Calcutta High Court (Appellete Side)
United Spirits Limited & Anr vs The Intellectual Property Appellate ... on 15 November, 2011
Author: Jayanta Kumar Biswas
Bench: Jayanta Kumar Biswas
1
In The High Court At Calcutta
Constitutional Writ Jurisdiction
Appellate Side
Present : The Hon'ble Mr Justice Jayanta Kumar Biswas
W.P.No.16938(W) of 2011
United Spirits Limited & Anr.
-vs-
The Intellectual Property Appellate Board & Ors.
Mr. Jayanta Mitra, senior advocate, with
Mr. Jishnu Saha,
Mr. Bharat Saha,
Mr. Asok Kumar Basu,
Mr. Ajay Gaggar and
Ms. Balaka Chakraborty, advocate, ....for the petitioners
Mr. Anindya Kumar Mitra,
Mr. Pratap Chatterjee and
Mr. Surojit Nath Mitra, senior advocates, with
Mr. Aniruddha Roy,
Mr. Siddhartha Sharma and
Mr. Nirmalya Dasgupta, advocates, ...for the third respondent
Heard on : November 15, 2011 Judgment on : November 15, 2011 The Court : The petitioners in this art.226 petition dated September 26, 2011 are questioning an order of the Intellectual Property Appellate Board dated September 12, 2011 (at p.215) allowing two interlocutory applications filed by the third respondent (Pernod Ricard India Private Limited) in connection with its two appeals against two orders both dated July 29, 2011.
The two orders both dated July 29, 2011 (at pp.195 - 211) were passed by the Assistant Registrar of Trade Marks, Kolkata allowing two applications both dated November 30, 2010 for restoration of two trade marks in the name of Shaw Wallace & Company Limited under sub-s.(4) of s.25 of the Trade Marks Act, 1999. The last registration of both the trade marks expired on April 7, 2009. In the Trade Marks Journal 2 No. 1435 dated March 1, 2010 (at p.116) both the trade marks were included in the list of trade marks that had been removed from the register on the grounds that they had not been renewed "on time in accordance with the Trade Marks Act, 1999."
It is the case of the petitioners that requisite applications for restoration of the trade marks were submitted first on April 26, 2010 and then - in view of a public notice dated September 24, 2009 - on November 29, 2010. Pernod contested the applications on the grounds that restoration of the removed trade marks would affect its interests, and contending, inter alia, that in view of the provisions of sub-s.(4) of s.25 of the Trade Marks Act, 1999 the applications filed after one year from the expiration of the last registration of the trade marks were not maintainable.
The Assistant Registrar of Trade Marks ignored the contention pointing out that in view of s.26 of the Act the trade marks, though removed from the register, remained thereon for a period of one year. Feeling aggrieved, Pernod lodged an appeal with the Intellectual Property Appellate Board and applied for stay of operation of the orders of the Assistant Registrar. By the impugned order the Board has allowed the prayer for stay. Hearing of the appeals has been fixed for February 2011.
The Board staying the operation of the orders of the Assistant Registrar has recorded as follows:
"35. As regards prima facie case, we find that,
a) The applications under TM12 and TM13 are time-barred.
b) The public notice cannot extend the limitation.
c)Even after the date of removal 1.3.2010 , the respondent had time till 6.4.2010, to file TM12 and 13, but they did not.
d)The evidence available is not sufficient to rebut the presumption under S.114 Evidence Act, and even if it was the hurdle of S.25(4) is there.
As regards irreparable injury and balance of convenience,
a)The appellant's mark was registered on June 2010, w.e.f. 23.5.2006 the respondent had admittedly not used the mark in its commercial activities from 1995 till June 2010.
b)If so on the date of registration of MB the appellant might have successfully moved a rectification application for non-user, which has now been taken away.
So both must be held in favour of the appellant."
3Mr Jayanta Mitra appearing for the petitioners and relying on Anisminic Ltd. v. The Foreign Compensation Commission & Anr., [1969] 1 All E.R. 208 (HL) has submitted that the Board staying the operation of the orders of the Assistant Registrar has acted without jurisdiction. He has said that since the trade marks had been removed in contravention of sub-s.(3) of s.25 in that the required O-3 notices in prescribed manner had not been sent by the Registrar, their restoration was just a matter of course; and that after their restoration in terms of the orders, the Board could not stay the operation of the already implemented orders.
Mr Mitra has submitted that the applications were not time-barred, for they were filed within one year from March 1, 2010 when their removal was published in the journal, and also within the time mentioned in the public notice. He has said that since the trade marks had been removed without sending mandatory O-3 notices, the period of limitation was not to run from the date of expiration of the last registration of the trade marks, but from the date the fact of their removal from the register was published in the journal.
Mr Mitra has further argued that while deciding the stay applications filed by Pernod, the Board ought to have closely examined the effect of the order passed by the Bombay High Court in the proceedings initiated by Pernod alleging infringement of trade mark and copy right. According to him, the balance of convenience and inconvenience was entirely against ordering stay, for the restoration of the trade marks had already taken effect followed by the requisite advertisement.
Mr Anindya Mitra appearing for Pernod has argued as follows. The Board possessed the power to pass interim orders. For the purpose it was only required to comply with the provisions of s.95 of the Trade Marks Act, 1999. It is not the case that the provisions were not complied with. Hence there is no reason to say that the order of the Board is without jurisdiction or vitiated by violation of principles of natural justice. Correctness of the prima facie opinion of the Board that the applications for restoration of 4 the trade marks were time-barred cannot be questioned by the petitioners, because the High Court is not supposed to exercise the appellate power under art.226.
I do not find any reason to say that the Board was incompetent to consider the question of stay of operation of the orders of the Assistant Registrar. Section 95 of the Trade Marks Act, 1999 empowered the Board to pass an interim order.
The question whether it was a fit case for ordering stay of operation of the orders in terms whereof the trade marks had already been restored to register followed by requisite advertisement, at best, could be a relevant question. But I am unable to accept the contention that simply because the trade marks had been restored to register in terms of the orders under appeal, the Board was not competent to stay the operation of the orders. Such an absolute proposition will amount to curtailing the power of the Board to pass an interim order, when no provision of the Act limits its power to pass interim orders.
Section 25 of the Trade Marks Act, 1999 deals with duration, renewal, removal and restoration of registration. Sub-section (3) thereof provides that before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and that, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with, the Registrar may remove the trade mark from the register.
There is no reason to say that the obligation to send notice under sub-s.(3) of s.25 is not a mandatory one. In my opinion, there should not either be any dispute about the proposition that removal of a trade mark without sending notice in terms of sub-s.(3) of s.25 is a wrongful removal; and that restoration of the trade mark to register, if sought within the period of limitation, is to be allowed virtually of course.
5Sub-section (4) of s.25 of the Trade Marks Act, 1999, however, provides as follows:
"(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration."
The provisions of sub-s.(4) of s.25 provide that an application for restoration of a trade mark removed from the register for non-payment of the prescribed fee is to be made within one year from the expiration of the last registration of the trade mark.
It is evident from the impugned order that the Board has considered the question of limitation quite closely, though it was deciding interlocutory applications. It is also evident that the parties before the Board advanced their respective cases in great detail, and that the Board has taken note of all the contentions. The Board has recorded its prima facie opinion that the applications for restoration of the trade marks were out of time, and that by issuing a public notice the period mentioned in sub-s.(4) of s.25 could not be extended.
The question is whether in exercise of its power under art.226 this Court should examine the correctness of the prima facie opinions recorded by the Board while deciding the interlocutory applications. If it is found that the order is vitiated by error of jurisdiction or violation of the principles of natural justice, in my opinion, this Court must interfere with the order. The real questions, therefore, are whether the order is vitiated by any jurisdictional error or by violation of the principles of natural justice.
It has been contended that since the removal was effected in contravention of s.25(3), the Board staying the operation of the orders directing restoration of the trade marks has acted without jurisdiction; and that, in any case, the Board has acted without jurisdiction by staying the operation of the orders in terms whereof the trade marks had already been restored to register.
6I am unable to accept the contentions. I have already said that restoration of the trade marks followed by requisite advertisement in terms of the orders under appeal could not limit the power of the Board to consider the question of staying the operation of the orders and, if necessary, to stay the operation thereof.
Removal of the trade marks in contravention of sub-s.(3) of s.25 could have been virtually a cast iron case for restoration of the trade marks to register, if the requisite applications were filed within the period of limitation mentioned in sub-s.(4) of s.25. When the question was whether the applications were within time, in my opinion, the question whether the trade marks had been removed in violation of the mandatory provisions of sub-s.(3) of s.25 could not be relevant, for even if the trade marks had been illegally removed, they could not be restored to register allowing time-barred applications.
Whether the applications filed were time-barred was to be decided by the Assistant Registrar, who decided it against Pernod, and there can be no dispute that the question specifically raised by Pernod in its appeals is to be decided by the Board. The Board was under an obligation to decide the questions whether the two applications filed for restoration were time-barred; and whether by public notice the period mentioned in sub-s.(4) of s.25 could be extended.
I, therefor, do not find any reason to say that the prima facie opinion recorded by the Board on the question of limitation is vitiated by any jurisdictional error or violation of the principles of natural justice. I am exercising power under art.226, and not the appellate power; and hence I am not supposed to substitute my prima facie opinions on any question for that of the Board. In my opinion, nothing in the cited authority can be applied for deciding the questions involved in this case.
7For these reasons, I dismiss the petition hoping that if the parties request the Board to hear the appeals expeditiously, then the Board will examine the request. No costs. Certified xerox.
(Jayanta Kumar Biswas, J) sb(c);ab(f)