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of <h1>Registrar lacked jurisdiction to issue suo motu cancellation notice under s.56(4) while matter pending under s.107</h1> SC allowed the appeal and quashed the show-cause notice issued under s.56(4) of the Act, holding the Registrar lacked jurisdiction to initiate ... Cancellation of the Certificate of Registration/Renewal of trademark - Jurisdiction of the Registrar vs. High Court under Section 56(4) of the Trade and Merchandise Marks Act, 1958 - importance to the punctuation mark 'comma' - 'Whirlpool' registered as the Trade Mark of the Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was granted to them. A petition for Rectification and for removal of this entry from the Register has already been filed by the appellant before the Registrar on 4.8.1993 under Sections 45 & 46 of the Act - Held that:- The extent of jurisdiction conferred by Section 56 on the Registrar to rectify the Register, is, however curtail by Section 107 which provides that an application for rectification shall, in certain situations, be made only to the High Court. These situations are mentioned in Sub-section (1) of Section 107, namely, where in a suit for infringement of the registered Trade Mark, the validity of the registration is questioned by the defendant or the defendant, in that suit, raises the defence contemplated by Section 30(1)(d) in which the acts which do not constitute an infringement, have been specified, and the plaintiff in reply to this defence questions the validity of the defendant’s Trade Mark. In these situations, the validity of the registration of the Trade Mark can be determined only by the High Court and not by the Registrar. In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellant’s opposition to the registration of respondent’s Trade Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court, which was admitted on 1.2.1993 and has since been registered as C.M.(Main) 414 of 1992. Thereafter, on 4.8.1993, the appellant filed a rectification petition under Sections 45 and 46 of the Act for removing the entry relating to the Trade Mark for which Registration Certificate was granted to the respondents on 30.11.1992. The appellant has also filed a suit for passing-off (Suit No. 1705 of 1994) in the Delhi High Court against the respondents in which an order of temporary injunction has been granted in favour of the appellant which has been upheld by the Division Bench of the High Court as also by this Court. In that suit, an amendment application has also been filed so as to include the ground of infringement of the appellant’s Trade Mark but that application has not yet been disposed of. It is, however, obvious that if the application is allowed, the amendments will relate back to the date of the application, if not to the date of plaint. In view of the pendency of these proceedings in the High Court and specially in view of Section 107 of the Act, the Registrar could not legally issue any suo motu notice to the appellant under Section 56(4) of the Act for cancellation of the Certificate of Registration/Renewal already granted. The appeal is consequently allowed and the show-cause notice issued by the Deputy Registrar (respondent No.2) on 26th of Sept. 1997 under Section 56(4) of the Act is hereby quashed. 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.
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