C/SCA/4286/2011 CAV JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
SPECIAL CIVIL APPLICATION NO. 4286 of 2011
With
CIVIL APPLICATION NO. 8409 of 2014
In
SPECIAL CIVIL APPLICATION NO. 4286 of 2011
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR.JUSTICE C.L. SONI
1 Whether Reporters of Local Papers may be allowed
to see the judgment ? No
2 To be referred to the Reporter or not ? Yes
3 Whether their Lordships wish to see the fair copy of
the judgment ? No
4 Whether this case involves a substantial question of
law as to the interpretation of the Constitution of No
India or any order made thereunder ?
KANTABEN MANIBHAI PATEL….Petitioner(s)
Versus
PREMCHANDBHAI VENIDAS PATEL 2….Respondent(s)
Appearance:
LEARNED SENIOR ADVOCATE MR KAMAL TRIVEDI with MR YJ TRIVEDI,
ADVOCATE for the Petitioner(s) No. 1
DR RAJESH H ACHARYA, ADVOCATE for the Respondent(s) No. 1
MR PY DIVYESHVAR, ADVOCATE for the Respondent(s) No. 2 – 3
RULE SERVED for the Respondent(s) No. 1
CORAM: HONOURABLE MR.JUSTICE C.L. SONI
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Date : 17/07/2017
CAV JUDGMENT
1. Following are the prayers made in paragraph 7 of the petition
filed under Article 226 of the Constitution:
“7.(A) YOUR LORDSHIPS be pleased to issue appropriate writ,
order or direction, quashing and setting aside the
impugned communication dtd. 23.01.2007 passed by
respondent nos. 2 and 3 and all action/direction acted
upon in pursuant thereto, and further, be pleased to direct
the respondent nos. 2 and 3 to restore the name of
petitioner in the register of Trade Marks as sole owner
and proprietor of trademark “OCLEG” in the interest of
justice;
(B) YOUR LORDSHIPS be pleased to stay the
implementation, operation and execution of the impugned
communication dtd. 23.01.2007 passed by respondent
nos. 2 and 3 and thereby carrying out the change in the
trademark register and showing the name of respondent
no.1 as proprietor and owner of trademark “OCLEG” and
thereby restrain the respondents from acting and
implementing their rights as registered proprietor of the
trademark “OCLEG”, pending the admission, hearing and
final disposal of this application;
(C) YOUR LORDSHIPS be pleased to grant such other and
further reliefs as may be deemed fit and proper by this
Hon’ble Court in the interest of justice;”
2. The relevant facts which need to be noticed first are as under:
Three applications dated 26.02.2001 for registration
of trademark “OCLEG” in Class 07, 09 and 011 were filed in
the name of the petitioner in the office of Assistant
Registrar of Trade Marks – the respondent No.2 by thePage 2 of 30
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C/SCA/4286/2011 CAV JUDGMENTauthorized agent and trademark attorney of the petitioner.
Such applications were registered on 01.03.2001 and given
numbers as 993722, 993723 and 993724 respectively in the
office of respondent No.2.
On 7th September, 2005, three different applications
were submitted in Form TM-16 under Trade Marks Act, 1999
(“the Act”) in the name of the petitioner by Law Office of HK
Acharya and Company, Advocates, Patent and Trademark
Agents to amend the name of the applicant to read the
name of respondent No.1 as applicant in above referred
applications. It appears that such applications were not
attended and the Registrar of Trademarks issued two
certificates in Class 07, 09 dated 03.07.2006 and the third
certificate dated 26.06.2006 in Class 011 bearing
Registrations No.993722, 993723 and 993724 respectively
under Section 23(2) of the Act and Rule 62(1) of the
Trademark Rules, 2002 (“the Rules”) to the petitioner.
However, since respondent No.1 made grievance that
certificate of the registration of trademark was issued to the
petitioner without considering the application made in form
TM-16, the respondent No.2 addressed a letter dated
23.01.2007 to the joint Registrar of Trade Marks, stating
that it was a case for rectification drive on the facts that the
attorney for the applicant M/s. HK Acharya Company filed
TM-16 on 17.09.2005 with partnership deed, retirement
deed and extract from the Registrar of the firm to change
the constitution of the firm, however, request on Form
No.TM-16 was not considered before issuing certificate of
registration which was a mistake on the part of Trade Marks
Registry. In such letter, request was made to issue fresh
certificate in the name of respondent No.1 after allowing
TM-16. Pursuant to such letter from respondent No.2, the
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change was made in the Register of trademarks to show
respondent No.1 as proprietor of the trademark “OCLEG” in
Class 07, 09, 011. The copies of computer prints of the
registered trademarks details are placed at Page No.72, 74
and 76 of the petition wherein respondent No.1 is shown to
be the proprietor of trademark “OCLEG”.
It appears that before certificates of registration of
trademark “OCLEG” were issued in the name of the
petitioner, the respondent No.1 filed Civil Suit No.10 of 2005
for infringement and passing of action against the petitioner
on the ground that respondent No.1 was the owner of said
trademark as per the retirement deed dated 01.04.2005. In
the said suit, the stand taken by the petitioner was that the
retirement deed was concocted document and based on
such concocted document, the respondent No.1 could not
be said to be the owner of the trademark. The distributor of
the respondent No.1 also filed Special Civil Suit No.8 of
2007 in the Court at Surat to restrain the petitioner from
using trademark “OCLEG”. The petitioner filed reply and
resisted the suit. The petitioner then filed Civil Suit No.2044
of 2007 against respondent No.1 for infringement of the
trademark as well as for passing of action and for
infringement of the copyright. In such suit, the petitioner
preferred an application for interim injunction. But before
such application was decided, the petitioner filed petition
being Civil Application (Stamp Number) 7327 of 2008 on
13.05.2008. It appears that such petition remained pending
with the same status (at the stage of removal of office
objection). Thereafter, the injunction application preferred
by the petitioner in her Civil Suit No. 2044 of 2007 came to
be rejected by learned Judge City Civil Court, Ahmedabad
vide order dated 21.04.2010. The petitioner then preferred
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one more petition (to be referred as second petition) being
Special Civil Application No.10325 of 2010 for the same
relief prayed for in the first petition. The petitioner also filed
Appeal from Order No.269 of 2010 on 06.08.2010 with Civil
Application No.9590 of 2010 for interim injunction. After
filing Appeal from Order, the petitioner sought withdrawal of
the second petition with liberty to file fresh comprehensive
petition, which the Court granted vide order dated
13.09.2010 and disposed of the petition as withdrawn with
a liberty to the petitioner to file fresh comprehensive
petition in accordance with law. The Appeal from Order
preferred by the petitioner was admitted vide order dated
07.03.2011 and the Civil Application was disposed of as the
Appeal from Order was fixed for hearing on 03.05.2011. It is
stated at the bar that the Appeal from Order is still pending.
The present petition came to be filed in the month of
March, 2011 for the same relief prayed for in earlier two
petitions preferred by the petitioner.
3. Learned advocate Ms.Acharya with learned advocate Mr.Rushvi
Shah and Mr.Zahid Shaikh appearing for respondent No.1 raised
preliminary objection against maintainability of the petition on
principles of estoppal and res judicata, suppression of pendency of
the first petition while filing second petition and availability of
alternative remedy under the provisions of the Act to ventilate the
grievances concerning the subject matter of the present petition. As
regards the availability of the alternative remedy, Ms. Acharya took
the Court to some relevant provisions of the Act.
4. Learned Senior advocate Mr.Kamal Trivedi appearing with
learned advocates Mr.YJ Trivedi, Mr.Harshit Tolia, Ms.Amika Trivedi for
the petitioner submitted that the first petition was never moved for
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hearing. It was in the form of embryo and never took birth. Mr.Trivedi
submitted that the second petition was withdrawn with a permission
to file the present petition as some more information could be
obtained by the petitioner. Mr.Trivedi submitted that as the first
petition was never moved for hearing, and second petition was
withdrawn with liberty to file fresh petition, neither the principle of
estoppel nor of public policy nor even of res judicata would apply and
there is no question suppression when filing of the present petition
with all relevant facts and information is with permission of the Court.
5. As regards objection of availability of alternative remedy,
learned Senior advocate Mr.Trivedi submitted that the action taken
for making change in the register of trademark at the instance of
respondent No.1 was not only unknown to the procedure
contemplated under the provision of the Act but was also in breach of
principles of natural justice and, therefore, the petitioner is justified in
invoking the extraordinary powers of this Court.
6. Learned Senior advocate Mr.Trivedi submitted that after the
trademark “OCLEG” was registered in the name of the petitioner, the
Assistant Registrar of Trademark at Ahmedabad had no authority or
jurisdiction to write impugned letter for issuing fresh registration
certificate in the name of respondent No.1 under the heading of
rectification drive. Mr.Trivedi submitted that any correction in the
register of trademark or in the certificate of registration of trademark
could be made only at the instance of the proprietor of registered
trademark and as per the procedure prescribed under the provisions
of the Act, Mr.Trivedi submitted that if any person is aggrieved by any
entry in the register of trademark or by issuance of certificate of
registration of trademark, and wants cancellation of the registration
or to rectify the register, he has to approach the concerned authority
in prescribed manner as provided in Section 57 of the Act and only
after following the procedure contemplated in Section 57 of the Act,
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the concerned authority is to take decision after hearing the
proprietor of the registered trademark. Mr.Trivedi submitted that
once the trademark was registered in the name of the petitioner,
there was no question of just correcting the error or mistake in the
name of the proprietor of the trademark. Mr.Trivedi submitted that
nowhere it is provided that the person other than the proprietor could
get his name registered in place of the proprietor of the trademark
under the guise of rectification drive. Mr.Trivedi submitted that
Section 22 and Section 58 of the Act provide for correction in the
name and descriptions of the applicant and of the proprietor only at
the instance of the applicant or the proprietor respectively, however,
in the present case at the instance of respondent No.1, the
respondent No.2 suggested correction and the correction is just made
without giving any opportunity of hearing to the petitioner. Mr.Trivedi
submitted that before making change in the name of the proprietor in
the register of the trademark, there was no application of mind by the
concerned authority as TM-16 was never filed by the petitioner nor
the petitioner gave any power of attorney or any authority to the law
office of M/s. HK Acharaya to make any application in TM-16.
Mr.Trivedi, therefore, submitted that there was no basis to make any
correction in the register of the trademark and, therefore, the action
taken for correcting the register of the trademark to show the name
of respondent No.1 as proprietor of the trademark “OCLEG” was
without jurisdiction. Mr.Trivedi submitted that since the action taken
for correcting the register is in breach of principles of natural justice
and without jurisdiction, it is required to be quashed and set aside by
this Court in exercise of its extraordinary powers under Article 226 of
the Constitution of India. Mr.Trivedi submitted that when there is no
decision or order made under the provisions of the Act by the
Competent authority, for rectification of the register, no alternative
remedy is available to the petitioner under the provision of the Act.
Mr.Trivedi has also taken the Court to the relevant provisions of the
Act to submit that the impugned action cannot stand scrutiny of law.
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7. Learned advocate Ms.Acharya appearing for respondent No.1
submitted that after the petitioner made application for registration of
the trademark, she entered into partnership with respondent No.1 to
do business in the name of M/s. OCLEG CONTROLS. She submitted
that after business was carried on in partnership, the petitioner
retired from partnership in the month of April, 2005 under the
retirement deed and as per the retirement deed, the petitioner shall
have no right, title or interest in the trade name “OCLEG” Controls.
She submitted that TM-16 was, therefore, filed for correction in the
name of the applicant in the pending applications for registration of
the trademark on the basis of the retirement deed so as to issue
certificate of registration in the name of respondent No.1. Ms.Acharya
submitted that since the law office of the attorney HK Acharya was
given authority based on the retirement deed to submit TM-16, it
cannot be said that the law office of M/s. HK Acharya had submitted
TM-16 without any authority. Ms.Acharya submitted that
unfortunately a mistake was committed by the office of the Registry
of Trademark in not giving effect to TM-16 before issuing certificate of
the registration as a result of which, the certificates were issued in
the name of the petitioner and when such mistake was pointed out,
the correction was made to change the name of the proprietor in the
register of trademark to show respondent No.1 as the proprietor of
the trademark. Ms.Acharya submitted that for making such change,
no other legal procedure either under the provisions of the Act or of
giving hearing was required to be followed. Ms.Acharya submitted
that right from the date of change made in the register of the
trademark, though the petitioner had full knowledge, she consciously
did not pursue the legal action under the Act and filed petition before
this Court which was not pursued and the present petition is filed
after long delay. Ms.Acharya submitted that considering the conduct
of the petitioner, the petitioner is not entitled to any relief from this
Court in exercise of writ jurisdiction. Ms.Acharya submitted that since
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the suits filed by the respondent No.1 and the petitioner are pending
wherein the dispute as to the entitlement to use trademark “OCLEG”
is to be decided, the present petition may not be entertained. She
submitted that the petitioner having filed TM-33 and asked for change
in the business name to M/s. KS Patel Co., the petitioner may be left
to pursue her remedy under the provisions of the Act.
8. The Court, having heard learned advocates for both the sides,
finds that since the first petition was never posted for hearing on
account of non-removal of office objection (defect) and since the
second petition was permitted to be withdrawn with a liberty to file
fresh petition, there will not be any bar in considering the present
petition to decide the same in accordance with law. However, the
question is whether non-pursuing the extra-ordinary remedy before
this Court with vigilance would dis-entitle the petitioner to any relief
under Article 226 of the Constitution of India.
9. After two years of the registration of applications of the
petitioner for registration of trademark “OCLEG”, the petitioner and
the respondent No.1 entered into partnership. As stated in the deed
of partnership, the petitioner was carrying on business of
manufacturing electrical / electronic devices and equipments in the
firm name and style of M/s. OCLEG Controls and decided to take the
respondent No.1 as partner in business from and with effect from
01.04.2003. Then on 01.04.2005, the petitioner retired from
partnership under the retirement deed.
10. In Paragraph No.15 of the plaint and the injunction application
of the Civil Suit No.2044 of 2007 filed by the petitioner, the petitioner
has made following averments:
15. Plaintiff further submits that the plaintiff have
found that Defendant no.1 had made false
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representation before the Registrar of Trade Marks
that the mark registered under the above mark OCLEG
is owned by Defendant no.1 and have filed the
amendment application on Form TM-16 before the
Registrar on false and frivolous documents and they
have become the registered proprietor. Plaintiff
submits that upon inquiry made by the plaintiff it was
found that the Defendant no.1 have played fraud with
the Registrar therefore, the present plaintiff invited
the attention of the Hon’ble Court for necessary action
against the Defendant no.1, who had promised the
plaintiff that they will take necessary action, as false
representation is made by the defendant no.1 before
the Trade Marks Registry and no statement or
material is produced, more particularly any
declaration of the present plaintiff. It is also clear that
the present Defendant no.1, who have filed the suit in
the District Court of Ahmedabad, being Civil Suit
No.10/2005, have not narrated this fact in the suit and
the said dispute is already in the Court. This fact is
also not mentioned before the Registrar by the
Defendant no.1 therefore, the entry which is made by
the Registrar in favour of the Defendant no.1 is
contrary to the provisions of the Act is illegal and it
does not create any right in favour of the defendants.
The defendants are liable for making false
representation before the Registrar of Trade Marks
and misdirecting the Registrar to make necessary
entry. Plaintiff submits that the plaintiff have already
requested the Registrar, who has promised to take
necessary action under Section 57(4) of the Act, and if
the Registrar fails to do so in time, the plaintiff
reserves the right to take necessary proceeding
before the appropriate authority.
11. In the written statement and the reply to the above suit, the
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respondent No.1 has stated that under the retirement deed he has
become exclusive proprietor of the trade name M/s. OCLEG Controls
and trademark “OCLEG” and based on the retirement deed, TM-16
was filed, which was granted and the trademark has been then
registered in his name.
12. Before, any decision on the injunction application was made,
the petitioner filed first petition on 13.05.2008 which was not moved
for hearing but remained pending under office objections.
13. Learned Judge City Civil Court, Ahmedabad, then decided
injunction application of the petitioner in the suit vide order dated
21.04.2010. In the order rejecting injunction application, learned
Judge has observed in Paragraphs No.20 and 21 as under:
20. Further, the plaintiff has also contended that he
had moved an application before the Trademarks
Registry for the cancellation of the Registration
Certificate obtained by the defendant. Under the
circumstances, till the Trademark Registry makes a
decision regarding the cancellation, it would not be
desirable for this Court to go into the question that
whether the defendant has obtained the certificate
from the Trademark Registry is required to be
cancelled or not. Any decision, if given by this Court
would unnecessarily put an embarassing position to
the Trademark Registry and the Registry would not be
able to decide the question in just and fair manner.
Under the circumstances, I am of the view that the
plaintiff has failed to establish the prima facie case.
21. Before parting with, I would like to mention that
if the plaintiff succeeds in the litigation before the
Registry regarding the cancellation of the trademark,
then she is at liberty to move an application invoking
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the provisions of order XXXIX Rule 4 before this Court.
On my foregoing discussion, I pass the following
order:-
14. Even after rejection of injunction application, the petitioner did
not move the first petition for hearing but she preferred second
petition being Special Civil Application No.10325 of 2010 on
23.04.2010 for the same relief prayed for in the first petition without
disclosing the fact of filing first petition. As stated above, the second
petition with liberty to file fresh comprehensive petition was
disposed of on 13.09.2010.
There is no injunction granted either in the suit of respondent
No.1 or in the suit preferred by the petitioner.
During journey from the suit filed in the year 2007 and from the
first petition filed in the year 2008, the change made in register of
the trademark showing respondent No.1 as proprietor of the
trademark has been continued. Though it is recorded in the order
dated 21.04.2010 passed below injunction application of the
petitioner in her suit that the petitioner had moved an application
before the trademark registry for cancellation of registration
certificate obtained by respondent No.1, however, learned Senior
advocate Mr.Kamal Trivedi stated before the Court that no such
application was moved but later on TM-33 was filed on behalf of the
petitioner. TM-33 was the form meant to be used to enter change or
correction of name or description of registered proprietor or
registered user.
The petitioner thus, never approached the trademark registry
making grievance against the change made in register of the
trademark. Learned senior advocate Mr.Kamal Trivedi submitted that
when the action of making change in the register of the trademark to
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show that respondent No.1 as proprietor of the trademark “OCLEG”
was palpably wrong, beyond comprehension, not recognized or
supported by the provisions of the Act and in gross violation of the
principles of natural justice, the invocation of extraordinary powers of
this Court by the petitioner is justified.
15. At this stage, some relevant provisions of the Act need to be
referred.
16. Section 18 provides for making of application for registration by
any person claiming to be the proprietor of a trademark used or
proposed to be used by him. Section 22 provides that the Registrar
may, on such terms as he thinks just, at any time, whether before or
after acceptance of an application for registration under Section 18,
permit the correction of any error in or in connection with the
application or permit an amendment of the application. Section 23
mandates that subject to the provisions of Section 19, which provides
for withdrawal of acceptance of the application, when an application
for registration of a trademark has been accepted and either the
application has not been opposed within the time and the time for
notice of the opposition has expired or the application has been
opposed and the opposition has been decided in favour of the
applicant, the Registrar shall, unless the Central Government directs
otherwise, register the said trademark within 18 months of filing of
the application and the trademark when registered shall be registered
as of the date of the making of the said application and that date
shall, subject to the provisions of Section 154, be deemed to be the
date of registration. Section 154 is for provisions relating to the
applications for registration from citizens of convention countries,
which has no relevance or bearing on the controversy or the
challenge made in the present petition. Chapter VII which is more
relevant is for rectification and correction of the register. Sections 57
and 58 in this Chapter read as under:
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“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 necessary or
expedient to decide in connection with the rectification of
the register.
(4) The tribunal, of its own motion, may, after giving
notice in the prescribed manner to the parties concerned
and after giving them an opportunity of being heard, make
any order referred to in sub-section (1) or sub-section (2).
(5) Any order of the Appellate Board rectifying the
register shall direct that notice of the rectification shall be
served upon the Registrar in the prescribed manner who
shall upon receipt of such notice rectify the register
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accordingly.
58. Correction of register.–(1) The Registrar may,
on application made in the prescribed manner by the
registered proprietor,–
(a) correct any error in the name, address or
description of the registered proprietor of a trade
mark, or any other entry relating to the trade mark;
(b) enter any change in the name, address or
description of the person who is registered as
proprietor of a trade mark;
(c) cancel the entry of a trade mark on the register;
(d) strike out any goods or classes of goods or
services from those in respect of which a trade mark
is registered,and may make any consequential amendment or
alteration in the certificate of registration, and for
that purpose, may require the certificate of
registration to be produced to him.
(2) The Registrar may, on application made in the
prescribed manner by a registered user of a trade mark, and
after notice to the registered proprietor, correct any error, or
enter any change, in the name, address or description of the
registered user.”
17. Section 91 provides for appeal to the Appellate Board by any
person aggrieved of an order or decision of the Registrar under the
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Act, or the rules made under the Act. Section 93 provides that no
Court or other authority shall have, or be entitled to, exercise any
jurisdiction, powers or authority in relation to the matters referred to
in sub-section (1) of Section 91 of the Act. Section 125 which provides
for application for rectification of register to be made to Appellate
Board in certain cases, reads as under:
“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 registration of the trade mark
concerned shall be determined only on an application for the
rectification of the register and, notwithstanding anything
contained in section 47 or section 57, such application shall
be made to the Appellate Board and not the Registrar.
(2) Subject to the provisions of sub-section (1), where
an application for rectification of the register is made to the
Registrar under section 47 or section 57, the Registrar may,
if he thinks fit, refer the application at any stage of the
proceedings to the Appellate Board.”
Section 127 provides for powers of Registrar as under:
“127. Powers of Registrar.–In all proceedings under
this Act before the Registrar,–
(a) the Registrar shall have all the powers of a civil
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administering oaths, enforcing the attendance of
witnesses, compelling the discovery and production of
documents and issuing commissions for the
examination of witnesses;
(b) the Registrar may, subject to any rules made in
this behalf under section 157, make such orders as to
costs as he considers reasonable, and any such order
shall be executable as a decree of a civil court:
Provided that the Registrar shall have no power to
award costs to or against any party on an appeal to
him against a refusal of the proprietor of a
certification trade mark to certify goods or provision
of services or to authorise the use of the mark;
(c) the Registrar may, on an application made in the
prescribed manner, review his own decision.”
Rule 41 of the Rules provides for procedure for making application for
correction of any error in or in connection with the application for
registration in Form TM-16. Request for correction in Form TM-16
could also be made in the context of Section 18(4) of the Act as per
the condition of the acceptance of the application by the Registrar.
Such form could also be used for application under Section 58 read
with Rule 97 for correction of the register either at the instance of the
registered proprietor of the trademark or by the registered user of the
trademark under notice to the registered proprietor of trademark.
18. Undisputabely, TM-16 was filed before grant of registration of
the trademark and for correction of the name of the applicant in the
application made under Section 18 of the Act. Therefore, the
applications in TM-16 could be said to have been filed under Section
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22 of the Act read with Rule 41 of the Rules.
19. Section 58 gives powers to the Registrar to correct the register
of trademark only at the instance of the registered proprietor of the
trademark and it also gives powers to the Registrar to make
correction of any error or to enter any change in the name and
descriptions of registered user only on the application made by the
registered user of the trademark and after notice to the registered
proprietor. The facts of the case would not relate to exercise of such
powers. As could be seen from the provisions of Section 57, the
powers conferred thereunder are to cancel or vary registrations and
to rectify the register. Sub-section (1) thereof, provides for cancelling
the registration of a trademark on the ground of any contravention or
failure to observe condition entered on the register in relation thereto
on application made by the person aggrieved to the Appellate Board
or to the Registrar. Sub-section (2) provides remedy to any person
aggrieved by 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. Sub-section (4) gives powers to the Tribunal
which power is available to the Registrar to make any order on its
own motion referred to in sub-section (1) and sub-section (2) after
giving notice in the prescribed manner to the parties concerned and
after giving them opportunity of being heard. Thus, the powers for
rectification and correction of the register under Section 57 are to be
exercised not only after the grant of registration of the trademark but
either on moving appropriate application by the aggrieved person or
by the Tribunal – the Registrar on its own motion and such powers are
to be exercised after giving notice to the concerned parties and after
giving them an opportunity of being heard. Such powers under
Section 57 could be exercised in the manner as prescribed for
exercise of such powers.
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20. For the purpose of correcting a clerical error or an obvious
mistake, the Registrar is conferred with the powers under Section
23(4) of the Act to amend the register or a certificate of registration.
It was not a case where the Registrar was required to amend the
register or the certificate of the registration for the purpose of
correcting any clerical error or any obvious mistake. The applications
in TM-16 were filed to amend the name of the applicant in
applications for registration of trademark on the basis of retirement
deed executed between the parties. In the suit filed by respondent
No.1, he has stated that on the basis of retirement deed, he has
become the sole owner and exclusive proprietor of trading style and
trade name of M/s. OCLEG Controls and trademark “OCLEG” and
pursuant to the retirement deed, he has filed TM-16 for amendment
of the name of the proprietor in the trademark registry on
07.09.2005. Therefore, by TM-16, respondent No.1 wanted
amendment in the application for registration of the trademark to
change name of the applicant by showing his name as the applicant
for getting registration of the trademark by relying on the retirement
deed. If such application was missed to be attended before granting
registration of trademark to the petitioner, it would not be a case of
correcting of clerical error or an obvious mistake in the register or in
the certificate of registration of trademark. It may not even be a case
for rectification of the register under Section 57 of the Act but it may
be a case for review of the decision taken by the Registrar under
Section 127 of the Act. But even if it is taken to be a case for exercise
of powers under Section 57 of the Act, then also no decision
thereunder could have been taken without hearing the petitioner as
the registration of the trademark was already given to the petitioner.
Learned Senior advocate Mr.Trivedi submitted that TM-16 could be
filed only by the person who has made application for registration of
the trademark or by his or her authorized agent or the attorney.
Taking the Court to the copy of the application in TM-16, Mr.Trivedi
submitted that it was not filed by the agent or attorney of the
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petitioner but it was filed by the attorney of respondent No.1 on the
basis of the power of attorney given by respondent No.1. Mr.Trivedi,
therefore, submitted that based on such application, no correction or
amendment in the application filed by the petitioner for registration
was permissible. Mr.Trivedi submitted that if no amendment was
permissible in the application at the instance of respondent No.1, non-
consideration of TM-16 before granting registration to the petitioner
was of no significance and could not provide any reason for correcting
the register of the trademark.
21. The Court finds that though respondent No.1 has stated in his
suit that TM-16 was filed by him but whether it was with the authority
given by the petitioner or whether amendment in the application for
registration of the trademark could have been permitted on the basis
of the retirement deed were the questions to be decided by the
Registrar if TM-16 was taken up for consideration before granting
registration to the petitioner. When such questions were to be
decided if the applications in TM-16 were taken for consideration,
even if the rectification recommended in the register of trade marks
by impugned communication could be said to be in purported
exercise of powers under Section 57 of the Act, it could not have been
without affording opportunity of hearing to the petitioner. As stated
above under Section 127 of the Act, the Registrar can review his own
decision on application made in this regard. The respondent No.1
could have applied for review by pointing out the lapse committed by
the office of the Registry of Trade Mark in not considering or deciding
the application made in TM-16 before granting registration to the
petitioner. In such application for review also, the petitioner would be
required to be heard.
22. In the impugned communication dated 23.01.2007 of
respondent No.2, the request was made for issuing fresh certificate of
registration of trademark in the name of respondent No.1 by allowing
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TM-16 on the basis of partnership deed and retirement deed. Thus,
when it was not a case of correction of simple clerical error or obvious
mistake in the register or registration certificate, if any change in the
name of the proprietor of the registered trademark was to be made
on the basis of TM-16, the petitioner who was already issued
registration by accepting her application for registration, was required
to be heard being the party affected before making change in the
name of proprietor of the registered trademark.
23. As stated above, the suits filed by both the parties are pending.
As per Section 125 of the Act, where in a suit for infringement of a
registered trademark the validity of the registration of the plaintiff’s
trademark 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 trademark, the issue as to the validity of the
registration of the trademark concerned shall be determined only on
an application for rectification of the register and, notwithstanding
anything contained in Section 47 or Section 57, such application shall
be made to the Appellate Board and not to the Registrar. Sub-section
(2) provides that subject to the provisions of sub-section (1) where
the application for rectification of register is made to the Registrar
under Section 47 or Section 57, the Registrar may, if he thinks fit,
refer the application at any stage of the proceedings to the Appellate
Board.
24. In the context of the question as to the applicability of Section
125 of the Act, Hon’ble Supreme Court has held and observed in
Paragraphs No.22 to 26 and 31 as under:
“22. 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
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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.
23. 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 is invalid, then
the court trying the suit shall stay the suit pending final
disposal of rectification proceedings either before the
Registrar or the Appellate Board, as the case may be.
24. The scheme under Section 124 is of great importance in
understanding the scope of Section 125. It is clear that
where proceedings for rectification of the register are
pending before the filing of the suit for infringement in which
the defendant pleads that the registration of the plaintiff’s
trademark is invalid, such proceedings may be made either
before the Registrar or before the Appellate Board, in view of
Section 57(1) and (2) of the Act. But, if rectification
proceedings are to be instituted after the filing of such suit
for infringement in which the defendant takes the plea that
registration of the plaintiff’s trademark is invalid, then
rectification proceedings can only be taken before the
Appellate Board and not before the Registrar.
25. It will be noticed that Section 124(1) refers only to the
plaintiff and defendant of a suit for infringement, and Section
124(1)(ii) specifically refers to the “party concerned” who
will apply to the Appellate Board for rectification of the
register. Similarly, Section 125 also refers only to the
“plaintiff” and the “defendant” in a suit for infringement of a
registered trademark. It is obvious, therefore, that an
application for rectification of the register can either be
made by the defendant who raises a plea in the suit that the
registration of the plaintiff’s trademark is invalid, or by the
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plaintiff who questions the validity of the registration of the
defendant’s trademark in a situation where the defendant
raises a defence under Section 30(2)(e). It is clear therefore
that the application for rectification of the register referred
to in Section 125(1) could only be an application (given the
facts of the present case) by the defendant in the suit for
infringement. The defendant being Seagram and not Austin
Nichols, it is clear that the Section would have no
application. The submission of Smt. Prathiba Singh that
Seagram is only the licensee of Austin Nichols and that the
authorized signatory of both parties are the same holds no
water for the reason that Austin Nichols is not said to violate
the registered trademark of the appellant herein. Seagram
again happens to be two separate Companies –
SeagramManufacturing 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 been made by any of the party defendants in the said
suit for infringement and passing off, Section 125(1) would
have no application.
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26. Secondly, the Division Bench of the High Court is also
correct in reasoning that Section 125(1) would only apply to
applications for rectification of the register, and not to the
exercise of suo motu powers of the Registrar under Section
57(4). The reason is not hard to seek. If the Registrar is
barred from undertaking a suo motu exercise under Section
57(4) to maintain the purity of the register, there could
conceivably be cases where a defendant, after raising the
plea of invalidity in a suit for infringement, chooses not to
proceed with the filing of a rectification petition before the
Appellate Board. This may happen in a variety of
circumstances: for example, take the case where, after
raising the plea of invalidity in a suit for infringement, the
matter is compromised and the defendant therefore does
not file a rectification petition before the Appellate Board.
The Registrar’s power to maintain the purity of the register
of trademarks would still remain intact even in such cases,
as has been held by the judgment in Hardie’s case. This
Court, in the said judgment, while adverting to the meaning
of “person aggrieved”, held as follows:-
“30. The phrase “person aggrieved” is a common
enough statutory precondition for a valid complaint
or appeal. The phrase has been variously
construed depending on the context in which it
occurs. Three sections viz. Sections 46, 56 and 69
of the Act contain the phrase. Section 46 deals with
the removal of a registered trademark from the
register on the ground of non-use. This section
presupposes that the registration which was validly
made is liable to be taken off by subsequent non-
user. Section 56 on the other hand deals with
situations where the initial registration should not
have been or was incorrectly made. The situations
covered by this section include: – (a) the
contravention or failure to observe a condition for
registration; (b) the absence of an entry; (c) an
entry made without sufficient cause; (d) a wrong
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entry; and (e) any error or defect in the entry. Such
type of actions are commenced for the “purity of
the register” which it is in public interest to
maintain. Applications under Sections 46 and 56
may be made to the Registrar who is competent to
grant the relief. “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.
31. 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.
32. 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, In
re, Powell v. Birmingham Vinegar Brewery Co.: (AC
p. 10)
‘… although they were no doubt
inserted to prevent officious
interference by those who had no
interest at all in the Register being
correct, and to exclude a mere common
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informer, it is undoubtedly of public
interest that they should not be unduly
limited, inasmuch as it is a public
mischief that there should remain upon
the Register a Mark which ought not to
be there, and by which many persons
may be affected, who, nevertheless,
would not be willing to enter upon the
risk and expense of litigation. Wherever
it can be shown, as here, that the
Applicant is in the same trade as the
person who has registered the Trade
Mark, and wherever the Trade Mark, if
remaining on the Register, would, or
might, limit the legal rights of the
Applicant, so that by reason of the
existence of the entry on the Register
he could not lawfully do that which, but
for the existence of the mark upon the
Register, he could lawfully do, it
appears to me he has a locus standi to
be heard as a person aggrieved.”‘”
31. 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
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taking up a plea of invalidity of the registered trademark
before an amendment application of the plaintiff adding the
relief of infringement had been allowed. For this reason also
we find that the aforesaid judgment cannot be said to have
laid down any principle of law touching upon Sections 125
and 57 of the Act.”
In the case on hand, even if it is taken that the challenge to the
validity of the registration of the trademark is there in the suit of the
petitioner, no rectification proceedings either before or after the suit
are taken by any of the parties.
25. The question remains as to when the action taken pursuant to
the impugned communication for making change in the name of the
proprietor of trademark in the register of the trademark is not in
accordance with the relevant provisions of the Act and in breach of
principles of natural justice, what relief could be granted in exercise of
powers under Article 226 of the Constitution of India. In ordinary
circumstances such action could have been quashed and respondent
No.1 could have been asked to avail of appropriate remedy either
under the provisions of the Act or before the Court of law but in the
facts of the case, the Court is of the view that the Registrar of
Trademark should take a fresh look of the matter and the change
made in the name of respondent No.1 as proprietor of the trademark
in the register of the trademark is not to be disturbed till the Registrar
decides the matter afresh. The Court deems it proper to make such
order on the conduct of the petitioner of not being vigilant to pursue
her remedy. The petitioner though came to know in the year 2007
when she filed suit for infringement of the trademark against the
respondent that respondent No.1 could get his name entered in the
register of trademark as proprietor of the trademark “OCLEG”, chose
not to approach the Registrar by any application. She filed the first
petition before this Court in the month of May, 2008 however did not
take any interest to move such petition for hearing. Allowing such
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petition to remain in objections, the petitioner chose to prosecute her
application for injunction in her suit and after rejection of such
application, she filed second petition for the same relief prayed in the
first petition and then withdrew the second petition in the month of
April, 2010 to file third petition, i.e., present petition. As stated above
in the Appeal from Order preferred by the petitioner against rejection
of the injunction application by the trail Court, there is no interim
injunction granted. The present petition also has remained pending
for last more than five years. It may be that for pendency of this
present petition for more than five years, the petitioner may not be
responsible but the initial conduct of the petitioner not to show any
interest or vigilance in prosecuting the first petition to file the second
petition after a period of about two years from the date of the filing of
the first petition and after withdrawing the second petition, to file
present petition in the month of September, 2010 which has
remained pending for such a long time, has led to a situation allowing
the change made in favour of respondent No.1 in the register of the
trademark to continue right from 16.05.2007 till today. Therefore, in
such facts and circumstances of the case, till the Registrar takes the
fresh decision in the matter, the change made in the register of the
trademark to show respondent No.1 as proprietor of the trademark
“OCLEG” is not required to be disturbed and it is to be left subject to
the decision to be taken by the Registrar.
26. Though learned advocates have cited different judgments on
the issues concerning registration of the trademarks, availability of
the alternative remedies under the provisions of the Act and the
exercise of powers of this Court under Article 226 of the Constitution
of India though alternative remedies available, however, since the
matter is being remitted to the Registrar, the Court finds it
appropriate not to refer and discuss them.
27. As per Section 127, in all proceedings under the Act before the
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Registrar, the Registrar has all powers of Civil Court for the purposes
of receiving evidence, administering oaths, enforcing the attendance
of witnesses, compelling the discovery and production of documents
and issuing commission for the examination of witnesses etc. and also
the powers of review of his decision. But irrespective of such powers,
the Court finds in the facts of the case that in exercise of powers
under Article 226 of the Constitution, the Registrar of the trademark is
required to be directed to decide the matter afresh on the following
questions:
(I) Whether the applications made in TM-16 dated 07.09.2005
could be said to have been made by or with the authority of the
petitioner?
(II) Whether the change in the register of the trademark after the
registration was granted to the petitioner could have been effected
without hearing the petitioner and without deciding the question as to
whether the applications in TM-16 could have been accepted for
change the name of the applicant in the application for registration of
the trademark?
(III) Even if the applications in TM-16 were to considered for the
purpose of change in the register of the trademark on the basis of the
retirement deed executed between the parties, whether respondent
No.1 could be made entitle to the registration of the trademark
“OCLEG” in his name on the basis of retirement deed.
28. If the Registrar reaches to the conclusion that the change in
favour of respondent No.1 in the register of trade marks was not
permissible, he shall make consequential order.
29. The Registrar of Trade Mark shall render his decision on the
above questions by giving opportunities to the parties and in
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accordance with law within a period of six months from the date of
receipt of this order. It is clarified that change made in the register of
the trademark to show respondent No.1 as proprietor of the
trademark “OCLEG” shall be subject to the decision to be taken by
the Registrar in exercise of powers under the provisions of the Act.
The petition is allowed in part to the above extent. Rule made
absolute accordingly.
Registry of this Court shall send the writ forthwith to the
Registrar of Trade Marks – the respondent No.3.
Direct service is also permitted.
In view of disposal of the main matter, the civil application shall
not survive. Hence, the civil application stands disposed of
accordingly.
(C.L.SONI, J.)
Gupta*
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