Supreme Court of India
JAGATJIT INDUSTRIES LIMITEDversusTHE INTELLECTUAL PROPERTY APPELLACE BOARD & ORS.
- Citation
- 2016 INSC 74
- Decided
- 20 January 2016
- Disposal
- Dismissed
- Bench
- KURIAN JOSEPH
Holding
Section 125 limits rectification applications to parties to the infringement suit and does not bar the Registrar’s suo‑motu power under s.57(4), and the registration issued on 13‑Jan‑2004 was invalid as it contravened s.23(1).
Summary
Jagatjit Industries Ltd. applied for registration of the mark “Blenders Pride” in India. Respondent No.4, a US‑based liquor company, opposed the application, claiming prior rights and seeking an extension of time to file its opposition. The Registrar issued a show‑cause notice under s.57(4) to delete the mark, but later withdrew it, stating that s.125 barred the Registrar from proceeding because rectification should be before the Appellate Board. The appellant challenged the Registrar’s actions and the Appellate Board’s order. The Supreme Court held that the extension of time was valid, the registration issued on 13‑Jan‑2004 violated s.23(1) as the opposition period had not expired, and that s.125 applies only to rectification applications made by parties to the infringement suit, not to the Registrar’s suo‑motu power under s.57(4). Consequently, the Registrar’s show‑cause notice was proper, the registration was invalid, and the Division Bench judgment was affirmed.
Issues considered
- The validity of the trademark registration issued before the expiry of the opposition period under s.23(1).
- Whether the Registrar’s suo‑motu power under s.57(4) can be exercised when s.125 is invoked.
- The applicability of s.125 to the present rectification proceedings given that the respondent was not a party to the infringement suit.
- The jurisdiction of the Registrar (Bombay) to issue a show‑cause notice for an application filed in Delhi.
Legislation cited
- Trade Marks Act, 1999s. 107, s. 124, s. 125, s. 131, s. 21(2), s. 23(1), s. 23(1)(a), s. 30(1)(d), s. 30(2)(e), s. 46, s. 47(4), s. 56, s. 57(4)
Subjects
trademark registrationopposition proceedingsrectification of registerSection 125Section 57(4)jurisdictionextension of timeshow cause noticepurity of registerinfringement suit
Judgment
[2016] l S.C.R. 808
A JAGATJIT INDUSTRIES LIMITED
v.
THE INTELLECTUAL PROPERTY APPELLACE BOARD &
ORS.
B (Civil Appeal No. 430 of2016)
JANUARY 20, 2016.
(KURIAN JOSEPH AND R. F. NARIMAN, JJ.)
Trade and Merchandise Marks Act, 1999: s.125 -
..pplicability of - Respondent no.4 engaged in manufacture and
c marketing of alcoholic beverage and claiming to have adopted the
trade mark 'Blenders Pride' through its /icencee 'Seagram' -
Registration of said trade mark was granted in 50 countries -
Application for registration in India was pending -Appellant applied
for registration of identical trade mark 'Blenders Pride' -
D Respondent no.4 filed notice of opposition - However, respondent
no.4 found that registration certificate was issued to appellant -
Writ petition by respondent no.4 - Meanwhile show cause notice
issued by Registrar proposing to rectify the register uls.57(4) - Writ
petition disposed of with direction to Registrar to decide the issues
arising out of show cause notice - Meanwhile suit for infringement
E
filed by appellant against licencee of respondent no.4 - While
Registrar proposed to rectify the register uls.57(4) by removing the
mark - Aggrieved appellant filed writ petition and High Court
directed Registrar to dispose of the proceedings before it - Registrar
recalled the show cause notice issued stating that he has no
F ;urisdiction to proceed by virtue of s.12 5 and proceedings could
only continue before the Appellate Board - Appellate Board held
that when the show cause notice was issued, /icencee had not yet
filed its counter statement as it was not even served with the suit
papers and that since suit had not been filed against respondent
no.4 but had only been filed against /icencee, s.125 would have no
G
application and therefore Registrar order would have to be set aside
- Registrar directed to expeditiously decide the opposition
proceedings - Appellant filed writ petition - High Court held that
no injustice was done by Appellate Board in directing de novo
hearing of the case - Held: s.124(1) refers only to the plaintiff
H and defendant of a suit for infringement, and s. l 24(1)(ii)
808
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 809
APPELLATE BOARD
specifically refers to the "party concerned"" who will apply to A
the Appellate Board for rectification of the register - Similarly, s.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 B
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 u/
s.30(2)(e) - It is clear therefore that the application for rectification
of the register referred to-ins.125(1) could only be an application
(given the facts of the present case) by the defendant in the suit c
for infringement - The defendant being licencee, it is clear that
the Section would have no application - Respondent no. 4 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,
D
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. s.125(1) would have no
application.
· ss.21(2), 23(1) - Opposition to registration -Application for E
registration of impugned trade mark published in journal on 7'1'
October 2003 - Respondent no.4 seeking extension of one month's
time for filing its notice of opposition on 6.1.2004 ~On 19.1.2004,
respondent no.4 filed its notice of opposition - On 16.2.2004, Trade
Mark Registry issued a notice to appellant inviting its counter F .
statement to the said notice of opposition and had stated that if the
counter statement' was not filed within time, the trade mark would
be deemed to be abandoned - On 20. 1.2005. respondent no. 4 came
to know that trade mark registration certificate had been issued to
appellant on 13.1.2004 itself-Held: Time was extended by Registrar
as evidenced by letter dated 16.2.2004 - Therefore, any registration G
certificate granted prior to 30 days extended period from 6.1.2004
would be violative of s.23(1) - Therefore, registration certificate
having been issued on 13.1.2004 would be violative of s.23(l)(a)
and register would have to be rectified by deleting the said trademark
therefrom. H
810 SUPREME COURT REPORTS (2016] I S.C .R.
A s.57(4) - Territorial jurisdiction -Show cause notice uls.57(4)
issued by Registrar in Bombay - Application for registration of trade
mark made in Delhi - Plea that the show cause notice was without
iurisdiction - Held: Under s.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
B
- Therefore, the power to be exercised u!s.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,
c Bombay, as is clear from s. 3(2) of the Act - Therefore, plea that
show cause notice issued by Registrar in Bombay was without
iurisdiction was without substance.
Dismissing the appeal, the Court
HELD: 1. Respondent No.4 sought an extension of one
D 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 notice of opposition dated
E 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. A perusal of
this letter shows that the notice of opposition was taken on
record. This could not have been done nnless time had been
extended by one month, as the said notice of opposition was filed
F only on 19.1.2004, i.e. within the 30 days period after three months
were over on 6.1.2004. Thongh 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. It is thus
G clear that time has been extended by the Registrar, as is
evidenced by the letter dated 16.2.2004. Therefore, 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 mattet', the Appellate Board and the
Division Bench are clearly right in declaring that the registration
H certificate, having been issued on 13.1.2004, would be violative
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 811
APPELLATE BOARD
of Section 23(1)(a), and the register would have to be rectified A
by deleting the said trademark therefrom. [Paras 15, 16, 18] [825-
C-D; 826-E-F; 828-B-FJ
2. The plea was raised that the show cause notice dated
16.2.2005 under Section 57(4) was without jurisdiction as it was
issued by the Registrar in Bombay and not by the authorities in B
Delhi and as the application for registration of trademark was
made in Delhi and all the subsequent proceedings took place iu
Delhi, this show cause notice should also have been issued only
in Delhi. 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
c
Section. 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 D
superintendence and directions of the Registrar, Bombay, as is
clear from Section 3(2) of the Act. This point is, therefore,
without substance. [Para 19, 20, 21] [828-G-H; 829-C-D]
3.1. Section 124 of the Act inter alia states that where, in
a suit for infringement of a trademark, the defendant pleads that E
the registration of the plaintiff's trademark is invalid, then the
court trying the suit shall stay the snit pending final disposal of
rectification proceedings either before the Registrar or the
Appellate Board, as the case may he. 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 F
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, snch 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 G
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. [Paras 22 and 23] [829-E-G]
H
812 SUPREME COURT REPORTS (2016) I S.C.R.
A 3.2. 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 "plaintifr' and the "defendant" in a suit for infringement
of a registered trademark. It is obvious, therefore, that an
B
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
c 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 respondent no.4, it is clear that the Section would have no
application. The submission that Seagram is only the licensee of
D
respondent no.4 and that the authorized signatory of both parties
are the same holds no water for the reason that respondent no.4
is not said to violate the registered trademark of the appellant.
Seagram again happens to be two separate Companies. The plaint
allegations are that both the said companies were engaged in
E 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 were licensees of
the said trademark of the respondent no.4. In fact, in paragraph
10 of the plaint, there was a specific avermeut by the plaintiffs
F
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. The suit is both
a suit for infringement as well as passing off, and that respondent
no.4 has not been made a party defendant to the said suit. Also,
G 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 ebe. 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)
H would have no application. Secondly, the Division Bench of the
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 813
APPELLATE BOARD
High Court was also correct in reasoning that Section 125(1) A
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
B
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.
[Paras 24, 25) (829-H; 830-A-H; 831-A-B]
4. Section 47( 4) was referred to in Section 107 for the
reason that the said sub-section refers to applications made to c
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) D
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, E
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.
[Para 26] [832-G-H; 833-A-B)
' F
Whirlpool Corporation v. Registrar of Trade Marks,
Mumbai and others 1998 (2) Suppl. SCR 359 : (1998)
8 SCC 1; M Mazharuddin Ali v. Govt. of A.P., (2000)
10 SCC 383 - Held inapplicable
Hardie Trading Ltd. and another v. Addisons Paint &
Chemicals Ltd. 2003 (3) Suppl. SCR 686 : (2003) 11 G
SCC 92; Kai/ash v. Nanhku 2005 (3) SCR 289 : (2005)
4 sec 480 - relied on.
Mis Allied Blenders and Distillers Private Limited,
Mumbai v. Intellectual Property Appellate Board,
Chennai & Ors. AIR 2009 Madras 196 - referred to. H
814 SUPREME COURT REPORTS [2016] I S.C.R.
A Case Law Reference
1998 (2) Suppl. SCR 359 held inapplicable Para 10
2003 (3) Suppl. SCR 686 relied on. Para 11
AIR 2009 Madras 196 referred to. Para 16
(2000) 10 sec 383 held inapplicable Para 17
B
2005 (~) SCR 289 relied on. Para 17
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 430 of
2016
From the Judgment and Order dated 27 .0 I.2009 of the High Court
C of Delhi in Letters Patent Appeal No. 245 of2008.
Prathiba M. Singh, Kamal Budhiraja, Vaibhav M., Aman Gupta,
Nikhita, Devyanshu,Abhinav Mukerji for the appellant.
Sudhir Chandra, A. K. Sanghi, Heman! Singh, Mamta Jha, Manish
K. Mishra, Waseem ShuaibAhmed, SuruchiiAggarwal, Nikhil Majithia,
D S. S. Rawat, Rashmi Malhotra, D. S. Mabra for the Respondents.
The Judgment of the Court was delivered by
R. F. NARIMAN, J. Leave granted.
1. The respondent No.4 is a corporation incorporated under the
E 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
F
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'
G 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-
1. This journal was published on 7'" October, 2003. Respondent No.4
H
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 815
APPELLATE BOARD [R. F. NARIMAN, J.]
had filed Form TM-44 seeking extension of one month's time for filing A
its notice of opposition against the appellant's application on 6.1.2004,
i.e. within the statutoty 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 B
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, C
respondent No.4 informed the Trade Marks Registry about the pending
opposition proceedings which were yet to be disposed of.
2. 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 of2005. Meanwhile, on 16.2.2005, a D
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. E
3. 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. F
4. 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 I 9.1.2004 was clearly beyond G
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.
5. Meanwhile, on 14.1.2005, a suit for infringement ofits trademark
had been filed by the appellant herein in the District Court of Jalandhar H
816 SUPREME COURT REPORTS [2016] I S.C.R.
A 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
B 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.
6. While matters stood thus, after considering the reply of the
c 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
D appellant was directed to return the registration certificate wrongly issued
forthwith, and further directed notto use the said certificate of registration
in respect of the above-mentioned trademark in any manner for any·
purpose and in any proceedings.
7. A Writ Petition bearing Nos. I 0080-81 of2005 was filed by the
E 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.
8. The Registrar, by his order dated 14.11.2005, recalled the show
F cause notice issued, stating that he had no jurisdiction to proceed in the
matter inasmuch as, under Section 125 ofthe Act, the proceedings could
only legally continue before the Appellate Board and not before him.
9. In an appeal filed before the Appellate Board, the Appellate
Board, by its judgment dated 6.10.2006, reversed the Registrar's order,
G 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
H . even before the expiry of the extended one month, would obviously be
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 817 ,-
APPELLATE BOARD [R. F. NARIMAN, J.]
contrary to Section 23 of the Act and would therefore be invalid in law. A
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
B
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.
I 0. Againstthe 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 hisjudgmentdated c
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 ofthis Court in Whirlpool Corporation D
v. Registrar of Trade Marks, Mumbai and others, (1998) 8 SCC I,
held that the Section would apply as the defendant in the infringement
suit had filed a written statement questioning the validity ofthe 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.
E
11. 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.
Addlsons Paint & Chemicals Ltd., (2003) 11 SCC 92. It was further F
held that the power of the Registrar to correct his OVl'.n mistakes under
Section 57(4) of the Act is wholly independent of the right ofa party to
make or riot 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 G
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
H
818 SUPREME COURT REPORTS [2016] I S.C.R.
A held that the grant ofregistration on 13.1.2004 was itself invalid being
contrary to Section 23( I) of the Act. Ultimately, the appeal was allowed
in the following terms:
"Section 23( I) of the Act clearly mandates that only after the
statutory period for filling opposition has expired, a registration
B 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
c; 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 ofthe provisions of the Act and directed the Registrar
D 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 Appel late
Board in directing de novo hearing of the case. Consequently the
appeal is allowed and the order of the learned single Judge is set
E aside. No order as to costs." [at para 22 and 23]
12. 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
F 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 (I) would make it clear that there has to be an order in writing by the
Registrar, and no implied order granting extension is therefore
G 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
withoutjurisdiction. Therefore, in view ofa written statement having
been filed in the infringement suit filed by the appellant's licensee taking
H
up the plea of invalidity ofregistration, Section 125 applied on all fours,
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 819
APPELLATE BOARD [R. F. NARIMAN, J.]
and the judgment of this Court in Whirlpool Corporation (supra) would A
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'
B
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 c
only a sub-section, it has made it clear in express language to that effect.
For that purpose, she referred to Section I 07( 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
D
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.
13. Shri Sudhir Chandra, learned senior counsel appearing on E
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 F
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 G
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." H
820 SUPREME COURT ?IOPORTS [2016) 1 S.C.R.
A 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
necessarilv 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
B
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.
14. We have heard learned counsel for the parties. Before
c 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
D (1) 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;
E
Section 21 -Opposition to registration
(I) 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
F
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
G 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.
H
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 821
APPELLATE BOARD [R. F. NARlMAN, J.]
(3) If the applicant sends such counter-statement, the Registrar A
shall serve a copy thereofon 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. B
(5) The Registrar shall, after hearing the parties, if so required,
and considering the evidence, decide whether and subject to what
conditions or limitations, ifany, the registration is to be permitted,
and may take into account a ground of objection whether relied
upon by the opponent or not. C
(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 D
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.
E
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-
F
(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 G
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. H
822 SUPREME COURT REPORTS [2016] 1 S.C.R.
A (2) On the registration ofa 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
B 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
c 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.-
D
( 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
E 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
F 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
G 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).
H
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 823
APPELLATE BOARD [R. F. NARIMAN, J.]
(5) Any order of the Appellate Board rectifying the register shall A
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 ofregistration
of the trade marks is questioned, etc. B
(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 C
(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 D
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 E
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 App.ellate Board for
rectification of the register.
F
(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 (I) 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. G
(3) If no such application as aforesaid has been made within the
time so specified orwithin 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
H
824 SUPREME COURT REPORTS [2016] 1 S.C.R.
A 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
B 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
c 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
D
(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
E 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 4 7 or section 57,
such application shall be made to the Appellate Board and not to
the Registrar.
F
(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, ifhe thinks fit, refer
the application at any stage of the proceedings to the Appellate
Board.
G
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
H there is sufficient cause for extending the time for doing any act
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 825
APPELLATE BOARD [R. F. NARIMAN, J.]
(not being a time expressly provided in this Act), whether the time A
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 (I) shall be deemed to require the
Registrar to hear the parties before disposing of an application for B
extension of time, and no appeal shall lie from any order of the
Registrar under this section."
15. 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) c
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 ta.ken on record by the Registrar,
as is reflected in the Registrar's letter dated 16.2.2004. Since this letter D
is ofcrucial 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 E
To,
Mis. The ACME Co.
Delhi-II 0001
• F
Subject: Opposition No. 160325 to Application No. 618414 in Class 33
in the name of JAGATJIT INDUSTRIES LIMITED
Shriman/ Mahoday/ Madam,
G
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.
Jn this connection I am to invite your attention to Section 21 (2) of H
826 SUPREME COURT REPORTS [2016] I S.C.R.
A 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
B
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 (vi de section
21(2) of the Trade and Merchandise Marks Act, 1999).
c
Yours faithfully,
6227 ASSISTANT EXAMINER OF TRADE MARKS
5.11.04 Dated: I 6-Feb-2004
D No. TOP/
Copy forwarded for information to REMFRY & SGAR
Sd/-
ASSISTANT EXAMINER OF TRADE MARKS
E 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
F 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 ifhe wishes
to extend the time. The decision of the Madras High Court being Mis
Allied Blenders and Distillers Private Limited, Mumbai v.
Intellectual Property Appellate Board, Chennai & Ors., AIR 2009
G Madras 196 was referred to, in particular paragraph 27 thereof, to •how
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 ofopposition is to be done
within the time that is expressly provided in Section 21 (I) and that Section
H 131 of the Act would not therefore apply. However, Section 131 is a
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 827
APPELLATE BOARD [R. F. NARIMAN, J.]
pointer to the fact that the extension of time by the Registrar is a ministerial A
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 B
A.P., (2000) 10 SCC 3 83, 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 c
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 D
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 E
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 ofjustice 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 F
helpless to meet extraordinary situations in the ends of justice.
The observations made by Krishna Iyer, J. in Sushi/ Kumar
Sen v. State of Bihar [(I 975) l SCC 774] are pertinent': (SCC p.
777, paras 5-6)
"The mortality of justice at the hands oflaw troubles a judge's G
conscience and points an angry interrogation at the law reformer.
The processual law so dominates in certain systems as to
overpower substantive rights and substantialjustice. The humanist
rule that procedure should be the handmaid, not the mistress, of
legal justice compels consideration of vesting a residuary power H
828 SUPREME COURT REPORTS (2016) I S.C.R.
A 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 ofPunjab v. Shamlal Murari [(I 976) I SCC 719: 1976
SCC (L&S) 118) the Court approved in no unmistakable terms
B 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
c administration ofjustice."
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
D 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
E 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.
F
19. We may dispose ofan 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
G 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
mofl/ power can only be exercised by the Registrar himself, being the
"Tribunal" referred to in sub-sections ( 1) and (2) of the said Section.
H Section 3 of the Trade Marks Act, 1999 is apposite. Section 3 states:
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 829
APPELLATE BOARD [R. F. NARIMAN, J.]
"Section 3 - Appointment of Registrar and other officers A
(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 B
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 c
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 D
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 E
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 F
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 G
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 ofa suit for infringement, and Section 124(1 )(ii) specifically H
830 SUPREME COURT REPORTS [2016) l S.C.R.
A 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
B
the plaintiff who questions the validity ofthe registration of the defendant's
trademark in a situation where the defendant raises a defence under
Section 30(2)( e ). It is clear therefore thatthe application for rectification
of the register referred to in Section 125( I) could only be an application
(given the facts of the present case) by the defendant in the suit for
c 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
D
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.
E 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 averrnent 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
F
infringement as well as passing off, and it is significantthatAustin 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
G 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 I25( I) would have no application.
25. Secondly, the Division Bench of the High Court is also correct
in reasoning that Section I25(1) would only apply to applications for
H rectification of the register, and not to the exercise of suo 1110111 powers
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 831
APPELLATE BOARD [R. F. NARIMAN, J.]
of the Registrar under Section 57(4). The reason is not hard to seek. If A
the Registrar is barred from undertaking a suo motu exercise under
Section 57(4) to maintain the purity ofthe 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
B
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 c
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. D
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 E
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 F
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'
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 G
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 H
832 SUPREME COURT REPORTS [2016] I S.C.R.
A 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,
B 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:
c " ... 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
D which many persons may be affected, who, nevertheless, would
not be willing to enter upon the risk and expense oflitigation.
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, ifremaining on the Register, would,
E 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]
F 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 1110111 powerofthe 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.
G We are afraid that we are not able to agree. Section 47(4) was referred
to in Section I 07 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
H that Section 107 refers only to Section 47(4) and not the entirety of
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 833
APPELLATE BOARD [R. F. NARIMAN, J.]
Section 47. However, in Section 125(1) of the Trade Marks Act, 1999, A
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
B
register, even on a literal construction of Section 125( I), 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:
c
"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 D
No. 1705 of 1994, referred to above, so as to include the ground
ofinfringementofthe 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 E
10.09. I 997 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., I 997
requiring it to show cause why the Certificate of Registration be F
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
G
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,
H
834 SUPREME COUR.';' ~EPORTS [2016] 1 S.C.R,
A which was admitted on 0l,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, 1LI992. The appellant has also filed a suit for passing-off (Suit
B
No, 1705of1994) 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
c ground of infringement of the appellant's Trade Mark but that
application has not yet been disposed of. It is, however, obvious
that ifthe 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
D 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
E
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 ofjurisdiction conferred by Section 56 on the Registrar
F 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 (I) 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,
G 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
H only by the High Court and not by the Registrar.
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 835
APPELLATE BOARD [R. F. NARIMAN, J.]
Section 107 thus impels the proceedings to be instituted only in A
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, ifhe thinks fit, refer that application,
B
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 c
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 plaintiffs or defendant's Trade Mark is
tenable, may frame an issue and adjourn the case for three months D
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 E
the High Court would bind the parties and the issue relating to the
invalidity ofTrade 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 ifthe proceeding is pending before the "Registrar", it becomes F
the "TRIBUNAL" Similarly, ifthe 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 G
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 H
836 SUPREME COCRT REPORTS [2016] 1 S.C.R.
A any other proceedings which may, in any way, relate to those
proceedings, as the High Court, which has to be the High Court
liaving 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
B
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
c 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
D from the facts stated in the said judgment as to how Section I 07( 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
E 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 oflaw touching upon Sections 125 and 57
F of the Act.
3 I. 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.
Devika Gujral Appeal dismissed.
G
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