Gujarat High Court
Kantaben Manibhai Patel vs Premchandbhai Venidas Patel & 2 on 17 July, 2017
Author: C.L.Soni
Bench: C.L. Soni
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
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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 ?
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KANTABEN MANIBHAI PATEL....Petitioner(s)
Versus
PREMCHANDBHAI VENIDAS PATEL & 2....Respondent(s)
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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
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CORAM: HONOURABLE MR.JUSTICE C.L. SONI
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HC-NIC Page 1 of 30 Created On Tue Jul 18 01:26:24 IST 2017
C/SCA/4286/2011 CAV JUDGMENT
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 the Page 2 of 30 HC-NIC Page 2 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT authorized 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 Page 3 of 30 HC-NIC Page 3 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 4 of 30 HC-NIC Page 4 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 5 of 30 HC-NIC Page 5 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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, Page 6 of 30 HC-NIC Page 6 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 8 of 30 HC-NIC Page 8 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 9 of 30 HC-NIC Page 9 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 10 of 30 HC-NIC Page 10 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 11 of 30 HC-NIC Page 11 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 12 of 30 HC-NIC Page 12 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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:
Page 13 of 30HC-NIC Page 13 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT "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 Page 14 of 30 HC-NIC Page 14 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 15 of 30 HC-NIC Page 15 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 16 of 30 HC-NIC Page 16 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT court for the purposes of receiving evidence, 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 Page 17 of 30 HC-NIC Page 17 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 19 of 30 HC-NIC Page 19 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 20 of 30 HC-NIC Page 20 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 21 of 30 HC-NIC Page 21 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 22 of 30 HC-NIC Page 22 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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.Page 23 of 30
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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 Page 24 of 30 HC-NIC Page 24 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 25 of 30 HC-NIC Page 25 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 26 of 30 HC-NIC Page 26 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 27 of 30 HC-NIC Page 27 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 28 of 30 HC-NIC Page 28 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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 Page 29 of 30 HC-NIC Page 29 of 30 Created On Tue Jul 18 01:26:24 IST 2017 C/SCA/4286/2011 CAV JUDGMENT 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* Page 30 of 30 HC-NIC Page 30 of 30 Created On Tue Jul 18 01:26:24 IST 2017