Calcutta High Court (Appellete Side)
N vs Sumatra Tobacco Trading Co on 17 May, 2013
Author: Dipankar Datta
Bench: Dipankar Datta
IN THE HIGH COURT AT CALCUTTA
CONSTITUTIONAL WRIT JURISDICTION
APPELLATE SIDE
Present : The Hon'ble Justice Dipankar Datta
W.P. 11743 (W) of 2012
N. V. Sumatra Tobacco Trading Co.
Versus
The Registrar of Trade Marks & Ors.
For the petitioner : Mr. S. Sarkar, Sr. Advocate
Mr. S.N. Mookherjee, Sr. Advocate
Mr. T.N. Daruwalla, Advocate
Mr. R.K. Khanna, Advocate
Mr. D. Dalal, Advocate
For the respondent No. 4 : Mr. A.K. Mitra, Sr. Advocate,
Mr. P. Chatterjee, Sr. Advocate, Mr. Abhrajit Mitra, Advocate Mr. S. Banerjee, Advocate Mr. Victor Dutta, Advocate Hearing concluded on : January 17, 2013 Judgment on : May 17, 2013
1. The fourth respondent had filed an application on July 28, 1986 for registration of the trade mark 'HERO' (word) No.457607 in Class 34 in India in respect of cigarettes, cigars, smokers articles, tobacco, on a "proposed to be used" basis. Subsequently, on October 13, 1993, the fourth respondent applied for registration of label trade mark HERO No. 609360 in Class 34 in respect of manufactured tobacco, again on "proposed to be used" basis. Soon thereafter, on May 13, 1994 to be precise, it filed Form TM-16 in application No. 609360 to change the user from "proposed to be used" to "the mark HERO is in use since 1942 and the present label is in use since September, 1993" and applied for registration of the trademark HERO CIGARETTES, STAR (DEVICE) bearing no. 627910 in Class 34 in respect of manufactured tobacco claiming user since September 1, 1993. In the meanwhile, however, the petitioner had applied for registration of label trade mark HERO No. 589487 in Class 34 in India in respect of cigarettes, kretek cigarettes, raw tobacco, manufactured tobacco, cigars, smokers articles, cigarette paper, matches, all included in Class 34 on "proposed to be used" basis on January 28, 1993.
2. The petitioner opposed the application filed by the fourth respondent by filing an opposition thereto. A counter-statement was filed by the fourth respondent to which the petitioner responded by filing a reply. Evidence in support of the opposition had been filed by the petitioner but the fourth respondent chose not to file evidence in support of its application despite opportunity granted by the Registrar. Ultimately, by an order dated April 29, 2005, the Registrar allowed the opposition of the petitioner and refused registration, as prayed for by the fourth respondent. This order had been carried in appeal before the Intellectual Property Appellate Board (hereafter the IPAB for short) by the fourth respondent.
3. The IPAB by its order dated 31st October, 2011, while setting aside the order impugned, allowed the appeal preferred by the fourth respondent and permitted registration of the mark 'HERO' for its cigarettes. This order forms the subject matter of challenge in the instant writ petition.
4. Mr. Sarkar, learned senior advocate, appearing for the petitioner submitted that the impugned order of the IPAB being indefensible, the Court ought to interfere to set things right.
5. First, he invited the attention of the Court to paragraph 12 of the order of the IPAB. It has been recorded therein as follows: -
"12. Here the issue we have to decide is who has the priority of user and whether there is dishonesty of adoption."
Referring to the same, he contended that the IPAB posed a completely wrong question for an answer. The relevant question in an application for registration is whether the mark is likely to deceive or cause confusion and it was for the fourth respondent to satisfy the Registrar that it would not. According to him, priority of user is of no relevance at the time of consideration of an application for registration of a mark and the date that is relevant is the date of the application. In support of the proposition that in case of an application for registration including proposed application the rights of the parties are to be determined as on the date of the application for registration, reliance was placed on the decision of this Court reported in AIR 1959 Calcutta 654: Hughes (Griffiths) Limited vs. Vick Chemical Co.
6. Secondly, it was contended by Mr. Sarkar that the IPAB committed grave error of law by receiving additional evidence from the fourth respondent without assigning any reason in support thereof and without even enquiring as to why the same were not produced before the Registrar, although the same were available with it.
7. Thirdly, attention of the Court was drawn to that part of the observation of the IPAB, as recorded in paragraph 16 of its order, to the effect that "(A)s far as user is concerned the Registrar failed to see that the appellant had proved sales of the goods concerned at least from 1994 while the respondent had not proved user in India." Mr. Sarkar criticized the order of the IPAB by contending that since no evidence was adduced before the Registrar by the fourth respondent, he could not have been faulted for not looking into evidence regarding sales and that a perverse finding had been rendered warranting interference.
8. Fourthly, with reference to the observation in paragraph 19 of the order to the effect that "(I)n the present case the Registrar had failed to even advert his attention to the special circumstances pleaded", it was urged by Mr. Sarkar that such a conclusion further constitutes non-consideration of the finding arrived at by the Registrar, which was available in the record. The Court's attention was invited to internal page 4 of the Registrar's order wherein a finding was rendered to the effect that "(T)his Tribunal is of the opinion that the word 'HERO' occupying a most insignificant position in the Applicant's earlier registration cannot help them towards the impugned registration as 'a special circumstance'." Such non-consideration, he contended, satisfies the test of perversity and hence the impugned order is liable to be set aside.
9. Fifthly, in relation to non-exercise of discretion by the Registrar, the IPAB had observed that the Registrar must exercise his discretion correctly. Referring to number of authorities, Mr. Sarkar contended that exercise of discretion is not to be interfered with lightly unless, of course, there is an error apparent on the face of the record. There was no patent error committed by the Registrar and the IPAB while exercising appellate power interfered without just cause.
10. Finally, Mr. Sarkar submitted that reference to Section 12(3) of the Trade Marks Act, 1999 (hereafter the Act of 1999) and invocation thereof by the IPAB for permitting registration of the mark 'HERO' as prayed for by the fourth respondent is thoroughly misplaced since neither does Section 12 contain any sub-section nor the provisions of Section 12 are applicable in the present case. He referred to the Trade and Merchandise Act, 1958 (hereafter the Act of 1958) and in particular to Section 12 thereof, which had three sub-sections. According to him, sub-section (3) of Section 12 of the 1958 Act has been incorporated in Section 12 of the Act of 1999 and even the provisions thereof would have no application so far as the claim of the fourth respondent is concerned because Section 12 applies only in the case of user of the same mark by two different proprietors and has no application when the same proprietor is seeking to claim user of a different mark; hence, reference to Section 12(3) and permitting registration thereunder is patently erroneous.
11. Based on the aforesaid submissions, Mr. Sarkar prayed for quashing of the order of the IPAB.
12. Mr. Mitra and Mr. Chatterjee, learned senior advocates, representing the fourth respondent opposed the writ petition.
13. They sought to remind the Court that a writ court has limited jurisdiction under Article 226 of the Constitution to interfere with an order passed by a judicial authority. Decisions of the Supreme Court reported in (2008) 9 SCC 1 [Shamshad Ahmad vs. Tilak Raj Bajaj (Deceased]] and (2001) 4 SCC 478 (Ashok Kumar Vs. Sita Ram) were cited for the proposition that the High Court in exercise of writ jurisdiction would not sit in appeal over the order of the IPAB that has been impugned and that if two views are reasonably possible on the facts, the view taken by the IPAB ought not to be substituted by the Court by its own view.
14. Next, it was contended that a writ court may interfere if an order is passed by an authority acting judicially either without jurisdiction or in excess of jurisdiction and that a distinction has to be drawn in respect of such orders and orders, which contain errors committed within jurisdiction. According to Mr. Mitra, the impugned order of the IPAB has not been shown to be vitiated by any error apparent on the face of the record and, therefore, the writ petition does not merit interference.
15. It was thereafter contended that the IPAB did not commit any illegality in receiving additional evidence. According to Mr. Mitra, the IPAB is not bound by the provisions of the Civil Procedure Code; it is only principles of natural justice that are required to be complied with in terms of Section 92 of the Act of 1999. Principles of natural justice were not breached in as much as first, the IPAB had recorded reason why it considered receiving of additional evidence to be necessary and secondly, the petitioner was extended sufficient opportunity to deal with such additional evidence. It was further submitted that the petitioner has not alleged prejudice suffered by it by reason of additional evidence being received. The rules of procedure by which the IPAB is bound were referred to, for sustaining the procedure that was followed by it. That apart, the IPAB having considered the additional evidence necessary for a just decision on the dispute, it was submitted that no exception ought to be taken.
16. Insofar as the observation of the IPAB reproduced in paragraph 7 supra is concerned, it was the contention that no error was committed by the IPAB in arriving at such finding since the petitioner had never produced any evidence to prove user in India and, thus, it was correctly pointed out that the petitioner had failed to prove user in India which the Registrar failed to see.
17. It was also contended that the petitioner had not produced any evidence to prove a single instance of user of the mark in India and hence cannot claim that their mark in India is distinctive at all.
18. Referring to Section 12(3) of the Act of 1958, Mr. Chatterjee contended that such provision is substantially the same provision in Section 12 of the Act of 1999 and that a typographical error in the order impugned has been sought to be used as a ground of challenge. According to him, Section 12 of the 1999 Act covers both special circumstances and honest concurrent user and, therefore, the writ court instead of being influenced by technical flaws ought to look at the substance of the matter.
19. Discretion exercised by the IPAB in favour of the fourth respondent, it was finally contended, does not suffer from any infirmity and thus a prayer was made to dismiss the writ petition.
20. Various other decisions were cited by learned senior counsel for the parties in support of their respective contentions to which I shall refer, if necessary.
21. I have heard the parties and perused the materials on record including the impugned order of the IPAB and the several authorities that were cited. On consideration of the rival claims, I am of the view that the impugned decision is indefensible for reasons more than one.
22. I am ad idem with Mr. Sarkar that the order impugned suffers from patent errors of jurisdiction rendering the same vitiated, which is one of the grounds for issuance of a quashing order.
23. The contention of Mr. Sarkar that the IPAB posed a wrong question for an answer has not been countered by the fourth respondent in course of arguments. Even in the written notes of argument submitted on its behalf, any argument in relation thereto is conspicuous by its absence. The application for registration filed by the fourth respondent was in Form TM-
1. Priority of user could not have been of any relevance since the date of application was relevant at the time of consideration. The question would have been relevant for passing off actions. Exhibit A1, being copies of invoices from the year 1994, were not at all relevant for consideration since the relevant date was October, 1993. Similarly, Exhibit C1 being the order of the Ludhiana Court, showed user from 1994 only, if at all, and was not proof in respect of user for the pre-October, 1993 period. The same did not advance the cause of the fourth respondent and reliance placed thereon by the IPAB is absolutely misplaced. On facts and in the circumstances, the appropriate question that the IPAB ought to have posed was whether the mark was likely to deceive or cause confusion and to call upon the fourth respondent to satisfy that it would not. In posing a wrong question, there has been a serious error of jurisdiction.
24. Then again, the observation of the IPAB (underlined by it for emphasis) that "Registrar failed to see that the appellant had proved sales of the goods concerned at least from 1994" cannot but be termed perverse. The Registrar could not have been faulted for not looking into documents, which were not before him. The contention urged on behalf of the fourth respondent that the IPAB had faulted the Registrar's omission to ascertain as to whether the petitioner had proved user in India or not does not commend to be sound, since the decision of the IPAB rests on proof of user by the fourth respondent at least from 1994, as would be found from paragraph 16 as well as paragraph 7 wherein reliance had been placed on exhibits A1 and C1, which are post 1993 documents. The observation of the IPAB, underlined by it for emphasis, in order to be confirmed has to be viewed in the light of the observation made by the Registrar in his order. The Registrar clearly indicated that no evidence of use had been filed in the proceedings before him by the fourth respondent. Reference in paragraph 14 by the IPAB to production of bills by the fourth respondent showing sales of goods with the mark HERO from 1995 is irrelevant and the IPAB fell in error in returning a finding in favour of the fourth respondent.
25. Next, the alleged typographical error of printing Section 12(3) requires consideration. No doubt sub-section (3) of Section 12 of the 1958 Act and Section 12 of the 1999 Act are almost identical, except that "nearly resemble each other" in the former Act has been substituted by the word "similar" in the present Act and that there is slight modification by the addition of a few words at the end of the latter. Considering the provision in Section 12 of the 1999 Act and the contention of Mr. Sarkar in this behalf, I have failed to comprehend how it could be pressed into service for upholding the claim of the fourth respondent in the appeal.
26. That apart, the IPAB misdirected itself in observing that "the Registrar had failed to even advert his attention to these special circumstances pleaded". The Registrar had referred to the special circumstances pleaded by the fourth respondent. According to him, the fourth respondent could not have claimed any benefit as a special circumstance, because of the insignificant position of the word HERO in its earlier registration. It is one thing to interfere on the ground that the reason is bad, it is quite another thing to interfere on the ground that the special circumstance pleaded by the fourth respondent had not at all been adverted to. The Registrar did in fact consider the special circumstance and had rejected the plea. The error in the decision of the IPAB is, therefore, patent. The IPAB not having judged the order of the Registrar in respect of special circumstance in the proper perspective and having faulted his decision on a totally mistaken view, it has the effect of rendering the decision vulnerable and liable to interference by the court of writ.
27. Above all, the Registrar was exercising a discretionary power. Unless the exercise of discretion is found to be manifestly incorrect or palpably absurd or patently without jurisdiction, it is not open to the appellate forum to interfere. It is settled law that an appellate power, while examining a discretionary order under challenge, does not interfere when it is not right but interferes only when it is shown to be clearly wrong. The difference is real, though fine. Exercise of discretion by the Registrar, on facts and in the circumstances, was not at all injudicious. The IPAB, therefore, ought not to have interfered with the exercise of discretion by the Registrar in refusing registration as prayed for by the fourth respondent.
28. I may, however, record that receiving of additional evidence by the IPAB from the fourth respondent was not an act either in excess of jurisdiction or in violation of any laid down procedure. However, in view of the findings recorded above, it is clear that even such additional evidence was not sufficient to rule in favour of the fourth respondent.
29. In the result, the order of the IPAB stands set aside. The writ petition is allowed by confirming the order of the Registrar.
Urgent photostat certified copy of this judgment and order, if applied, may be furnished to the applicant at an early date.
(DIPANKAR DATTA, J.)