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TMI Blog1998 (10) TMI 510X X X X Extracts X X X X X X X X Extracts X X X X ..... istrar of the Trade Marks under the Trade Marks Act, 1940, which has since been replaced by the Trade and Merchandise Marks Act, 1958 and which for the sake of brevity, shall hereinafter be referred to as the "Act". The Trade Mark was duly registered and a Certificate of Registration was issued on 31st of July, 1957 which was renewed twice, in 1962 for a period of seven years and again for seven years with effect from 22.2.70. Since further renewal was not obtained after 1977, it was removed from the Register but the appellants continued to publicise their Trade Mark "WHIRLPOOL" as also the company name through publications Which had wide circulation in this country and thus managed to maintain their reputation among the business circle including prospective customers and buyers. On 6th of Aug. 1986, Mrs. Sumitra Charat Ram and Mr. N.R.Dongre, as Trustees of Chinar Trust applied for registration of the Trade Mark "Whirlpool" in class under Application No. 458134, which was duly advertised by the Registrar in Trade Marks Journal No. 945 on Page 845 pursuant to which the appellant filed their Opposition on 6th January, 1989, but their objections were dismissed by the Assistant Regi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. Mr. Iqbal Chagla, senior counsel appearing for the appellant, has contended that a notice under Section 56(4) can be issued only by the TRIBUNAL which has been defined in Section 2 (1)(x), which means the Registrar or the High Court before which the proceeding concerned is pending. Mr. Chagla has contended that it is either the Registrar or the High Court, which can issue a notice under Section 56(4), but out of the two, only that authority can issue the notice before which the proceeding concerned is pending. It is further contended that since a passing-off suit was already pending in the Delhi High Court, where the appellant has also moved an application for amendment of the plaint so as to include the relief of infringement of its Trade Mark. notice under Section 56(4) could have been issued only by the Delhi High Court and not by the Registrar. Mr. R.N.Trivedi, ASG appearing for the Registrar, has on the contrary, contended that the Registrar continued to r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , whole syntax, as the argument of the respondent s counsel is based, almost wholly, on the importance of "comma" and the pronouns, "which" or "whom" occurring in that definition keeping at the same time in our mind the principle Grammatical false non vitiat chartam (false grammar does not vitiate a deed) and the question whether this would also apply to statutory interpretation. But before we do it, we will first dispose of the preliminary objection relating to maintainability of the Writ Petition as filed in the High Court, allegedly, being premature and having been brought without first exhausting the alternative remedies under the Act. Learned counsel for the appellant has contended that since suo motu action under Section 56(4) could be taken only by the High Court and not by the Registrar, contingencies, namely, where the Writ Petition has been filed for the enforcement of any of the Fundamental rights or where there has been a violation of the principle of natural justice or where the order or proceedings are wholly without jurisdiction or the vires of an Act is challenged. There is a plethora of case law on this point but to cut down this circle of fornices whirlpool we w ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cretion, it is not possible or even if it were, it would not be desirable to lay down inflexible rules which should be applied with rigidity in every case which comes up before the Court". Another Constitution Bench decision in Calcutta Discount co.Ltd. vs Income Tax Officer Companies Distt. I AIR 1961 SC 372 laid down : "Though the writ of prohibition or certiorari will not issue against an executive authority, the High Courts have power to issue in a fit case an order prohibiting an executive authority from acting without jurisdiction. Where such action of an executive authority acting without jurisdiction subjects or is likely to subject a person to lengthy proceedings and unnecessary harassment. the High Court will issue appropriate orders or directions to prevent such consequences. Writ of certiorari and prohibition can issue against Income Tax Officer acting without jurisdiction under 8.34 I.T.Act". Much water has since flown beneath the bridge, but there has been no corrosive effect on these decisions which though old, continue to hold the field with the result that law as to the jurisdiction of the High Court in entertaining a Writ Petition under Article 226 of the Co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s that on an application made to the High Court or the Registrar by the person aggrieved, the Tribunal may cancel or vary the registration of the Trade Mark. Under Sub-section 4 of Section 56, this power can be exercised by the "Tribunal" suo motu. TRIBUNAL has been defined under Section 2(1) (x) as under : "Tribunal" means the Registrar, or as the case may be the High Court before which the proceeding concerned is pending." This definition treats "High Court" and "Registrar" both as "TRIBUNAL" for purposes of this Act. High Court has been defined in Section 2(h) as the "High Court" having jurisdiction under Section 3" which, in its turn, provides that it shall be that High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the sub-clauses (a) to (e) is situate. We have to consider the meaning of these definitions in the context of other relative provisions of the Act so as to find an answer to the question relating to the extent of jurisdiction of the Registrar and the High Court functioning as "Tribunal". Now the principle is that all statutory definitions have to be read subject to the qualification vario ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Marks Act, 1889 (Act No. 4 of 1889). This was followed by the Trade Marks Act, 1940 (Act No. 5 of 1940). Both these acts were repealed by the Trade Merchandise Marks Act, 1958. This Act follows the pattern of Trade Marks Act, 1938 of the United kingdom. Prior to the enactment of Trade Marks Act, 1940, the disputes or problems, specially those relating to infringement of trade-marks or passing-off were decided in the light of Section 54 of the Specific Relief Act, 1877, while the registration problem was tackled by obtaining a declaration as to ownership of a trade-mark under the Indian Registration Act, 1908. The present Act which, as pointed out above, as repealed the Indian Merchandise Marks Act, 1889 and Trade Marks Act, 1940, also provides in Section 129 that any document declaring or purporting to declare the ownership or title of a person to a trade-mark other than a registered trade mark, shall not be registered under the Indian Registration Act, 1908. We may now have a quick look at other relevant provisions of the Act. Section 4 provides that Central Govt. shall appoint a person as Controller-General of Patents, Designs Trade Marks who shall be the Registrar of T ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... purpose of defining the rights of the proprietor under the registration. Chapter III of the Act deals with the procedure for and duration of Registration. Section 18 deals with the making of an application for Registration of a Trade Mark either in Part A or Part B of the Register. The application has to be made to the Registrar though filed in the office of the Trade Mark Registry within whose territorial limits the principal place of business of the applicant, or in the case of joint applicants, whose name is first mentioned, is situate. The Registrar may either accept or refuse the application or accept it with conditions. Section 19 empowers the Registrar to withdraw his acceptance if it was given in the circumstances enumerated in clauses (a) and (b) the Section. Where an application has been accepted either absolutely or subject to certain conditions and limitations, it has to be advertised (Sec : Section 20), though the Registrar may advertise it even before its acceptance in certain situations contemplated by that Section. Under Section 21, Notice of Opposition may be given to the Registrar by any person opposing registration and the applicant may, in reply thereto, file ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Chapter IV of the Act deals with the effect of the registration. This Chapter deals with the rights conferred by registration, infringement of Trade Marks and also defines the acts which do not constitute infringement. Chapter V deals with assingment and transmission, while Chapter VI deals with the use of Trade Marks and registered Users. Chapter VII deals with Rectification and Correction of the Register, which begins with Section 56, around which the bulk of arguments made by both the sides, any three, as Registrar has also addressed us has revolved. This Section also speaks of the "Tribunal", "Registrar" and the "High Court". Chapter VIII deals with Certificate of Trade Marks, Chapter IX contains "Special Provisions For Textile Goods", while chapter X deals with offences, penalties and procedure therefor. Chapter XI contains the miscellaneous provisions which, inter alia, provides that suits for infringement etc. of the Trade Marks or relating to any right in a registered Trade Mark or for passing off arising out of the use by the defendant of a Trade Mark, which is identical with or deceptively similar to the plaintiff s Trade Mark, whether registered or unregistered, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... te one month before the date of the application; or (b)that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no boan fide use thereof in relation to those goods by any proprietor thereof for the time being : proprietor thereof for time Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2) Where in relation to any goods in respect of which a trade mark is registered - (a) the circumstances referred to in clause (b) of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark notwithstanding that it is already registered in his name in respect of those goods otherwise than as a defensive trade mark, or may apply for the registration there of in respect of any goods otherwise than as a defensive trade mark notwithstanding that it is already registered in his name in respect of those goods as a defensive trade mark in lieu in each case of the existing registration. (3) A trade mark registered as a defensive trade mark and that trade mark as otherwise registered in the name of the same proprietor shall, notwithstanding that the respective registrations are in respect of different goods, be deemed to be and shall be registered as associated trade mark. (4) On application made in the prescribed manner to a High Court or to the Registrar, by any person aggrieved, the registration of a trade mark as a defensive trade mark may be cancelled on the ground that the requirements of sub-section (1) are no longer satisfied in respect of any goods in relation to which the trade mark is registered in the name of the same proprietor otherwise than as a defensive trade mark, or may be cancelled as respects any goods in relation to which it is registered as a defe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at in disposing of the appeal, the High Court shall have power to make any order which the Registrar could make under the Act. Section 111 provides for the circumstances in which proceedings in a suit are to be stayed. It is quoted below :- "111.Stay of proceedings where the validity of registration of the trade mark is questioned, etc.- (1) Where in any suit for the infringement of a trade mark - (a) the defendant pleads that the registration of the plaintiff s trade mark is invalid; or (b) the defendant raises a defence under clause (d) of sub-section (1) of section 30 and the plaintiff pleads the invalidity of the registration of the defendant s trade mark; the court trying the suit (hereinafter referred to as the court), shall, - (i) if any proceeding for rectification of the register in relation to the plaintiff s or defendant trade mark are pending before the Registrar or the High Court, 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he two will have jurisdiction to entertain such proceeding to the exclusion of the other or the jurisdiction being concurrent, can the proceeding go on simultaneously before the High Court and the Registrar, resulting, may be, in conflicting decisions at the end, is a question which seems to be answered by the words "before which the proceeding concerned is pending" occuring in the definition of "Tribunal" in Section 2(1)(x) of the Act. Let us test whether the answer is correct. Section 56 contemplates proceedings of varying nature. The proceedings contemplated by Sub-section (1) relate to the cancellation of Trade Mark or varying the registration of Trade Mark, on the ground that the condition on which the registration was granted, was either violated or there was failure in observing the condition of registration. These proceedings may be entertained either by the High Court or the Registrar on the application, and, at the instance, of the "person aggrieved". The proceedings contemplated by Sub-section (2) of Section 56 relate to the absence or omission of an entry in the Register or an entry having been made without sufficient cause or an entry wrongly remaining on the Registe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 plaintiff s 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, amy frame an issue and adjourn th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any proceeding, the High Court will have jurisdiction only when "proceeding concerned is pending before it. This he tried to show by pointing out thet the wourds "as the case may be" are placed between tow commas, one at the beginning immediately after the word "Registrar" and the other at the end, with the result that the words "Tribunal means the Registrar" stand out distinctly, while the words "High Court before which the proceeding concerned is pending" stand out separately as an independent phrase. It is contended that the words "before which the proceeding concerned is pending" will not be applicable to the Registrar and, therefore, the Registrar can exercise the jurisdiction under Section 56 irrespective of pendency of any "proceeding". The argument is fallacious. Learned counsel for the Chinar Trust is trying to give a measure of importance to the punctuation mark "comma", more than it deserves. If "comma" were that important, there, incidentally, is another "comma" obviously separates the phrase "before which the proceeding concerned is pending" from the word "High Court" with the result that this phrase becomes applicable both to "High Court" and the "Registrar". The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... jective. Its use is not limited to inanimate objects or animals but it can also be used for "people" as explained in A Practical English Grammar (A.J. Thomson and A.V.Martinet - Fourth edition). The two Nouns, namely, the Registrar and the High Court, used in the definition of Tribunal are followed by the relative pronoun which and therefore, the phrase before which the proceeding concerned is pending would relate to both the Nouns, namely, the Registrar and the High Court. This rule of Grammar which was sounght to be pressed into aid by the learned counsel for the respondent is therefore, of no use to him. Moreover, in a situation of this nature, mere rule of Grammar would not lead to correct interpretation of the definition which has to be analysed, as we have already done, in the background of those provisions in which the word Tribunal has been used together with the propose for which it has been used deeping in mind the overall scheme of the Act. Learned counsel for the respondent than cited before us a decision of the Calcutta High Cort in Standard Pharmaceuticals vs. Dy. Registrar of Trade Marks [Appeal No. 213 of 1970 decided on 18.2.1975 by Sabyasachi Mukherjee, J. (as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s competent to take action as a tribunal contemplated under section 56(4) of the Act." As against the above decision, there is a decision of a Division Bench of the same High Court in Registrar of Trade Marks and Anr. Vs Kumar Ranjan Sen Ors. AIR 1966 Calcutta 311, in which it was laid down as under :- "It will be noticed that the word "Tribunal" as defined in clause (x) As against the above decision, there is a decision of a Division Bench of the same High Court in Registrar of Trade Marks and Anr. Vs. Kumar Ranjan Sen Ors., AIR 1966 Calcutta 311, in which it was laid down as under :- "It will be noticed that the word "Tribunal" as defined in clause (x) of Sub-section (1) of S. 2 does not simply mean the Registrar or the High Court but the Registrar or the High Court, only when proceedings are pending before them. It is a convenient way of describing either the Registrar of the High Court before whom proceedings were pending. Coming now to S. 56, we find that sub-section (1) refers to an application made in the Prescribed manner to a High Court or to a Registrar, but it is the Tribunal which can make an order under it of cancellation or varying the registration as the ca ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... elating 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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