critical spare parts for the defence and in particular, in developing submarine batteries under the aegis of the Defence Ministry and the High Court erred in directing the appellants to issue an advertisement giving details about the technical specifications for submarine batteries and in selecting the product submitted in response to the advertisement and the impugned order is not sustainable.= If the country wishes to play a substantial role in the Indian Ocean and Arabian Sea, India must ensure high standards of defence power comparing with the neighbouring countries and it should have modernized submarines. Modernized submarines require submarine batteries with high sophisticated standard under the aegis of DGQA. The Government cannot put the life of its defence personnel and submarine worth crores of rupees to risk simply because the respondent claims to have the capability and can supply submarine batteries. For such defence critical spare parts like submarine batteries, there cannot be any open advertisement inviting tenders. Advertisements are issued calling for tenders only for common use items which are normally available in the open market with a wide range of sources. Submarine batteries do not fall under this category of common use items. The respondent cannot claim any vested right to be issued a development indent or RFP or a supply order simply because it has made investments to manufacture submarine batteries. Straightway RFP cannot be issued to the respondent by ignoring the procedure for issuing a development indent and testing the batteries. The aforesaid discussion and also the written submission as to how the respondent developed the batteries over a period of time reiterate that the development of second source could only be as per the guidelines of DGQA and under the supervision and inspection of the officials of the DGQA and not independently. The High Court did not keep in view the policy of the Government in purchasing the critical spare parts for the defence and in particular, in developing submarine batteries under the aegis of the Defence Ministry and the High Court erred in directing the appellants to issue an advertisement giving details about the technical specifications for submarine batteries and in selecting the product submitted in response to the advertisement and the impugned order is not sustainable. The impugned order of the High Court is set aside and this appeal is allowed. In the facts and circumstances of the case, we make no order as to costs.

                                                                  REPORTABLE

                        IN THE SUPREME COURT OF INDIA
                        CIVIL APPELLATE JURISDICTION

                        CIVIL APPEAL NO. 3193 OF 2006


       UNION OF INDIA & ANR.                              ..Appellants

                                   Versus

       HBL NIFE POWER SYSTEMS LTD.                        ..Respondent



                               J U D G M E N T

R. BANUMATHI, J.



            This appeal assails the order dated  27.10.2005  passed  by  the
High Court of Delhi allowing the appeal  in  LPA  No.2448  of  2005  thereby
directing  the  Union  of  India  to  issue  an  advertisement  in   leading
newspapers having  wide  circulation  inviting  tenders  for  the  submarine
batteries  mentioning  the  detailed  technical   specifications   and   the
appellants  to  consider  all  the  products  which   meet   the   technical
specifications and thereby proceed to select the best product in  accordance
with law.
2.          The subject-matter involved in the  present  case  is  submarine
batteries required for the Indian Navy.  Indian  Navy  has  three  types  of
submarines for which three different types of  batteries  are  used.  Type-I
battery for EKM submarines, Type-II battery for  SSK  class  submarines  and
Type-III battery for Foxtrot class submarines.  Initially,  these  batteries
were imported from the Original  Equipment  Manufacturer.  In  view  of  the
recurring requirement of the batteries, subsequently a  decision  was  taken
to progress their indigenisation. Director General Quality Assurance  (DGQA)
working  under  the  Ministry  of  Defence  has  a  detailed  procedure   to
‘develop/indigenise’ critical items/spares. As per the said  procedure,  the
Government   identifies   the   possible   vendors   and   assesses    their
capacity/technical qualifications and  thereafter  a  development  order  is
placed on the proposed supplier.  During this period of development  of  the
spares, the Government carries out regular inspection  and  the  product  is
developed under the aegis of officials of the Defence Ministry and  officers
of the DGQA are associated throughout the  development  process  right  from
the time of sourcing of raw materials to ensure that the  product  not  only
meets the technical qualifications but is fully reliable and free  from  any
errors in actual performance.
3.          By following the above  rigorous  procedure,                M/s.
Standard Batteries Ltd. was developed  as  an  indigenous  manufacturer  for
supplying Type-III  submarine  batteries.          M/s.  Standard  Batteries
Ltd. was subsequently  developed  as  a  manufacturer  of  Type-I  submarine
batteries in the year 1988.   M/s. Exide Industries Ltd.  was  developed  as
an indigenous manufacturer of Type-II submarine batteries in 1989.   In  the
year 1998, M/s. Standard Batteries Ltd. sold  its  business  to  M/s.  Exide
Industries Ltd.  Since then, M/s.  Exide  Industries  Ltd.   has  become   a
single vendor in supplying batteries for all three classes of submarines  to
the Indian Navy.  Officers  of  DGQA  are  constantly  associated  with  the
manufacturing of the submarine batteries in Exide  Industries  Ltd.  as  and
when they are required by the Indian Navy.  As M/s.  Exide  Industries  Ltd.
has become the single vendor, in  2004,  Government  started  exploring  the
possibility of developing another supplier as second  source  for  submarine
batteries. But as per the policy, the Government cannot register anyone  for
supply of submarine batteries without following  the  procedure  or  putting
the vendor through the process  of  the  development.   In  any  event,  the
requirement of the supervision of DGQA in development  of  the  product  and
thirteen quality tests intended to test submarine batteries could  never  be
dispensed with.
4.          The respondent made its representation in October  2004  to  the
Ministry of Defence claiming that it had developed submarine  batteries  and
that they are under  internal  evaluation.  On  31.03.2005,  the  respondent
requested the Ministry of Defence  for  a  development  order  so  that  the
respondent can be developed as the second source of submarine batteries  and
the respondent  agreed  to  undergo  stringent  tests  before  it  could  be
registered for supplying the product. As the residual life of  the  existing
batteries was coming to an end,  in  July  2005,  the  Government  has  been
processing the request by the Navy to purchase submarine  batteries.   Since
only M/s. Exide Industries Ltd. was then the only approved supplier  of  all
types of  submarine  batteries,  it  was  proposed  to  issue  ‘Request  For
Proposal’ (RFP)  to  M/s.  Exide  Industries  Ltd.  alone  and  the  Defence
Minister gave approval to issue  RFP  to  M/s.  Exide  Industries  Ltd.  for
supplying eleven sets of submarine batteries.
5.          Respondent filed writ petition before the Delhi  High  Court  on
17.09.2005 claiming that it should be  issued  a  request  for  proposal  as
well,  as  it  was  registered  for  some  other  products  namely   torpedo
batteries.  Be it noted that the submarine batteries claimed  to  have  been
developed by the respondent were neither developed under the  aegis  of  the
DGQA nor the Government paid for development of  the  prototype  cells.  The
learned  Single  Judge  vide  order  dated  05.10.2005  dismissed  the  writ
petition  observing  that  if  the  extant  policy  envisages  selection  or
shortlisting of a party for purposes of raising a development indent for  an
alternative indigenous source of equipment, this stage must be  successfully
crossed before venturing further into the issuance of request  for  proposal
and thereafter issuance of a PAC. The  learned  Single  Judge  further  held
that procurement method was a policy matter and the policy  did  not  suffer
from any illegality and in any event, the policy has not been challenged  by
the respondent in the writ petition.  Aggrieved by  dismissal  of  the  writ
petition, the respondent filed LPA No.2448/2005 which was allowed  vide  the
impugned judgment dated 27.10.2005 and the High Court issued  directions  to
the Ministry of Defence to  procure  even  the  critical  spare  parts  like
submarine batteries only after issuing advertisement and  calling  for  open
tender. Assailing the impugned judgment, the appellant-Union  of  India  has
preferred this appeal.
6.          Ms. Pinky Anand,  learned Additional Solicitor General of  India
alongwith Mr. Qadri  appearing  for  the  appellants  contended  that  while
tender is  issued  for  common  use  items,  purchase  of   specialized  and
critical spare parts for the Defence Ministry cannot  be  done  by  an  open
tender and in the instant case,  there  were  justifiable  reasons  for  the
Government to classify  submarine  batteries  as  critical  and  specialized
defence product and to procure the same only from those suppliers  who  have
developed the submarine batteries under the  aegis  of  DGQA  and  are  duly
approved/registered  with  DGQA.  It  was  submitted  that  in  relation  to
essential defence supplies/critical spare parts, the Government must  ensure
that   the   supplier   has   the   necessary   technical    qualifications,
infrastructure and capacity to develop the product  and  in  critical  spare
parts like submarine batteries, the Government cannot put the  life  of  its
defence personnel and submarine worth  several  crores  of  rupees  to  risk
simply because the  respondent  claims  to  have  the  capability.   It  was
submitted that the High Court was not right in directing the Government  for
issuing tenders for critical spare parts like  submarine  batteries  without
knowing whether the said product can  withstand  all  the  thirteen  quality
tests and render reliable performance on board.
7.          Per contra, learned counsel for the  respondent  submitted  that
the respondent for the first time  vide  its  letter  dated  06.10.1999  had
shown its intention to develop the submarine  batteries  and  requested  the
appellant to provide the specifications of the same and in response  to  the
same,  appellants vide letter dated 22.11.1999 duly provided  the  technical
specifications and on the  basis  of  the  same,  respondent  had  developed
prototype cells of the said batteries for testing which were offered to  the
appellants for evaluation way back in March 2004 and despite such  offering,
the appellants did not carry out any test. Contention of the  respondent  is
that they continued to invest huge sums for developing  prototype  cells  of
submarine batteries under legitimate expectation that the  respondent  would
be considered as an alternative source for  supplying  submarine  batteries.
Further contention of the respondent is that  the  goods  purchased  without
any tender  on  proprietary  basis  only  from  one  source  is  a  flagrant
violation of the constitutional mandate of Article 14 and  by  directing  to
issue an advertisement, the High Court rightly held against the monopoly  of
single source for supply of submarine batteries.
8.          We have carefully considered the  rival  contentions    advanced
by the parties and perused the details of the procedure for  development  of
submarine batteries and various  tests  required  to  be  conducted  on  the
submarine batteries and other material on record.
9.          The defence procurement can be classified into two broad heads:-

(i)    First  category  are  common  use  items  of  generic  or  commercial
specifications and these are available  in  open  market.  For  example  car
batteries, spare of various vehicles etc.  These items are procured  by  the
Ministry of Defence by Open Tender Enquiry (OTE) i.e. by  advertisements  in
the press and website.

(ii)  Second category are those materials  which  do  not  fall  within  the
above ‘common use’ category. These spares are ‘mission  critical’  strategic
defence products, which  are  procured  only  from  those  firms  which  are
registered  with  Director  General  of  Quality  Assurance   (DGQA)   which
functions under the Ministry of Defence. The supplier has to  be  registered
with DGQA for the supply of that specific product.

Defence Ministry/DGQA has a very stringent procedure before  any  vendor  is
registered with DGQA for supplying the  product.  In  the  second  category,
though the product is manufactured by a private supplier, it is  not  as  if
the Government is totally disassociated from the production process  of  the
product.  As is seen from the Standing Orders of the  DGQA  (Annexure  P-1),
prior to grant of registration, the Government pays the vendor to  ‘develop’
the product under its supervision for over a period of time.   Officials  of
the DGQA are posted at the factory of the supplier to ensure that the  goods
so produced are absolutely in order. The inspectors of  DGQA  inspect  every
stage of production right from the sourcing of  the  raw  materials  by  the
vendor as it is  quite  possible  that  the  vendor  may  purchase  inferior
quality material which may be difficult to  detect  in  the  final  product.
Development of the second source would  require  upto  a  maximum  of  three
years, as the development process involves drawing up of detailed  technical
specifications and performance criteria based  on  which  the  firm  has  to
prepare a  detailed  design  for  each  and  every  component  to  meet  the
stringent military standards.
10.         The subject-matter of the present case is  submarine  batteries.
The  importance  of  submarine  batteries   to   a   submarine   cannot   be
underestimated as it is strategically  a  vital  equipment  for  submarines.
Submarines or diesel electrical vessels run on battery power. Power  to  the
submarine is provided by about 240 to 528 batteries, weighing about 800  kgs
each, depending on the nature of submarine.  The only source of power  to  a
submarine when it dives beyond  nine  metres  into  sea/ocean  is  submarine
batteries.  Improvement in battery technology  and  capacity  is  always  an
important  goal  in  submarine  design.   Batteries  are  unique  source  of
electric  energy  in  underwater  navigation.  When  a  submarine  is  under
surface, all  its  equipments  are  powered  from  the  batteries,  electric
machines, lights, internal communication etc. which means  that  right  from
the first stage, the submarine batteries are vital for operating  submarine.
 Survival of submarine depends on its radio noise levels which are  directly
related to the efficient functioning  of  onboard  equipment  and  machinery
especially when the batteries which is the only source of power and  energy.
 If the batteries fail, submarine will be without  power  and  it  can  have
catastrophic consequences on men as  also  submarine  would  be  lost.  DGQA
therefore ensures that  it  is  associated  during  the  production  of  the
batteries by the approved vendor and only those  batteries  which  pass  the
thirteen tests are purchased by the Navy. In case  of  submarine  batteries,
before a particular vendor is approved for supply  of  submarine  batteries,
as per the policy, first the government issues  development  indent  to  the
lowest bidder and the Government pays the proposed  vendor  to  develop  the
product and the product is developed by the vendor under the supervision  of
the DGQA officials. Product so developed under the supervision of  DGQA  has
to undergo thirteen  tests  as  stipulated  in  Annexure  P-2.  Ministry  of
Defence/Navy authorities cannot  accept  the  final  product  without  being
fully associated with the development of the product right  from  the  stage
of procurement of raw material to the stage of final product.   As  per  the
policy, RFP could be issued only to a firm which  is  duly  registered  with
DGQA for supply of the product after development of the  product  under  the
aegis of DGQA.  Having regard to  the  requirements  of  a  highly  critical
spare part like submarine batteries, the Government has  framed  the  policy
for  issuance  of  the  development  indent,  developing  the   source   and
registration with DGQA. It is pertinent to note that in the  writ  petition,
policy itself was not under challenge.   In  fact,  in  the  writ  petition,
respondent-company itself prayed only for issuance of request  for  proposal
under the policy.  The High Court did not keep in view  the  policy  of  the
Government and the mandatory requirement of DGQA being associated  with  the
development of submarine batteries which is a critical defence  spare  part.

11.         If the country wishes to play a substantial role in  the  Indian
Ocean and Arabian Sea, India must ensure high  standards  of  defence  power
comparing with the neighbouring countries  and  it  should  have  modernized
submarines. Modernized submarines  require  submarine  batteries  with  high
sophisticated standard under the aegis of DGQA.  The Government  cannot  put
the life of its defence personnel and submarine worth crores  of  rupees  to
risk simply because the respondent claims to have  the  capability  and  can
supply submarine batteries.  For such  defence  critical  spare  parts  like
submarine  batteries,  there  cannot  be  any  open  advertisement  inviting
tenders. Advertisements are issued calling for tenders only for  common  use
items which are normally available in the open market with a wide  range  of
sources. Submarine batteries do not fall under this category of  common  use
items. The  respondent  cannot  claim  any  vested  right  to  be  issued  a
development indent or RFP or a supply  order  simply  because  it  has  made
investments to manufacture submarine batteries.  Straightway RFP  cannot  be
issued  to  the  respondent  by  ignoring  the  procedure  for   issuing   a
development indent and testing the batteries.
12.         As the matter was pending for over a decade, we have  asked  the
appellant-Union of India about the  subsequent  development  of  the  second
source for  supply  of  submarine  batteries  and  for  the  status  of  the
respondent.  In response, on instruction Mr. S.W.A. Qadri, onbehalf  of  the
appellant has filed elaborate written submission.  It is stated  that  after
grant of stay order dated 16.12.2005 by  this  Court  against  the  impugned
order, the appellant initiated  a  case  for  development  of  an  alternate
vendor for submarine batteries seeking development indents from IHQ  (N)/DEE
as per directives of Ministry of Defence  vide  ID  No.3536/04/D(N-I)  dated
08.02.2005.   Accordingly,  open  tender  was  issued   in   newspapers   on
29.05.2006 wherein several firms including the  respondent  responded.   For
development of a second source of Type-I batteries,  development  order  was
placed on the respondent HBL Ltd. on 22.03.2007, as per which the  firm  was
to develop four Type-I cells at a cost of Rs.11.16  lakhs  with  a  delivery
schedule  of  eighteen  months.  The  prototype  batteries  manufactured  by
respondent-HBL failed  to  meet  DGQA’s  stipulated  standard  for  relevant
discharge (C2) test. Thereafter, on 12.07.2011, a meeting was held with  the
participants  of  DEE  and   M/s.   HBL   representatives.   Post   detailed
deliberation, the respondent was asked to manufacture four cells afresh  and
present them for type testing.  Test  of  batteries  was  completed  at  the
factory premises in June 2012 and batteries were transferred to  BCF,  Sewri
in January 2013. However, on receipt at  BCF,  Sewri,  visible  bulging  was
observed in all batteries and lead tape discontinuity in one battery  during
first maintenance charge. During analysis  in  February  2013,  bulging  was
found to exceed permissible limit of 12 mm on all batteries post first  full
charge.  However, respondent opined that the bulging  was  due  to  improper
packaging whilst transporting batteries from  the  premises  (Hyderabad)  to
Mumbai. Thereafter, respondent firm–HBL agreed  on  certain  conditions  for
manufacturing of four new prototype cells with  a  lead  time  of  three-six
months and agreed to complete manufacturing of test cells by February  2014.
 However, there was delay on the part of  the  respondent  and  finally  the
trial of test  cells  was  completed  on  14.11.2014  and  the  trials  were
validated by CQAE, Secunderabad.  Test cells were received at BCF, Sewri  in
January  2015.  Charging/discharging  trials  commenced   wherein   charging
parameters were examined and found to be satisfactory.  In this  regard,  in
the written submission filed by UOI, it is stated as under:-
“8.  …The  performance  report  forwarded  by  ASD  (Mbi)/BCF  wherein   all
parameters of the cells were examined, indicates satisfactory test  results.
 In view  of  the  satisfactory  completion  of  indigenization  efforts  by
respondent herein (M/s. HBL, Hyderabad) the firm was nominated  as  IHQ  MOD
(N) approved vendor  for  supply  of  Type-I  submarine  batteries  for  EKM
submarines on 28.05.2015

9. ..the next procurement case shall have  an  additional  qualified  vendor
for Type-I submarine batteries to increase the market  competence  for  both
technical and financial aspects.”

Though the subsequent developments may not  be  relevant  to  determine  the
issue, we have referred to the written submission in extenso  for  the  sake
of completion.
13.         The aforesaid discussion and also the written submission  as  to
how the respondent developed the batteries over a period of  time  reiterate
that the development of second source could only be as  per  the  guidelines
of DGQA and under the  supervision and inspection of the  officials  of  the
DGQA and not independently.  The High Court did not keep in view the  policy
of the Government in purchasing the critical spare  parts  for  the  defence
and in particular, in developing submarine batteries under the aegis of  the
Defence Ministry and the High Court erred in  directing  the  appellants  to
issue an advertisement giving details  about  the  technical  specifications
for submarine batteries and in selecting the product submitted  in  response
to the advertisement and the impugned order is not sustainable.
14.         The impugned order of the High  Court  is  set  aside  and  this
appeal is allowed. In the facts and circumstances of the case,  we  make  no
order as to costs.




                                                             ..…………………….CJI.
           (T.S. THAKUR)


                                                              ..……………………….J.
                                 (R. BANUMATHI)
New Delhi;
January 20, 2016

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.= 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.

                                 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.