Trade Marks - Whether Registrar of Trademark can deny its jurisdiction to adjudicate upon application for rectification of register, when Section 125 of Act has no application - NO: Supreme Court
By TIOL News Service
NEW DELHI, JAN 21, 2016: THE issue is: Whether the Registrar of Trademark can deny its jurisdiction to adjudicate upon the application for rectification of the register, when Section 125 of the Trade Marks Act has no application. NO is the answer.
Facts
The appellant's (Jagajit Industries Ltd) application for registration of trademark 'BLENDERS PRIDE' was advertised in the Trademarks Journal in October, 2003. This application was objected by the Indian subsidiary M/s Seagram Company Limited (respondent No. 4 in this particular case) of a US based company Austin Nichols Inc which is engaged in the business of manufacturing and marketing a variety of alcoholic beverages worldwide. The respondent No. 4 claimed that its parent company has coined and adopted the trademark 'BLENDERS PRIDE' through its licensee M/s Seagram Company Limited in the year 1973. According to the respondent on account of extensive sales and marketing worldwide, the trademark 'BLENDERS PRIDE' has come to acquire a tremendous reputation in various countries including India and has selling 'BLENDERS PRIDE' whisky in India through its licensee Seagram India Private Limited since 1995. It has also applied for registration of the trademark 'BLENDERS PRIDE' under two applications in class 33 which are pending registration. Respondent No.4 had filed Form TM-44 seeking extension of one month's time for filing its notice of opposition against the appellant's application on 6.1.2004, i.e. within the statutory period of three months. Once the respondent No.4 had filed its notice of opposition before the Trade Marks Registry, New Delhi, the Trade Marks Registry issued a notice to the appellant inviting its counter statement to the said notice of opposition, and had stated that if the counter statement was not filed within time, the trademark application would be deemed to be abandoned. However, the respondent No.4 came to know on 20.1.2005 that a trademark registration certificate had been issued to the appellant on 13.1.2004 itself. Immediately, this was brought to the news of the Trade Marks Registry about the pending opposition proceedings.
A show cause notice was issued by the Registrar under Section 57(4) of the Trade Marks Act, 1999 to the appellant, that the registration certificate had been issued wrongly, and it would be rectified. On 26.5.2005, the Registrar directed the appellant to return the registration certificate wrongly issued forthwith, and further directed not to use the said certificate of registration in respect of the above-mentioned trademark. The appellant filed Writ Petition before the Delhi High Court which directed the Registrar to dispose of the proceedings before it. The Registrar recalled the show cause notice issued, stating that he had no jurisdiction to proceed in the matter inasmuch as, under Section 125 of the Act, the proceedings could only legally continue before the Appellate Board and not before him. The Appellate Board reversed the Registrar's order, and held that the notice of opposition had been taken on record and numbered, which clearly showed that Form TM-44 filed by respondent No.4 for extension of time had been accepted by the Registrar. The Board observed that it was only after such acceptance that a show cause notice had been issued to the appellant to file their counter statement. The Board held that Section 125 had no application since the suit had not been filed against respondent no.4, but had only been filed against Seagram. The Board directed the Registrar to dispose off the matter. But the appellant filed a writ petition before the Delhi High Court and the Appellate Board's order was reversed.
On further appeal, the Division Bench of Delhi High Court reversed the order of the Single Judge and held that Section 23(1) of the Act had been violated, and that Section 125 would not apply on the facts of this case as it is the duty of the Registrar to maintain the purity of the register. The Division Bench finally held that the grant of registration on 13.1.2004 was itself invalid being contrary to Section 23(1) of the Act.
Reasoning
1. Perusal of the letter addressed by the Registrar shows that the notice of opposition was taken on record. This could not have been done unless time had been extended by one month, as the said notice of opposition was filed only on 19.1.2004, i.e. within the 30 days period after three months were over on 6.1.2004. Though Section 131 of the Act refers to the Registrar's satisfaction and refers to conditions which he may think fit to impose, it is clear that he need not pass a separate order in every case if he wishes to extend the time. The decision of the Madras High Court being M/s Allied Blenders and Distillers Private Limited, Mumbai v. Intellectual Property Appellate Board, Chennai & Ors., was referred to, to show that Section 131 cannot apply to the facts of this case because the said subsection will not apply where time to do a thing is expressly provided in this Act. It is true that time to file a notice of opposition is to be done within the time that is expressly provided in Section 21(1) and that Section 131 of the Act would not therefore apply. However, Section 131 is a pointer to the fact that the extension of time by the Registrar is a ministerial act for which no hearing is required.
2. It is thus clear that time has been extended by the Registrar, as is evidenced by the letter dated 16.2.2004. Therefore, it is clear that any registration certificate granted prior to the 30 days extended period from 6.1.2004 would be violative of Section 23(1) of the Act. In this view of the matter, the Appellate Board and the Division Bench are clearly right in declaring that the registration certificate, having been issued on 13.1.2004, would be violative of Section 23(1)(a), and the register would have to be rectified by deleting the said trademark therefrom.
3. It is clear 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 the counsel of the appellant 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 – Seagram Manufacturing 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. 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.
4. 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.
(See 2016-TIOL-06-SC-MISC)
