as
has been held in Hardie Trading Ltd. and another v. Addisons Paint &
Chemicals Ltd., (2003) 11 SCC 92. It was further held that the power of
the Registrar to correct his own mistakes under Section 57(4) of the Act is
wholly independent of the right of a party to make or not to make an
application for rectification of the register, referred to in Section 125.
If Section 125 were to be applied, the effect would be that an error
committed by the Registrar may remain on the register if the defendant,
after raising a plea of invalidity in a suit for infringement, chooses not
to proceed with the filing of a rectification before the Appellate Board.
In such event, the purity of the register would not be maintained, a result
which could not have been envisaged if Section 125 is to be correctly
interpreted. The Division Bench finally held that the grant of
registration on 13.1.2004 was itself invalid being contrary to Section
23(1) of the Act. Ultimately, the appeal was allowed in the following
terms:
“Section 23(1) of the Act clearly mandates that only after the statutory
period for filling opposition has expired, a registration certificate could
be granted. The Appellant had filed an application for extension of time in
filing opposition to the registration of trade mark of the 4th Respondent
and the notice of opposition was taken on record by the Registrar. The
above fact is evident from the show cause dated 16th February, 2004 and the
interim order of 26th May, 2005. In the absence of an order rejecting such
application, it cannot be held that time for filing opposition had expired.
The entire issue was considered by the Appellate Board which is a tribunal
as per Section 2(ze) of the Act. The tribunal had ultimately come to the
conclusion that the registration was in contravention of the provisions of
the Act and directed the Registrar to decide the application of the 4th
Respondent on merits.
After taking into consideration the above facts and contentions of the
parties we hold that no injustice has been done by the Appellate Board in
directing de novo hearing of the case. Consequently the appeal is allowed
and the order of the learned single Judge is set aside. No order as to
costs.” [at para 22 and 23]
Smt. Prathiba Singh, learned senior advocate appearing on behalf of the
appellant herein, essentially argued that though the application for
extension of time by one month had been filed before the period of three
months ended, yet as the Registrar had not passed any order condoning the
delay, it is obvious that the period for filing the opposition had ended on
6.1.2004. She also argued that Section 21 of the Act speaks of the
Registrar “allowing” the application made to him in the prescribed manner,
and that therefore the expression “allows” in Section 21(1) would make it
clear that there has to be an order in writing by the Registrar, and no
implied order granting extension is therefore contemplated by the Section.
Therefore, the registration certificate issued on 13.1.2004 was in
accordance with law. Further, as the show cause notice dated 16.2.2005 had
been issued from Bombay, it was clearly without jurisdiction. Therefore,
in view of a written statement having been filed in the infringement suit
filed by the appellant’s licensee taking up the plea of invalidity of
registration, Section 125 applied on all fours, and the judgment of this
Court in Whirlpool Corporation (supra) would apply to render rectification
proceedings before the Registrar non est. She also argued that the fact
that Austin Nichols is not a defendant in the infringement suit would also
make no difference inasmuch as its licensee Seagram is a defendant and has
taken a plea as to invalidity of the registered trademark. Seagram is
merely enforcing Austin Nichols’ rights and the authorized signatory of
both parties happens to be the same. Thus, it would make no difference that
the defendant in the infringement suit is not Austin Nichols. She also
argued that the suo motu powers of the Registrar under Section 57(4) of the
Act are taken away by Section 125(1) of the Act inasmuch as the non
obstante clause covers the whole of Section 57. Where the legislature
intends to specify only a sub-section, it has made it clear in express
language to that effect. For that purpose, she referred to Section 107(1)
of the Trade and Merchandise Marks Act, 1958 which refers to the whole of
Section 46, the whole of Section 56, and only Section 47 sub-section (4).
She has also argued that in point of fact, though styled as a proceeding
under Section 57(4), being at the behest of Austin Nichols, in reality it
was not such a proceeding. She referred copiously to the Registrar’s order
dated 14.11.2005 as well as to the judgment of the Single Judge dated
9.5.2008, and said that since the show cause notice itself was without
jurisdiction, these orders were correct and ought to be reinstated.
Shri Sudhir Chandra, learned senior counsel appearing on behalf of
respondent No.4, supported the judgment of the Division Bench of the Delhi
High Court. He argued before us that when the Registrar issued the letter
dated 16.2.2004 under Section 21(2) of the Act and called for a counter-
statement under the said Section from the appellant herein to the notice of
opposition filed by respondent No.4, it was clear that the extension of
time applied for within time had been allowed. He referred in particular
to Section 131 of the Act and stated that the Registrar should be satisfied
that there is sufficient cause for extending time and if he is so
satisfied, he will not be required to hear the parties before disposing of
an application for extension of time. Further, no appeal shall lie from
such an order. He also argued that as respondent No.4 was not a party to
the suit for infringement, Section 125 would have no application to the
facts of this case. He further argued that suo motu powers of the Registrar
under Section 57(4) of the Act were not taken away by Section 125 of the
Act, stressing that Section 125 of the Act concerned itself with “an
application for rectification of the register.” He referred us to the
definition of “Tribunal” under Section 2(ze) and stated that where a
proceeding is pending before the Registrar, it would necessarily be a
“Tribunal” for all purposes under the Act. He argued that the judgment in
Hardie’s case (supra) was correctly referred to and relied upon by the
Delhi High Court and that the purity of the register would have to be
maintained by the Registrar as an independent duty cast upon him under the
Act. According to him, the judgment in Whirlpool’s case actually supported
his client’s case, and in any case, on the facts therein, it was clear that
Section 125 would have applied, unlike in the facts of the present case.
We have heard learned counsel for the parties. Before embarking upon a
discussion on the merits of the case, it is necessary to set out the
various statutory provisions contained in the Trade Marks Act, 1999:-
“Section 2 - Definitions and interpretation
In this Act, unless the context otherwise requires,--
(ze) "tribunal" means the Registrar or, as the case may be, the Appellate
Board, before which the proceeding concerned is pending;
Section 21 - Opposition to registration
(1) Any person may, within three months from the date of the advertisement
or re-advertisement of an application for registration or within such
further period, not exceeding one month in the aggregate, as the Registrar,
on application made to him in the prescribed manner and on payment of the
prescribed fee, allows, give notice in writing in the prescribed manner to
the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for
registration and, within two months from the receipt by the applicant of
such copy of the notice of opposition, the applicant shall send to the
Registrar in the prescribed manner a counter-statement of the grounds on
which he relies for his application, and if he does not do so he shall be
deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall
serve a copy thereof on the person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall
be submitted in the prescribed manner and within the prescribed time to the
Registrar, and the Registrar shall give an opportunity to them to be heard,
if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and
considering the evidence, decide whether and subject to what conditions or
limitations, if any, the registration is to be permitted, and may take into
account a ground of objection whether relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a
counter-statement after receipt of a copy of such notice neither resides
nor carries on business in India, the Registrar may require him to give
security for the costs of proceedings before him, and in default of such
security being duly given, may treat the opposition or application, as the
case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error in, or
any amendment of, a notice of opposition or a counter-statement on such
terms as he thinks just.
Section 23 - Registration
(1) Subject to the provisions of section 19, when an application for
registration of a trade mark in Part A or Part B of the register has been
accepted and either--
(a) the application has not been opposed and the time for notice of
opposition has expired; or
(b) the application has been opposed and the opposition has been decided in
favour of the applicant,
the Registrar shall, unless the Central Government otherwise directs,
register the said trade mark in Part A or Part B of the register, as the
case may be, and the trade mark when registered shall be registered as of
the date of the making of the said application and the date shall, subject
to the provisions of section 131, be deemed to be the date of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the
applicant a certificate in the prescribed form of the registration thereof,
sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within twelve
months from the date of the application by reason of default on the part of
the applicant, the Registrar may, after giving notice to the applicant in
the prescribed manner, treat the application as abandoned unless it is
completed within the time specified in that behalf in the notice.
(4) The Registrar may amend the register or a certificate of registration
for the purpose of correcting a clerical error or an obvious mistake.
57. Power to cancel or vary registration and to rectify the register.—
(1) On application made in the prescribed manner to the Appellate Board
or to the Registrar by any person aggrieved, the tribunal may make such
order as it may think fit for cancelling or varying the registration of a
trade mark on the ground of any contravention, or failure to observe a
condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of
any entry, or by any entry made in the register without sufficient cause,
or by any entry wrongly remaining on the register, or by any error or
defect in any entry in the register, may apply in the prescribed manner to
the Appellate Board or to the Registrar, and the tribunal may make such
order for making, expunging or varying the entry as it may think fit.
(3) The tribunal may in any proceeding under this section decide any
question that may be necessary or expedient to decide in connection with
the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them an
opportunity of being heard, make any order referred to in sub-section (1)
or sub-section (2).
(5) Any order of the Appellate Board rectifying the register shall direct
that notice of the rectification shall be served upon the Registrar in the
prescribed manner who shall upon receipt of such notice rectify the
register accordingly.
Section 124 - Stay of proceedings where the validity of registration of the
trade marks is questioned, etc.
(1) Where in any suit for infringement of a trade mark--
(a) the defendant pleads that registration of the plaintiff's trade mark is
invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of
section 30 and the plaintiff pleads the invalidity of registration of the
defendant's trade mark,
the court trying the suit (hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the register in relation to the
plaintiff's or defendant's trade mark are pending before the Registrar or
the Appellate Board, stay the suit pending the final disposal of such
proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the
plea regarding the invalidity of the registration of the plaintiff's or
defendant's trade mark is prima facie tenable, raise an issue regarding the
same and adjourn the case for a period of three months from the date of the
framing of the issue in order to enable the party concerned to apply to the
Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such
application as is referred to in clause (b) (ii) of sub-section (1) within
the time specified therein or within such extended time as the court may
for sufficient cause allow, the trial of the suit shall stand stayed until
the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so
specified or within such extended time as the court may allow, the issue as
to the validity of the registration of the trade mark concerned shall be
deemed to have been abandoned and the court shall proceed with the suit in
regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in
sub-section (1) or sub-section (2) shall be binding upon the parties and
the court shall dispose of the suit conformably to such order in so far as
it relates to the issue as to the validity of the registration of the trade
mark.
(5) The stay of a suit for the infringement of a trade mark under this
section shall not preclude the court from making any interlocutory order
(including any order granting an injunction directing account to be kept,
appointing a receiver or attaching any property), during the period of the
stay of the suit.
Section 125 - Application for rectification of register to be made to
Appellate Board in certain cases
(1) Where in a suit for infringement of a registered trade mark the
validity of the registration of the plaintiff's trade mark is questioned by
the defendant or where in any such suit the defendant raises a defence
under clause (e) of sub-section (2) of section 30 and the plaintiff
questions the validity of the registration of the defendant's trade mark,
the issue as to the validity of the registration of the trade mark
concerned shall be determined only on an application for the rectification
of the register and, notwithstanding anything contained in section 47 or
section 57, such application shall be made to the Appellate Board and not
to the Registrar.
(2) Subject to the provisions of sub-section (1), where an application for
rectification of the register is made to the Registrar under section 47 or
section 57, the Registrar may, if he thinks fit, refer the application at
any stage of the proceedings to the Appellate Board.
Section 131 - 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 Act), 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.
(2) Nothing in sub-section (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.”
The first important thing to note in this case is that respondent No.4
sought an extension of one month’s time for filing its notice of opposition
within the three month period granted to it under Section 21(2) and did
this in the prescribed statutory Form TM-44 stating that the reason for
extension would be that they have to seek legal advice before filing the
notice of opposition. The other important fact to notice is that the notice
of opposition dated 19.1.2004 was made within the extended period of one
month, and was expressly taken on record by the Registrar, as is reflected
in the Registrar’s letter dated 16.2.2004. Since this letter is of crucial
importance in deciding this case, it is set out in full:-
“REGD. POST A.D.
No. TOP/ Date: 16- Feb-2004
From: The Registrar of Trade Marks
To,
M/s. The ACME Co.
Delhi-110001
Subject: Opposition No. 160325 to Application No. 618414 in Class 33 in
the name of JAGATJIT INDUSTRIES LIMITED
Shriman/ Mahoday/ Madam,
In pursuance of section 21(2) of Trade & Merchandise Marks Act, 1999, I am
directed by the Registrar of Trade Marks to enclose herewith a copy of the
Notice of opposition filed to the application noted as above.
In this connection I am to invite your attention to Section 21(2) of the
Act and also to Rule 48 of the Trade and Merchandise Marks Rule, 2002 point
out that a counterstatement of the grounds, on which you/ the applicant
rely for your/ their application should be filed at this office in
triplicate on form TM-6 within two months from the receipt by you of the
copy of the notice of opposition. The counterstatement should also set out
what facts if any, alleged in the notice of opposition are admitted by you/
the applicants.
I am further directed to inform you that if such a counterstatement is not
received in this Registry within the aforesaid time you that applicants
will be deemed to have abandoned your/ their application (vide section
21(2) of the Trade and Merchandise Marks Act, 1999).
Yours faithfully,
6227 ASSISTANT EXAMINER OF TRADE MARKS
5.11.04 Dated: 16-Feb-2004
No. TOP/
Copy forwarded for information to REMFRY & SGAR
Sd/-
ASSISTANT EXAMINER OF TRADE MARKS
Dated: 16-Feb.2004.”
16. A perusal of this letter shows that the notice of opposition was
taken on record. This could not have been done unless time had been
extended by one month, as the said notice of opposition was filed only on
19.1.2004, i.e. within the 30 days period after three months were over on
6.1.2004. Though Section 131 of the Act refers to the Registrar’s
satisfaction and refers to conditions which he may think fit to impose, it
is clear that he need not pass a separate order in every case if he wishes
to extend the time. The decision of the Madras High Court being M/s Allied
Blenders and Distillers Private Limited, Mumbai v. Intellectual Property
Appellate Board, Chennai & Ors., AIR 2009 Madras 196 was referred to, in
particular paragraph 27 thereof, to show that Section 131 cannot apply to
the facts of this case because the said sub-section will not apply where
time to do a thing is expressly provided in this Act. It is true that time
to file a notice of opposition is to be done within the time that is
expressly provided in Section 21(1) and that Section 131 of the Act would
not therefore apply. However, Section 131 is a pointer to the fact that
the extension of time by the Registrar is a ministerial act for which no
hearing is required.
17. Smt. Prathiba Singh also argued that the expression “allows” in
Section 21(1) would further show that there has to be an order in writing
granting an extension of time and no such order has been produced in the
present case. She also cited M. Mazharuddin Ali v. Govt. of A.P., (2000)
10 SCC 383, at paragraphs 7 and 11, to show that in the context of
relaxation of Rules made under Article 309, a specific relaxation by a
written order is necessary or else there can be said to be no relaxation of
such Rules in law. We may note that the aforesaid judgment deals with the
Governor’s executive power under Article 166 of the Constitution. Such
power can only be exercised in writing and in the manner prescribed by the
said Article. Besides, the Governor’s power is an executive power and not
a quasi-judicial one, as is the power of the Registrar in the present case.
This judgment, therefore, does not further case of the appellant. Also, it
is settled law that procedural provisions are to be construed in a manner
that advances and does not subvert the cause of justice. This Court in
paragraphs 28 and 29 in Kailash v. Nanhku, (2005) 4 SCC 480, has held as
under:-
“All the rules of procedure are the handmaid of justice. The language
employed by the draftsman of processual law may be liberal or stringent,
but the fact remains that the object of prescribing procedure is to advance
the cause of justice. In an adversarial system, no party should ordinarily
be denied the opportunity of participating in the process of justice
dispensation. Unless compelled by express and specific language of the
statute, the provisions of CPC or any other procedural enactment ought not
to be construed in a manner which would leave the court helpless to meet
extraordinary situations in the ends of justice. The observations made by
Krishna Iyer, J. in Sushil Kumar Sen v. State of Bihar [(1975) 1 SCC 774]
are pertinent: (SCC p. 777, paras 5-6)
“The mortality of justice at the hands of law troubles a judge's conscience
and points an angry interrogation at the law reformer.
The processual law so dominates in certain systems as to overpower
substantive rights and substantial justice. The humanist rule that
procedure should be the handmaid, not the mistress, of legal justice
compels consideration of vesting a residuary power in judges to act ex
debito justitiae where the tragic sequel otherwise would be wholly
inequitable. … Justice is the goal of jurisprudence — processual, as much
as substantive.”
In State of Punjab v. Shamlal Murari [(1976) 1 SCC 719 : 1976 SCC (L&S)
118] the Court approved in no unmistakable terms the approach of moderating
into wholesome directions what is regarded as mandatory on the principle
that: (SCC p. 720)
“Processual law is not to be a tyrant but a servant, not an obstruction but
an aid to justice. Procedural prescriptions are the handmaid and not the
mistress, a lubricant, not a resistant in the administration of justice.”
In Ghanshyam Dass v. Dominion of India [(1984) 3 SCC 46] the Court
reiterated the need for interpreting a part of the adjective law dealing
with procedure alone in such a manner as to subserve and advance the cause
of justice rather than to defeat it as all the laws of procedure are based
on this principle.” [at paras 28 and 29]
18. It is thus clear that time has been extended by the Registrar, as is
evidenced by the letter dated 16.2.2004. Therefore, it is clear that any
registration certificate granted prior to the 30 days extended period from
6.1.2004 would be violative of Section 23(1) of the Act. In this view of
the matter, the Appellate Board and the Division Bench are clearly right in
declaring that the registration certificate, having been issued on
13.1.2004, would be violative of Section 23(1)(a), and the register would
have to be rectified by deleting the said trademark therefrom.
19. We may dispose of an argument made by Smt. Prathiba Singh that the
show cause notice dated 16.2.2005 under Section 57(4) of the Act was
without jurisdiction as it was issued by the Registrar in Bombay and not by
the authorities in Delhi. As the application for registration of the
trademark was made in Delhi, and all the subsequent proceedings took place
in Delhi, this show cause notice should also have been issued only in
Delhi.
20. We may observe that under Section 57(4) of the Act, the suo motu
power can only be exercised by the Registrar himself, being the “Tribunal”
referred to in sub-sections (1) and (2) of the said Section. Section 3 of
the Trade Marks Act, 1999 is apposite. Section 3 states:
“Section 3 - Appointment of Registrar and other officers
(1) The Central Government may, by notification in the Official Gazette,
appoint a person to be known as the Controller-General of Patents, Designs
and Trade Marks, who shall be the Registrar of Trade Marks for the purposes
of this Act.
(2) The Central Government may appoint such other officers with such
designations as it thinks fit for the purpose of discharging, under the
superintendence and direction of the Registrar, such functions of the
Registrar under this Act as he may from time to time authorise them to
discharge.”
21. It is clear therefore that the power to be exercised under Section
57(4) can only be exercised by the Registrar of Trade Marks himself. There
is only one such Registrar – and his registered office is in Bombay. The
Assistant Registrars in the other parts of the country including Delhi all
act under the superintendence and directions of the Registrar, Bombay, as
is clear from Section 3(2) of the Act. This point is, therefore, without
substance.
22. We now come to an important argument raised by both parties: the
correct interpretation of Section 125 of the Act. Section 124 of the Act
inter alia states that where, in a suit for infringement of a trademark,
the defendant pleads that the registration of the plaintiff’s trademark is
invalid, then the court trying the suit shall stay the suit pending final
disposal of rectification proceedings either before the Registrar or the
Appellate Board, as the case may be.
23. The scheme under Section 124 is of great importance in understanding
the scope of Section 125. It is clear that where proceedings for
rectification of the register are pending before the filing of the suit for
infringement in which the defendant pleads that the registration of the
plaintiff’s trademark is invalid, such proceedings may be made either
before the Registrar or before the Appellate Board, in view of Section
57(1) and (2) of the Act. But, if rectification proceedings are to be
instituted after the filing of such suit for infringement in which the
defendant takes the plea that registration of the plaintiff’s trademark is
invalid, then rectification proceedings can only be taken before the
Appellate Board and not before the Registrar.
24. It will be noticed that Section 124(1) refers only to the plaintiff
and defendant of a suit for infringement, and Section 124(1)(ii)
specifically refers to the “party concerned” who will apply to the
Appellate Board for rectification of the register. Similarly, Section 125
also refers only to the “plaintiff” and the “defendant” in a suit for
infringement of a registered trademark. It is obvious, therefore, that an
application for rectification of the register can either be made by the
defendant who raises a plea in the suit that the registration of the
plaintiff’s trademark is invalid, or by the plaintiff who questions the
validity of the registration of the defendant’s trademark in a situation
where the defendant raises a defence under Section 30(2)(e). It is clear
therefore that the application for rectification of the register referred
to in Section 125(1) could only be an application (given the facts of the
present case) by the defendant in the suit for infringement. The defendant
being Seagram and not Austin Nichols, it is clear that the Section would
have no application. The submission of Smt. Prathiba Singh that Seagram is
only the licensee of Austin Nichols and that the authorized signatory of
both parties are the same holds no water for the reason that Austin Nichols
is not said to violate the registered trademark of the appellant herein.
Seagram again happens to be two separate Companies – Seagram Manufacturing
Private Limited and Seagram Distillers Private Limited. The plaint
allegations are that both the aforesaid companies are engaged in the
manufacture and distribution of liquor and sell and export alcoholic
beverages under the trademark “BLENDERS PRIDE” which is the registered
trademark of the plaintiff. The plaint does not state that the first and
second defendant are licensees of the said trademark of the Austin Nichols.
In fact, in paragraph 10 of the plaint, there is a specific averment by
the plaintiffs that upon necessary inquiries being made, the plaintiffs
have learnt that the defendants have not even applied for registration of
the trademark ‘BLENDERS PRIDE’ in their favour. It may also be noticed
that the suit is both a suit for infringement as well as passing off, and
it is significant that Austin Nichols has not been made a party defendant
to the said suit. Also, the very issue as to validity of the registration
of the trademark concerned has to be determined in the application for
rectification of the register, which would obviously bind only the parties
to the suit and nobody else. For these reasons, the application for
rectification, not having been made by any of the party defendants in the
said suit for infringement and passing off, Section 125(1) would have no
application.
25. Secondly, the Division Bench of the High Court is also correct in
reasoning that Section 125(1) would only apply to applications for
rectification of the register, and not to the exercise of suo motu powers
of the Registrar under Section 57(4). The reason is not hard to seek. If
the Registrar is barred from undertaking a suo motu exercise under Section
57(4) to maintain the purity of the register, there could conceivably be
cases where a defendant, after raising the plea of invalidity in a suit for
infringement, chooses not to proceed with the filing of a rectification
petition before the Appellate Board. This may happen in a variety of
circumstances: for example, take the case where, after raising the plea of
invalidity in a suit for infringement, the matter is compromised and the
defendant therefore does not file a rectification petition before the
Appellate Board. The Registrar’s power to maintain the purity of the
register of trademarks would still remain intact even in such cases, as has
been held by the judgment in Hardie’s case. This Court, in the said
judgment, while adverting to the meaning of “person aggrieved”, held as
follows:-
“The phrase "person aggrieved" is a common enough statutory precondition
for a valid complaint or appeal. The phrase has been variously construed
depending on the context in which it occurs. Three sections viz.
Sections 46, 56 and 69 of the Act contain the phrase. Section 46 deals with
the removal of a registered trademark from the register on the ground of
non-use. This section presupposes that the registration which was validly
made is liable to be taken off by subsequent non-user. Section 56 on the
other hand deals with situations where the initial registration should not
have been or was incorrectly made. The situations covered by this section
include: - (a) the contravention or failure to observe a condition for
registration; (b) the absence of an entry; (c) an entry made without
sufficient cause; (d) a wrong entry; and (e) any error or defect in the
entry. Such type of actions are commenced for the "purity of the register"
which it is in public interest to maintain. Applications under
Sections 46 and 56 may be made to the Registrar who is competent to grant
the relief. "Person's aggrieved" may also apply for cancellation or varying
an entry in the register relating to a certification trademark to the
Central Government in certain circumstances. Since we are not concerned
with a certification trademark, the process for registration of which is
entirely different, we may exclude the interpretation of the phrase "person
aggrieved" occurring in Section 69 from consideration for the purposes of
this judgment.
In our opinion the phrase "person aggrieved" for the purposes of removal on
the ground of non-use under section 46 has a different connotation from the
phrase used in section 56 for cancelling or expunging or varying an entry
wrongly made or remaining in the Register.
In the latter case the locus standi would be ascertained liberally, since
it would not only be against the interest of other persons carrying on the
same trade but also in the interest of the public to have such wrongful
entry removed. It was in this sense that the House of Lords defined "person
aggrieved" in the matter of Powell's Trade Mark 1894 (11) RFC 4:
"... although they were no doubt inserted to prevent officious interference
by those who had no interest at all in the Register being correct , and to
exclude a mere common informer, it is undoubtedly of public interest that
they should not be unduly limited, inasmuch as it is a public mischief that
there should remain upon the Register a Mark which ought not to be
there, and by which many persons may be affected, who, nevertheless, would
not be willing to enter upon the risk and expense of litigation.
Wherever it can be shown, as here, that the Applicant is in the same trade
as the person who has registered the Trade Mark, and wherever the Trade
Mark, if remaining on the Register, would, or might, limit the legal rights
of the Applicant, so that by reason of the existence of the entry on the
Register he could not lawfully do that which, but for the existence of the
mark upon the Register, he could lawfully do, it appears to me he has a
locus standi to be heard as a person aggrieved." (Emphasis added)” [para 30
– 32]
26. However, Smt. Prathiba Singh has argued, referring to Section 107 of
the 1958 Act, that the non obstante clause in Section 125 refers to the
whole of Section 57 including the suo motu power of the Registrar contained
in Section 57(4), and that therefore even such power cannot be exercised
once the ingredients of Section 125(1) are otherwise met. We are afraid
that we are not able to agree. Section 47(4) was referred to in Section
107 for the reason that the said sub-section refers to applications made to
the High Court or to the Registrar for cancellation of the registration of
a trademark as a defensive trademark. The other sub-sections of Section 47
do not refer to any such application but only explain what is meant by
defensive trademarks, and it is for that reason that Section 107 refers
only to Section 47(4) and not the entirety of Section 47. However, in
Section 125(1) of the Trade Marks Act, 1999, the width of the expression
“Section 57” is cut down by the expression “and an application for
rectification of the register”. Such rectification applications are
referable only to Sections 57(1) and (2) and not to the suo motu power of
the Registrar under Section 57(4). Therefore, apart from the substantive
reason given above of maintaining the purity of the register, even on a
literal construction of Section 125(1), it is clear that Section 57 (4)
would have to be excluded.
27. Whirlpool’s case, which is relied upon strongly by the appellant’s
counsel, has to be understood on its own facts. In paragraphs 6 and 7 of
the said judgment this Court set out the facts as follows:
“On 28.2.1997, the appellant filed an application in Form TM-12 for renewal
of the Trade Mark "Whirlpool" in Class 7 and the Registrar, by his order
dated 29.07.1997, allowed the renewal for three successive periods, namely,
22.2,1977,22.2.1984 and finally 22.2.1991. Thereafter, on 8.08.1997
appellant made an application under Order 6 Rule 17 C.P.C. for amendment of
the plaint in Suit No. 1705 of 1994, referred to above, so as to include
the ground of infringement of the Trade Mark also in the suit but the
application is still pending in the Delhi High Court which has already
granted time twice to the defendants, namely, Chinar Trust to file a reply.
In the meantime, Chinar Trust, through its attorneys, wrote on 10.09.1997
to the registrar to take suo motu action Under Section 56(4) for
cancellation of the Certificate of Renewal granted to the appellant on
29.07.1997 and the registrar, acting on that request, issued a notice to
the appellant on 26th Sept., 1997 requiring it to show cause why the
Certificate of Registration be not cancelled. Against this notice, the
appellant filed a writ petition in the Bombay High Court which was
dismissed on 8.12.1997. It is against this judgment that the present appeal
has been filed.” (at paras 6 and 7)
28. Finally, this Court’s decision turned on the facts of that case as
set out in paragraph nos. 72 and 73 therein.
“In the instant case, it has already been indicated above that when the
Assistant Registrar of Trade Marks dismissed appellant's opposition to the
registration of respondent's Trade Mark by its order dated 12.8.1992, it
filed an appeal in the Delhi High Court, which was admitted on 01.02.1993
and has since been registered as C.M.(Main) 414 of 1992. Thereafter, on
04.08.1993, the appellant filed a rectification petition Under Sections
45 and 46 of the Act for removing the entry relating to the Trade Mark for
which Registration Certificate was granted to the respondents on
30.11.1992. The appellant has also filed a suit for passing-off (Suit No.
1705 of 1994) in the Delhi High Court against the respondents in which an
order of temporary injunction has been granted in favour of the appellant
which has been upheld by the Division Bench of the High Court as also by
this Court. In that suit, an amendment application has also been filed so
as to include the ground of infringement of the appellant's Trade Mark but
that application has not yet been disposed of. It is, however, obvious that
if the application is allowed, the amendments will relate back to the date
of the application, if not to the date of plaint.
In view of the pendency of these proceedings in the High Court and
specially in view of Section 107 of the Act, the Registrar could not
legally issue any suo motu notice to the appellant Under Section 56(4) of
the Act for cancellation of the Certificate of Registration/Renewal already
granted. The appeal is consequently allowed and the show-cause notice
issued by the Deputy Registrar (respondent No. 2) on 26th of Sept. 1997
Under Section 56(4) of the Act is hereby quashed. The appellants shall be
entitled to their costs.” [at paras 72 and 73]
29. While arriving at this conclusion on facts, this Court held:-
“The extent of jurisdiction conferred by Section 56 on the Registrar to
rectify the Register, is, however curtailed by Section 107 which provides
that an application for rectification shall, in certain situations, be made
only to the High Court. These situations are mentioned in Sub-section (1)
of Section 107, namely, where in a suit for infringement of the registered
Trade Mark, the validity of the registration is questioned by the defendant
or the defendant, in that suit, raises the defence contemplated by
Section 30(1)(d) in which the acts which do not constitute an infringement,
have been specified, and the plaintiff in reply to this defence questions
the validity of the defendant's Trade Mark. In these situations, the
validity of the registration of the Trade Mark can be determined only by
the High Court and not by the Registrar.
Section 107 thus impels the proceedings to be instituted only in the High
Court. The jurisdiction of the Registrar in those cases which are covered
by Section 107 is totally excluded. Significantly, Section 107(2) provides
that if an application for rectification is made to the registrar Under
Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks
fit, refer that application, at any stage of the proceeding, to the High
Court.
Similarly, Under Section 111 of the Act, in a pending suit relating to
infringement of a Trade Mark, if it is brought to the notice of the Court
that any rectification proceedings relating to plaintiffs or defendant's
trade Mark are pending either before the Registrar or the High Court, the
proceedings in the suit shall be stayed pending final decision of the High
Court or the Registrar. Even if such proceedings are not pending either
before the Registrar or the High Court, the trial court, if prima facie
satisfied that the plea regarding invalidity of plaintiff s or defendant's
Trade Mark is tenable, may frame an issue and adjourn the case for three
months to enable the party concerned to apply to the High Court for
rectification of the Register. If within three months, the party concerned
does not approach the High Court, the plea regarding invalidity of Trade
Mark would be treated as abandoned but if such an application has been
given hearing,, the suit would be stayed awaiting final decision of the
High Court. The finding of the High Court would bind the parties and the
issue relating to the invalidity of Trade Mark would be decided in terms of
those findings.
In this background, the phrase "before which the proceeding concerned is
pending" stands out prominently to convey the idea that if the proceeding
is pending before the "Registrar", it becomes the "TRIBUNAL" Similarly, if
the proceeding is pending before the "High Court", then the High Court has
to be treated as "TRIBUNAL". Thus, the jurisdiction of the Registrar and
the High Court, though apparently concurrent in certain matters, is
mutually exclusive. That is to say, if a particular proceeding is pending
before the registrar, any other proceeding, which may, in any way, relate
to the pending proceeding, will have to be initiated before and taken up by
the Registrar and the High Court will act as the Appellate Authority of the
Registrar Under Section 109: It is obvious that if the proceedings are
pending before the High Court, the registrar will keep his hands off and
not touch those or any other proceedings which may, in any way, relate to
those proceedings, as the High Court, which has to be the High Court having
jurisdiction as set out in Section 3, besides being the Appellate Authority
of the Registrar has primacy over the Registrar in all matters under the
Act. Any other interpretation of the definition of "TRIBUNAL" would not be
in consonance with the scheme of the Act or the contextual background set
out therein and may lead to conflicting decision on the same question by
the Registrar and the High Court besides generating multiplicity of
proceedings.” [at paras 59 – 62]
30. No argument was made in Whirlpool’s case that Section 57(4) would be
independent of Section 125(1) for the reasons stated hereinabove. Further,
it is clear that one of the parties to the suit for passing off in the said
decision applied for rectification, unlike the present factual scenario.
For these two reasons also the said judgment would have no application to
the facts of the present case. Also, it is not clear from the facts stated
in the said judgment as to how Section 107(1) would be attracted. A suit
for passing off alone had been filed – an amendment application to add the
relief of infringement of trademark was pending. This is perhaps why this
Court referred to the said amendment application and said that if it were
to be granted it would relate back to the date of the suit itself. The
defendant in the said suit obviously could not have filed a written
statement taking up a plea of invalidity of the registered trademark before
an amendment application of the plaintiff adding the relief of infringement
had been allowed. For this reason also we find that the aforesaid judgment
cannot be said to have laid down any principle of law touching upon
Sections 125 and 57 of the Act.
31. We are, therefore, of the view that, for the reasons given by us, the
Division Bench judgment requires no interference. The appeal is,
therefore, dismissed. No costs.
……………………J.
(Kurian Joseph)
……………………J.
(R.F. Nariman)
New Delhi;
January 20, 2016.
