Intellectual Property Appellate Board
Vimal Mills (India) vs Harish Textile Mills And Anr. on 8 September, 2004
Equivalent citations: 2005(31)PTC715(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. The Appellant has preferred this appeal against the order of the Assistant Registrar of Trade Marks, dated 8.12.1994, dismissing an interlocutory application filed by the appellant raising by way of preliminary objection, the maintainability of the rectification proceedings initiated by the Registrar. The facts of the case are as follows:
2. The appellants are the registered proprietors of Trade Mark "44" registered under No. 418718, in class 23. The first respondent herein filed rectification application under Section 56(1) of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act), for removal of the registration of the appellant, before the Registrar of Trade Marks, Ahmedabad. It was numbered as AMD-7. After due notice, the appellant filed interlocutory application to dismiss the rectification petition on the ground that the Registrar has no jurisdiction to entertain the rectification application in view of the pendency of the suit on the file of the Delhi High Court. Section 107(1) read with Section 108 of the Act envisages that where civil suit is pending in the High Court for injunction or passing of, the rectification proceedings can be filed only in the High Court and not before the Registrar. This being a statutory prohibition or bar for the Registrar to entertain the rectification proceedings in a pending suit before the Court, the present rectification proceedings initiated by the first respondent cannot be proceeded with before the Registrar. After hearing both the counsel, the Registrar of Trade Marks, under the impugned order had dismissed the interlocutory application on the following grounds:
(1) In the written statement, the first respondent did not question the validity of registration.
(2) The denial of the first respondent either with regard to the proprietorship of the appellants or with regard to the validity of the registration cannot be termed as "questioned" the validity of registration as there is no positive ground of challenge stated therein against the validity of registration of the appellant's registered trade mark.
(3) Such denials did not raise any question for determination by the courts and the Tribunals. Consequently, the Registrar held that he has got jurisdiction to entertain the rectification proceedings.
3. Aggrieved by the same, the appellant preferred an appeal in Appeal No. 8/1995 on the file of the High Court of Gujarat at Ahmedabad, which was transferred to this Board pursuant to Section 100 of the Trade Marks Act, 1999.
4. The learned Counsel for the appellant Shri R.R. Shah, was heard and none represented the respondents.
5. The learned Counsel for the appellant drew our attention to the preliminary objection raised by the first respondent in his written statement in the suit, Suit No. 453/1991 on the file of the High Court of Delhi filed by the appellants and on the basis of the said preliminary objections, he contended that the first respondent had virtually challenged the validity of the Trade Mark being entered in the Register and also the first respondent challenges the ownership of the appellants in regard to the disputed trade mark which means that the appellants being not the proprietors of the disputed trade mark, their name cannot be continued as the proprietors in the Register of Trade Marks. Admittedly, the suit being of the earlier point of time, in accordance with the provisions of Section 107 of the Act, the rectification proceeding has to be filed only before the High Court and not before the Registrar. The Registrar had passed the impugned order only on the presumption that the first respondent did not challenge the validity of registration of the disputed trade mark and the first respondent challenges only the ownership of the appellants. Consequently, the order of Registrar will have to be set aside.
6. Before entering into discussion, we refer to Sections 107(1) of the Act.
Where in a suit for infringement of a registered trade mark the validity of the registration of the plaintiffs trade mark is questioned by the defendant or where in any such suit the defendant raises a defence under Clause (d) of Sub-section (1) 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 46, Sub-section (4) of Section 47 or Section 56, such application shall be made to the High Court and not the Registrar.
7. A perusal of the aforesaid provision makes it clear that where an infringement suit was field and the defendant therein questioned the validity of the plaintiffs registered trade mark, then the issue of such validity of registration of that registered trade mark should be determined on an application for rectification of the register of trade marks and such an application should be made to the High Court and not to the Registrar. The Registrar had rejected the interlocutory application, disputing his jurisdiction to entertain the rectification petition, filed by the first respondent on the ground that the first respondent did not challenge the validity of registration of the registered trade mark of the appellant. Hence, it is for us to consider whether the averments made in the written statement would constitute a dispute in respect of validity of registration of the registered trade mark of the appellant or not.
8. In the written statement, the first respondent had raised the preliminary objection as follows:
(1) That the present suit by the plaintiff is not maintainable since he is not the recorded and registered proprietor of the trade mark in question.
(2) That the alleged registration of the trade mark of the plaintiff is not in accordance with provisions of Section 31 and 115 of the Trade and Merchandise Mark Act, 1958. Unless and unless the plaintiff obtains the certificate of registration in his name, he has no locus standi to file the present suit.
9. Further, in the reply on merits, the first respondent has stated as follows: 2....It is emphatically denied that the trade mark consisting of numeral '44' us duly registered under the provisions of Trade & Merchandise Marks Act, 1958 at Registration No. 418712 as of 6th March, 1984. ... It is specifically denied that the alleged trade mark of the plaintiff is valid, subsisting and in force till today.
10. A careful reading of the preliminary objection raised by the first respondent in their written statement indicates that it is nothing but a dispute in respect of the validity of registration of the trade mark of the appellant. The first preliminary objection disputes the proprietorship of the appellant in respect of their registered trade mark. If the appellants are not the proprietors of the disputed trade mark, their name cannot be continued in the Register of Trade Marks as proprietors of the same, which also attracts Sub-section (1) of Section 56, because the continuation of the appellant's name as proprietors will be erroneous entry or a mistaken entry.
11. Equally, the second preliminary objection is very precisely raising the dispute of the validity of the registered trade mark of the appellants. The averment made in reply on merits is to the effect that the first respondent is denying that the trade mark consisting of numeral "44" is duly registered under the provisions of Trade and Merchandise Marks Act, 1958. This averment susceptically raises a dispute with regard to the validity of the registration of the trade mark of the appellant.
12. The Registrar of Trade Marks had proceeded on the basis that the denial of the validity of registration will not amount to disputing of the validity of the registered trade mark.
13. In our opinion, the view taken by the Registrar of Trade Marks is not correct. The appellants in their suit for infringement specifically pleaded that they are the registered owners of the disputed trade mark and the first respondent is infringing the said trade mark by the appellant. This plea is a clear assertion of the title to the said trade mark by the appellant. When that assertion is being disputed by the first respondent by way of denial, then, it is nothing but a dispute concerning the validity of registration of the appellant's trade mark. In such circumstances, the Registrar shall not have jurisdiction to entertain the same in view of the bar imposed under Sub-section (1) of Section 107 of the Act, since it- is admitted that Suit No. 453/1991 is pending on the file of the Delhi High Court and the first respondent has also filed the written statement in the said suit. It is admitted by both the counsel that the issues are to be framed in the suit. When the Civil Suit is pending and is in earlier point of time, as contemplated under Sub-section (1) of Section 107, the rectification proceedings can be filed only in the High Court. Accordingly, we set aside the impugned order of the Registrar of Trade Marks and dismiss the rectification AMD-7, filed by the first respondent on the file of the Registrar.
14. However, we make it clear that it is open to the first respondent to move the rectification application before the proper forum subject to limitation prescribed under the Act, if any.