TMI Blog2016 (1) TMI 759X X X X Extracts X X X X X X X X Extracts X X X X ..... extension of time by the Registrar is a ministerial act for which no hearing is required. It is thus clear that time has been extended by the Registrar, as is evidenced by the letter dated 16.2.2004. Therefore, it is clear that any registration certificate granted prior to the 30 days extended period from 6.1.2004 would be violative of Section 23(1) of the Act. In this view of the matter, the Appellate Board and the Division Bench are clearly right in declaring that the registration certificate, having been issued on 13.1.2004, would be violative of Section 23(1)(a), and the register would have to be rectified by deleting the said trademark therefrom. In paragraph 10 of the plaint, there is a specific averment by the plaintiffs that upon necessary inquiries being made, the plaintiffs have learnt that the defendants have not even applied for registration of the trademark 'BLENDERS PRIDE' in their favour. It may also be noticed that the suit is both a suit for infringement as well as passing off, and it is significant that Austin Nichols has not been made a party defendant to the said suit. Also, the very issue as to validity of the registration of the trademark concerned has ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... RIDE' under two applications in class 33 which are pending registration. The appellant's application for registration of an identical trademark 'BLENDERS PRIDE' was advertised in the Trademarks Journal Mega-I. This journal was published on 7th October, 2003. Respondent No.4 had filed Form TM-44 seeking extension of one month's time for filing its notice of opposition against the appellant's application on 6.1.2004, i.e. within the statutory period of three months. On 19.1.2004, respondent No.4 had filed its notice of opposition before the Trade Marks Registry, New Delhi and the same was numbered as DEL-160325. On 16.2.2004, the Trade Marks Registry issued a notice to the appellant inviting its counter statement to the said notice of opposition, and had stated that if the counter statement was not filed within time, the trademark application would be deemed to be abandoned. However, when the matter stood thus, respondent No.4 came to know on 20.1.2005 that a trademark registration certificate bearing No.618414 had been issued to the appellant on 13.1.2004 itself. Immediately, however, through its attorneys, respondent No.4 informed the Trade Marks Registry ab ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lant, the Registrar, on 26.5.2005, referred to the show cause notice dated 16.2.2005 and the reply of the appellant thereof and stated that the impugned mark was registered by inadvertence/error and that it was proposed to rectify the register under Section 57(4) of the Trade Marks Act, 1999 by removing the mark referred to. By the self same letter the appellant was directed to return the registration certificate wrongly issued forthwith, and further directed not to use the said certificate of registration in respect of the above-mentioned trademark in any manner for any purpose and in any proceedings. 7. A Writ Petition bearing Nos.10080-81 of 2005 was filed by the appellant against the aforesaid order, and an interim order of stay was obtained against the said order on 31.5.2005. Ultimately, on 13.9.2005, the Delhi High Court directed the Registrar to dispose of the proceedings before it on or before 16.11.2005. 8. The Registrar, by his order dated 14.11.2005, recalled the show cause notice issued, stating that he had no jurisdiction to proceed in the matter inasmuch as, under Section 125 of the Act, the proceedings could only legally continue before the Appellate Board and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cts of this case as it is the duty of the Registrar to maintain the purity of the register, as has been held in Hardie Trading Ltd. and another v. Addisons Paint Chemicals Ltd., (2003) 11 SCC 92. It was further held that the power of the Registrar to correct his own mistakes under Section 57(4) of the Act is wholly independent of the right of a party to make or not to make an application for rectification of the register, referred to in Section 125. If Section 125 were to be applied, the effect would be that an error committed by the Registrar may remain on the register if the defendant, after raising a plea of invalidity in a suit for infringement, chooses not to proceed with the filing of a rectification before the Appellate Board. In such event, the purity of the register would not be maintained, a result which could not have been envisaged if Section 125 is to be correctly interpreted. The Division Bench finally held that the grant of registration on 13.1.2004 was itself invalid being contrary to Section 23(1) of the Act. Ultimately, the appeal was allowed in the following terms: Section 23(1) of the Act clearly mandates that only after the statutory period for filling o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s before the Registrar non est. She also argued that the fact that Austin Nichols is not a defendant in the infringement suit would also make no difference inasmuch as its licensee Seagram is a defendant and has taken a plea as to invalidity of the registered trademark. Seagram is merely enforcing Austin Nichols' rights and the authorized signatory of both parties happens to be the same. Thus, it would make no difference that the defendant in the infringement suit is not Austin Nichols. She also argued that the suo motu powers of the Registrar under Section 57(4) of the Act are taken away by Section 125(1) of the Act inasmuch as the non obstante clause covers the whole of Section 57. Where the legislature intends to specify only a sub-section, it has made it clear in express language to that effect. For that purpose, she referred to Section 107(1) of the Trade and Merchandise Marks Act, 1958 which refers to the whole of Section 46, the whole of Section 56, and only Section 47 sub-section (4). She has also argued that in point of fact, though styled as a proceeding under Section 57(4), being at the behest of Austin Nichols, in reality it was not such a proceeding. She referred c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... interpretation (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; Section 21 - Opposition to registration (1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counterstatement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application. (3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... abandoned unless it is completed within the time specified in that behalf in the notice. (4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake. 57. Power to cancel or vary registration and to rectify the register.- (1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Appellate Board or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit. (3) The tribunal may in any proceeding under this section decide any question that may be ne ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rt 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 subsection (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit. Section 125 - Application for rectification of register to be made to Appellate Board in certain cases (1) Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiff's trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff questions the validity of the registration of the defendant's trade mark, the issue as to the validity of the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to enclose herewith a copy of the Notice of opposition filed to the application noted as above. In this connection I am to invite your attention to Section 21(2) of the Act and also to Rule 48 of the Trade and Merchandise Marks Rule, 2002 point out that a counterstatement of the grounds, on which you/ the applicant rely for your/ their application should be filed at this office in triplicate on form TM- 6 within two months from the receipt by you of the copy of the notice of opposition. The counterstatement should also set out what facts if any, alleged in the notice of opposition are admitted by you/ the applicants. I am further directed to inform you that if such a counterstatement is not received in this Registry within the aforesaid time you that applicants will be deemed to have abandoned your/ their application (vide section 21(2) of the Trade and Merchandise Marks Act, 1999). Yours faithfully, 6227 ASSISTANT EXAMINER OF TRADE MARKS 5.11.04 Dated: 16-Feb-2004 No. TOP/ Copy forwarded for information to REMFRY SGAR Sd/- ASSISTANT EXAMINER OF TRADE MARKS Dated: 16-Feb.2004. 16. A perusal of this letter shows that the not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the rules of procedure are the handmaid of justice. The language employed by the draftsman of processual law may be liberal or stringent, but the fact remains that the object of prescribing procedure is to advance the cause of justice. In an adversarial system, no party should ordinarily be denied the opportunity of participating in the process of justice dispensation. Unless compelled by express and specific language of the statute, the provisions of CPC or any other procedural enactment ought not to be construed in a manner which would leave the court helpless to meet extraordinary situations in the ends of justice. The observations made by Krishna Iyer, J. in Sushil Kumar Sen v. State of Bihar [(1975) 1 SCC 774] are pertinent: (SCC p. 777, paras 5-6) The mortality of justice at the hands of law troubles a judge's conscience and points an angry interrogation at the law reformer. The processual law so dominates in certain systems as to overpower substantive rights and substantial justice. The humanist rule that procedure should be the handmaid, not the mistress, of legal justice compels consideration of vesting a residuary power in judges to act ex debito justitiae ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of this Act. (2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge. 21. It is clear therefore that the power to be exercised under Section 57(4) can only be exercised by the Registrar of Trade Marks himself. There is only one such Registrar and his registered office is in Bombay. The Assistant Registrars in the other parts of the country including Delhi all act under the superintendence and directions of the Registrar, Bombay, as is clear from Section 3(2) of the Act. This point is, therefore, without substance. 22. We now come to an important argument raised by both parties: the correct interpretation of Section 125 of the Act. Section 124 of the Act inter alia states that where, in a suit for infringement of a trademark, the defendant pleads that the registration of the plaintiff's trademark i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Manufacturing Private Limited and Seagram Distillers Private Limited. The plaint allegations are that both the aforesaid companies are engaged in the manufacture and distribution of liquor and sell and export alcoholic beverages under the trademark BLENDERS PRIDE which is the registered trademark of the plaintiff. The plaint does not state that the first and second defendant are licensees of the said trademark of the Austin Nichols. In fact, in paragraph 10 of the plaint, there is a specific averment by the plaintiffs that upon necessary inquiries being made, the plaintiffs have learnt that the defendants have not even applied for registration of the trademark 'BLENDERS PRIDE' in their favour. It may also be noticed that the suit is both a suit for infringement as well as passing off, and it is significant that Austin Nichols has not been made a party defendant to the said suit. Also, the very issue as to validity of the registration of the trademark concerned has to be determined in the application for rectification of the register, which would obviously bind only the parties to the suit and nobody else. For these reasons, the application for rectification, not having b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . Person's aggrieved may also apply for cancellation or varying an entry in the register relating to a certification trademark to the Central Government in certain circumstances. Since we are not concerned with a certification trademark, the process for registration of which is entirely different, we may exclude the interpretation of the phrase person aggrieved occurring in Section 69 from consideration for the purposes of this judgment. In our opinion the phrase person aggrieved for the purposes of removal on the ground of non-use under section 46 has a different connotation from the phrase used in section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the Register. In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removed. It was in this sense that the House of Lords defined person aggrieved in the matter of Powell's Trade Mark 1894 (11) RFC 4: ... although they were no doubt inserted to prevent officious interference by those who had no int ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n strongly by the appellant's counsel, has to be understood on its own facts. In paragraphs 6 and 7 of the said judgment this Court set out the facts as follows: On 28.2.1997, the appellant filed an application in Form TM-12 for renewal of the Trade Mark Whirlpool in Class 7 and the Registrar, by his order dated 29.07.1997, allowed the renewal for three successive periods, namely, 22.2,1977,22.2.1984 and finally 22.2.1991. Thereafter, on 8.08.1997 appellant made an application under Order 6 Rule 17 C.P.C. for amendment of the plaint in Suit No. 1705 of 1994, referred to above, so as to include the ground of infringement of the Trade Mark also in the suit but the application is still pending in the Delhi High Court which has already granted time twice to the defendants, namely, Chinar Trust to file a reply. In the meantime, Chinar Trust, through its attorneys, wrote on 10.09.1997 to the registrar to take suo motu action Under Section 56(4) for cancellation of the Certificate of Renewal granted to the appellant on 29.07.1997 and the registrar, acting on that request, issued a notice to the appellant on 26th Sept., 1997 requiring it to show cause why the Certificate o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ctification shall, in certain situations, be made only to the High Court. These situations are mentioned in Sub-section (1) of Section 107, namely, where in a suit for infringement of the registered Trade Mark, the validity of the registration is questioned by the defendant or the defendant, in that suit, raises the defence contemplated by Section 30(1)(d) in which the acts which do not constitute an infringement, have been specified, and the plaintiff in reply to this defence questions the validity of the defendant's Trade Mark. In these situations, the validity of the registration of the Trade Mark can be determined only by the High Court and not by the Registrar. Section 107 thus impels the proceedings to be instituted only in the High Court. The jurisdiction of the Registrar in those cases which are covered by Section 107 is totally excluded. Significantly, Section 107(2) provides that if an application for rectification is made to the registrar Under Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks fit, refer that application, at any stage of the proceeding, to the High Court. Similarly, Under Section 111 of the Act, in a pending suit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sonance with the scheme of the Act or the contextual background set out therein and may lead to conflicting decision on the same question by the Registrar and the High Court besides generating multiplicity of proceedings. [at paras 59 62] 30. No argument was made in Whirlpool's case that Section 57(4) would be independent of Section 125(1) for the reasons stated hereinabove. Further, it is clear that one of the parties to the suit for passing off in the said decision applied for rectification, unlike the present factual scenario. For these two reasons also the said judgment would have no application to the facts of the present case. Also, it is not clear from the facts stated in the said judgment as to how Section 107(1) would be attracted. A suit for passing off alone had been filed an amendment application to add the relief of infringement of trademark was pending. This is perhaps why this Court referred to the said amendment application and said that if it were to be granted it would relate back to the date of the suit itself. The defendant in the said suit obviously could not have filed a written statement taking up a plea of invalidity of the registered trademark ..... X X X X Extracts X X X X X X X X Extracts X X X X
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