TaxTMI 
TaxTMI 
1998 (10) TMI 510
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....t 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 Registrar by his order dated 12.8.1992. An appeal against this order which was filed in the Delhi High Court on 7.11.1992 has since been admitted on 1.2.1993 and registered as C.M.(Main) No. 414 of 1992. In the meantime, "Whirlpool" was 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 u....
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....gla 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 retain his jurisdiction under Section 56 of the Act, notwithstanding the pendency of the passing off suit filed by the appellant in the High Court as the said suit could not be treated to constitutie, in any manner, "proceedings" under the Act. Moreover, the application for amendment, by which the relief relating to infringement of Trade Mark was sought to be added in the plaint was still pending and unless that application was allowed and the additional paragraphs, including the above relief, were added i....
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....iled 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 would rely or some old decisions of the evolutionary era of the constitutional law as they still hold the field. Rashid Ahmad vs. Municipal Board, kairana, AIR 1960 SC 163, laid down that existence of an adequate legal remedy was a factor to be taken into consideration in the matter of granting Writs. This was followed by another Rashid case, namely, K.S.Rashid & Son Vs. The Income Tax Investigation Commissioner AIR 1954 SC 207 which reiterated the above proposition and held that where alternative re....
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....ve 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 Constitution, in spite of the alternative statutory remedies, is not affected, specially in a case where the authority against whom the Writ is filed is shown to have had no jurisdiction or had purported to usurp jurisdiction without any legal foundation. That being so, the High Court was not justified in dismissing the Writ Petition at the initial stage without examining the contention that the show cause notice issued to the appellant was wholly without jurisdiction and that the Registrar, in....
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....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 variously expressed in the definition clauses which created them and it may be that even where the definition is exhaustive inasmuch as the word defined is said to mean a certain thing, it is possible for the word to have a somewhat different meaning in different sections of the Act depending upon the subject or context. That is why all definitions in statues generally begin with the qualifying words, similar to the words used in the present case, namely 'unless there is anything repugnan....
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....e 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 Trade Marks under the Act. The functions of the Registrar, as are authorised by him, can also be performed by such other persons as the Central Government may appoint. Thus, there is an element of plurality in the sense that the functions of the Registrar can be performed by more than one person. Section 5 provides for the establishment of a Registry known as Trade Marks Registry, with a Head Office and Branch Offices at such places as the Govt. may think fit. Under Section 6 r....
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....se 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 a counter-statement. Thereafter the Registrar is required, after giving an opportunity of hearing to the applicant and his opponent, to decide whether registration is to be permitted absolutely or subject to such conditions or limitations as he may deem fit to specify. Then comes the stage of registration of the Trade Mark under Section 23 which provides that if the application is not opposed and the period of filing "opposition" has expired or the "opposition" has been dec....
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....rguments 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, shall not be instituted in any court inferior to a district Court. (See : Section 105). Section 106 specifies the reliefs which may be granted in suits for infringement or for passing off. Under Section 107 of the Act, any application for rectification of Register has to be made, in the circumstances specified therein, only to the High Court an not to the Registrar. The provisions of this section are quoted below :- "107.Application for rectification of register to....
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....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 sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise trade in, in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; and (b) a person has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of those goods under a registration exten....
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....t 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 defensive trade mark on the ground that there is no longer any likelihood that the use of the trade mark in relation to those goods would be taken as giving the indication mentioned in sub-section (1). (5) The Registrar may at any time cancel the registration as a defensive trade mark of a trade mark of which there is no longer any registration in the name of the same proprietor otherwise than as a defensive trade mark. (6) Except as otherwise expressly p....
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....n 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 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 High Court for rectification of the register. (2) If the party concerned proves to the court that he has made and such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause ....
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.... 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 Register or there being any error or defect in an entry in the Register. Such proceedings may also be entertained either by the Registrar or the High Court on an application made in the prescribed manner by a "person aggrieved". The High Court or the registrar may, in these proceedings, pass an order either for making an entry, or expunging or varying the entry. In these proceedings which may be pending either before the High court or the Reg....
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....ection 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 the case for three months 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 the High Court would bind the pa....
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....ceeding 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 word "concerned" in this phrase is also of significance inasmuch as the word Tribunal has been used in different sections in relation to different proceedings. At some places in the Act, all the three words, namely, Registrar, High Court and Tribunal have been used which indicate that if the proceeding under that particular provision is pending before the Registrar then on account of that proceeding, the Registrar becomes the ....
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....e 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 His Lordship then was )], in which it was inter alia, observed as under :- .... "The definition clause under section 2(1)(x) provides as follows; "Tribunal means the Registrar or as the case may be, the High Court before whom the proceeding concerned is pending. Therefore, in order to be a tribunal the Registrar must be one before whom a proceeding is pending Counsel for the appellant contended that in section 56(1) of....
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....ecision 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 case may be. It is a mistake to think that the word "Tribunal" Stands in contra-distinction to the word "High Court" or the "Registrar". The word "Tribunal" has been used as meaning the "High Court" or the "Registrar" before whom proceedings are pending. It is in this sense that the word "tribunal" has been used in sub-section (4). It is intended to convey that the "Tribunal", that is to say, the High Court or the Regist....