1998 (10) TMI 510 - SC - Indian Laws

Cancellation of the Certificate of Registration/Renewal of trademark - Held that - Appeal allowed. 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.

Summary

Issues Involved:
1. Jurisdiction of the Registrar vs. High Court under Section 56(4) of the Trade and Merchandise Marks Act, 1958.
2. Validity of the show-cause notice issued by the Registrar for cancellation of the Certificate of Registration/Renewal.
3. Maintainability of the writ petition in the High Court despite alternative statutory remedies.

Issue-wise Detailed Analysis:

1. Jurisdiction of the Registrar vs. High Court under Section 56(4) of the Trade and Merchandise Marks Act, 1958:

The primary issue revolves around whether the Registrar or the High Court has the jurisdiction to issue a notice under Section 56(4) of the Act for cancellation of a Trade Mark's registration. The Act defines "Tribunal" in Section 2(1)(x) as "the Registrar, or as the case may be, the High Court before which the proceeding concerned is pending." The court clarified that the Registrar and the High Court have concurrent jurisdiction in certain matters, but this jurisdiction is mutually exclusive. If a proceeding is pending before the Registrar, he acts as the Tribunal; if it is pending before the High Court, the High Court acts as the Tribunal. This interpretation aims to avoid conflicting decisions and multiplicity of proceedings. The court emphasized that the High Court, being the appellate authority over the Registrar, has primacy in all matters under the Act.

2. Validity of the show-cause notice issued by the Registrar for cancellation of the Certificate of Registration/Renewal:

The Registrar issued a show-cause notice to the appellant under Section 56(4) for cancellation of the Certificate of Registration/Renewal. The appellant contended that this notice could only be issued by the High Court, given the pendency of related proceedings in the High Court. The court agreed, noting that the definition of "Tribunal" implies that only the authority before which the "proceeding concerned" is pending can issue such a notice. Since the appellant had already filed a rectification petition and a suit for passing-off in the Delhi High Court, the Registrar lacked jurisdiction to issue the notice. Consequently, the show-cause notice was quashed.

3. Maintainability of the writ petition in the High Court despite alternative statutory remedies:

The court addressed whether the High Court was justified in dismissing the writ petition filed against the Registrar's show-cause notice on the grounds of alternative statutory remedies. The court cited several precedents, including Rashid Ahmad vs. Municipal Board, Kairana, and A.V. Venkateswaran, Collector of Customs, Bombay vs. Ramchand Sobhraj Wadhwani & Anr., to establish that the existence of an alternative remedy does not bar the High Court from entertaining a writ petition if the statutory authority acted without jurisdiction. The court concluded that the High Court erred in dismissing the writ petition at the initial stage without examining the jurisdictional contention. Given that the Registrar lacked jurisdiction to issue the notice due to the pending proceedings in the High Court, the writ petition was maintainable.

Conclusion:

In conclusion, the court held that the Registrar acted without jurisdiction in issuing the show-cause notice under Section 56(4) due to the pendency of related proceedings in the High Court. The High Court's dismissal of the writ petition was unjustified, and the show-cause notice was quashed. The appellant was entitled to costs.