ORDER(186/10)
Z.S. Negi, Chairman
1. The above clarificatory application is filed by M/s. Medical Technologies Ltd. -the applicant- seeking clarification of order No.91/2009 dated 29.5.2009 passed by this Appellate Board whereby the Original Rectification Application, being ORA/46/2006/TM/MUM of the applicant for removal of the Trade Mark âROFOL under No. 583227 in class 05, registered in the name of M/s. Neon Laboratories Private Limited- the respondent No.1-, from the register of trade marks or rectification of the register under section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act), was dismissed.
2. The applicants case is that on perusal of the aforesaid order dated 29.5.2009, it realised that some of the submissions advanced by the counsel for the applicant during the course of arguments have not been considered nor mentioned nor even decided by the Appellate Board. According to the applicant, it has obtained an injunction on passing off against the respondent No.1 restraining the use of trade mark ROFOL and the said injunction order has been confirmed with two concurrent findings of the City Civil Court and the High Court of Gujarat. According to the applicant it, through its counsel, had vehemently argued that the use of the mark by the respondent No.1 has been held to amount of passing off and consequently the provisions of section 11(3) (a) of the Act is a bar to registration of the impugned mark ROFOL and though copies of the orders passed by the aforesaid two Courts were on record but the Appellate Board has completely bypassed this vital issue and has not even considered nor adverted to nor even decided the said issue. It is alleged that it was argued that in view of the injunctive relief granted in favour of the applicant, the respondent No.1 is not the true and rightful proprietor of the said trade mark and registration thereof is prohibitive of section 18 of the Act but this issue too has not been considered nor mentioned nor even decided by the Appellate Board. It is stated that it was further argued that the use of the impugned mark, which is similar to the applicants prior used mark for similar description of the goods, is likely to cause deception or confusion and consequently registration of such mark is prohibitive of provisions of sections 9(2) and 11(1) of the Act. It is also stated that the use of the impugned mark without due cause would take an unfair advantage of and be detrimental to the distinctive character and repute of the applicants mark and as such the impugned registration is hit by section 11(2) of the Act.
3. Ms. Archna Goyal, Constituted Attorney of the respondent No.1 at the outset of her affidavit reply dated 11.11.2009 submitted that this Appellate Board has no jurisdiction to try, entertain and dispose of the instant clarificatory application as the order passed by the Appellate Board does not require any clarification. She submitted that the present application is an abuse of process of law and made solely with mala fide and dishonest intention to delay the pending suit proceedings between the parties before the civil courts and to mislead this Appellate Board. It is claimed that the Appellate Board has considered the rectification application and all the pleadings and evidence placed before it and adjudicated upon the issues and there is, therefore no case for clarification of the said order. It is submitted that the rectification application was filed on the false and frivolous ground of non-user and the applicant miserably failed to prove the allegation and have now come up with this frivolous clarificatory application-which is beyond the scope of the rectification application. The applicant is not entitled to rely on the order passed by the Court at the interim stage and to seek rectification of trade mark of the respondent No.1. Further, the Appellate Board ought not to grant any relief as sought for in the instant application on the grounds for rectification raised under sections 9 and 11 of the Act. It is denied that the Appellate Board has completely bypassed the alleged crucial issue and has not considered, adverted to and not even decided and on the contrary it is reiterated by the respondent No.1 that the Appellate Board has considered all the materials and arguments and rightly passed the order which requires no clarification as sought for by the applicant. While denying, that the registration does not confer any rights on the registered proprietor and that the common law rights are superior to the statutory rights, as alleged by the applicant, it is submitted that the interpretation of sections 27 and 28 of the Act provided in the application by the applicant is misleading and wrong in law.
4. Learned counsel for the applicant, at the outset of the hearing, submitted that some of the submissions advanced by the counsel for the applicant at the time of hearing of the rectification application have not been considered nor mentioned nor decided by the Appellate Board and as has been observed by the Supreme Court, in Daman Singh and others, etc. v. State of Punjab and others, etc., AIR 1985 Supreme Court 973, that if indeed any ground which was argued was not considered it should be open to the party aggrieved to draw the attention of the Court making the order to it by filing a proper application for the review or clarification, accordingly, the applicant has filed the present clarificatory application. In that case, the Honble Supreme Court observed thus: âThe final submission of Shri Ramamurthi was that several other questions were raised in the writ petition before the High Court but they were not considered. We attach no significance to this submission. It is not unusual for parties and counsel to raise innumerable grounds in the petitions and memoranda of appeal etc., but, later, confining themselves, in the course of argument to a few only of those grounds, obviously because he rest of the grounds are considered even by them to be untenable. No party or counsel is thereafter entitled to make a grievance that the grounds not argued were not considered. If indeed any ground which was argued was not considered it should be open to the other party aggrieved to draw the attention of the Court making the order to it by filing a proper application for review or clarification. The time of superior courts is not to be, wasted in enquiring into the question whether a certain ground to which no reference is found, in, the judgment of the subordinate court was argued before that court or not?â He further submitted that more or less similar observations were made by the Supreme Court in Mohd. Akram Ansari v. Chief Election Officer and Ors. and Naved Yar Khan v. Haroon Yusuf and Anr., 2008 (1) ALT 51 (SC) and Shankar K. Mandal and Ors. v. State of Bihar and Ors., AIR 2003 SC 4043. By referring to paragraphs K and N of the clarificatory application, learned counsel submitted that the Appellate Board has completely bypassed the argument of the applicants counsel that the use of the impugned mark by the respondent No.1 has been held to amount to passing off and consequently the provisions of section 11(3)(a) of the Act is a bar to the registration of the impugned mark; though the copies of the orders of the City Civil Court and the High Court were placed on record but the Appellate Board did not consider this crucial argument. He submitted that this issue is required to be considered and decided. He submitted that the Appellate Board has jurisdiction to decide the issues raised in the application and as such the application on hand is maintainable. Relying on the judgment of Full Bench of Punjab High Court in Jagir Singh Sobha Singh and another v. Settlement Commissioner, Pepsu and others, AIR 1959 Punjab 457 (V 46 C 156), learned counsel submitted that every tribunal has inherent power to correct its own error, provided, of course, the circumstances are such that the correction of that error is necessary in the interest of justice and such inherent power is necessarily implied in the setting up of any authority on whom the responsibility of deciding any matter rests and to deny such power to any tribunal would render that tribunal incapable of properly deciding the matters entrusted to it. In that case after a scheme of consolidation had been framed and confirmed by the Revenue Minister visited the village and heard some complaints against the scheme and, on considering them on the spot, he directed on 13.2.1953 a repartition of the entire village to be done afresh. On 23.7.1953, the Under Secretary to Government issued an order stating that it has been decided that Ex-Revenue Ministers order dated 13.2.1953, legally without jurisdiction and ultra vires, be ignored and no repartition need be done de novo. In a writ petition it was contended the second order is invalid because the State Government having once exercised its power through Revenue Minister, the same State Government could not subsequently reverse the order or recall it. The Court, while considering the question whether an order made by the Revenue Minister acting as the State Government could be subsequently cancelled by the State Government?, observed that âEvery tribunal has inherent power to correct its own error, provided, of course, the circumstances are such that the correction of that error is necessary in the interest of justice. Such inherent power is necessarily implied in the setting up of any authority on whom the responsibility of deciding any matter rests. This inherent power, which must vest in all tribunals, has to be exercised sparingly and only in circumstances which compel its exercise. If a tribunal, and for that matter any other legal authority, decides to recall an order on the grounds that it is invalid, the act of recall cannot be quashed merely on the ground that no such recall is permitted by any express provision of a statute. The question has to be decided in view of all the circumstances attending to recall.â Learned counsel for the applicant while placing reliance on the judgment of this Appellate Board in Safari Bikes Limited v. Safari Cycles Pvt. Ltd. and Others, 2008 (36) PTC 650 (IPAB), wherein the judgment of Supreme Court in Narshi Thakershi v. Pradyumansinghji, MANU/SC/0433/1990 was referred to, submitted to say that when a review is sought due to a procedural defect, the inadvertent error committed by the Tribunal must be corrected ex debito justitiae to prevent the abuse of its process, and such powers inheres in every Court or Tribunal.
5. Learned counsel for the respondent No.1, on the other hand, urged that the order passed by this Appellate Board requires no clarification and the instant application be dismissed with compensatory cost in favour of the respondent No.1. Learned counsel for the respondent No.1 vehemently argued that the Appellate Board has considered the original rectification application and all the pleadings and evidence placed before it and has adjudicated upon the issues which arose in view of such application. It was argued that the applicant has strongly relied upon the interim injunction order passed by the City Civil Court but forgot that the same is under challenge by way of SLP before the Supreme Court of India and the Honble Supreme Court while granting the Special Leave made it clear that so far as the parties are concerned, whatever rights they have in law may be urged in proceedings pending before the other Courts and as such the applicant is not entitled to rely on the orders passed by the City Civil Court at the interim stage and also the Appellate Board could not have decided any issue which was not subject-matter of the rectification application. Further, the civil suit No.3419 of 2005 against the applicant filed by the respondent No.1 is pending before the High Court of Bombay. It was also submitted that this Appellate Board ought not to grant any relief, as sought for in the present application, to the applicant on the basis of allegations made by it as grounds for rectification under sections 9 and 11 of the Act. It was submitted that the decisions of the Supreme Court as cited by the applicant are not applicable in particular to the facts and circumstances of the present case and apart from this, the Appellate Board has no jurisdiction to try, entertain and dispose of the present application. Learned counsel for the respondent No.1, relying on the decision in Godrej Sara Lee Ltd. v. Reckitt Benckiser (India) Ltd., MANU/IC/0004/2008, submitted that in that case the foremost question for consideration of the Appellate Board was whether the Appellate Board has the jurisdiction to review its own decisions or order and the Appellate Board observed as under:-
â7. Shri Ajay K.Gupta relied upon the judgment in Om Prakash Gupta v. Praveen Kumar 2000 PTC 326, more particularly to the passage extracted therein from the judgment of the Supreme Court in Indian Bank v. Satyam Fibres (India) JT 1996 (7) SC 135, which was a case for review of judgment of the National Consumer Disputes Redressal Commission, whereby it had passed a money decree. Review was sought on the ground that the judgment was obtained on the basis of a letter which was forged. The Commission did not take notice of this plea. Supreme Court observed that: âThis plea could not have been legally ignored by the Commission which needs to be remitted that the authorities, be that constitutional, statutory or administrative (and particularly those who have to decide a lis) possesses the power to recall their judgments pr orders if they are obtained by fraud as fraud and justice never dwell together (Fraus et just nunquam cohabitant).â Reading the scope of the inherent power of the Court and Tribunal in such matters it was observed as under (para 22 and 23 at page 216):
â22. The judiciary in India also possess inherent power, specially under section 151 CPC, to recall its judgment or order if it is obtained by fraud on court. In the case of the fraud on a party to the suit or proceedings, the Court may direct the affected party to file a separate suit for setting aside the decree obtained by fraud. Inherent power are powers which are resident in all Courts, especially of superior jurisdiction. These powers spring not from legislation but from its nature and the constitution of the Tribunals or Courts themselves so as to enable them to maintain their dignity, secure obedience to its process and rules, protects its officers from indignity and wrong and to punish unseemly behaviour. This power is necessary for the orderly administration of the Courts business.
23. Since fraud affects the solemnity, regularity and orderliness of the proceedings of the Court and also amounts to an abuse of the process of Court, the Courts have been held to have inherent power to set aside an order obtained by fraud practiced upon that Court. Similarly, when the Court is misled by a party or the court itself commits a mistake which prejudices a party, the Court has the inherent power to recall its orderâ¦â
The judgment relied upon by the learned senior counsel Shri Ajay K. Gupta was a case dealing with inherent jurisdiction to set aside an order obtained by fraud practiced upon the court or tribunal. That decision, in our respectful view, is of no assistance to decide the question under consideration. No question of fraud arises in the case on hand.
8. In Grinlays Bank v. Central Government,MANU/SC/0308/1980 the Court was required to consider, inter alia whether the Labour Tribunal had any jurisdiction to set aside the ex-parte award particularly when it was based on evidence. The objection as to the jurisdiction of the tribunal, raised before the Court was in the following terms:
It is contended that neither the Act nor the rules framed thereunder confer any powers upon the Tribunal to set aside an ex parte award. It is argued that the award although ex parte, was an adjudication on merits as it was based on evidence led by the appellant, and, therefore, the application made by the respondent No.3 was in reality an application for review and not a mere application for setting aside an ex parte award.
The Supreme Court held as follows:
âIt is true that there is no express provision in the Act or the rules framed thereunder giving the tribunal jurisdiction to do so. But it is a well known rule of statutory construction that a tribunal or body should be considered to be endowed with such ancilliary or incidental powers as are necessary to discharge its functions effectively for the purpose of doing justice between the parties. In a case of this nature, we are of the view that the tribunal should be considered as invested with such incidental or ancilliary powers unless there is any indication in the statute to the contrary. We do not find any such statutory prohibition. Learned Counsel for the respondent No.1 submitted that the Appellate Board has consistently held in Pullambath Hameed, trading as Sagar Travels v. Naranath Chalil Mahamood, trading as Sagar Travels and Business Corporation and the Registrar of Trade Marks, MANU/IC/0050/2009, Societe Des Produits Nestle S.A v.The Controller General of Patents, Designs and Trade Marks and the Assistant Controller of Patents and Designs, MANU/IC/0078/2009 and Toshiba Appliances Co. v. Kabushiki Kaisha Toshiba trading as Toshiba Corporation and the Registrar of Trade Marks, MANU/IC/0072/2009, the Appellate Board has, upon relying the decisions in the Grindlays Banks case (supra) and Narshi Thakershis case (supra) has observed that the Appellate Board has no jurisdiction to review its own orders on merits except procedural defects. Learned counsel for the respondent No.1 by drawing our attention to paragraph 15 of the Statement of Case submitted that it does not lie in the mouth of the applicant that the Appellate Board has decided the issue under section 47(1)(b) and 47(1)(a) of the Act, which were not even argued at the time of hearing and it has also not considered the ratio of the judgments on behalf of the applicant in support of its arguments. The order passed by the Appellate Board is testimony as to which party has relied upon the judgment in Hardie Trading Ltd. and Another v. Addisons Paint and Chemicals Ltd., (2003) 11 Supreme Court Cases 92.
6. We have heard both the parties carefully. We find that there is no substance in the contention of the applicant that the Appellate board has completely bypassed the vital issue that in view of the injunctive relief granted in favour of the applicant holding that the use of the mark by the respondent No.1 amounts to passing off, and that the respondent No.1 is not the true and rightful proprietor of the said trade mark and registration thereof is prohibitive of section 18 of the Act as the Board has not considered nor mentioned nor even decided this issue. There is no doubt that the applicant has obtained the injunctive relief from the Courts but it is to be remembered that the same was an interim injunction at an interim stage and he same is under challenge before the Apex Court. Apart from this, the Honble Supreme Court has made it clear at the time of granting Special Leave that whatever rights the parties have in law may be urged in the proceedings pending before the other Courts. There is a suit between the parties pending before the High Court of Bombay. As such the issue of injunctive relief obtained by the applicant is at an interim stage and at the same time it is subjudice and commenting thereon or attempting to decide that issue is beyond the jurisdiction of the Appellate Board. From the reading of the order of this Appellate Board shows that it is absolutely wrong to say that that the Appellate Board has even not mentioned about the injunctive relief. This Appellate Board has decided the issue of registration having obtained without bona fide intention that the mark be issued in respect of goods for which registration is obtained. It is also wrong to state that this Appellate Board has decided the issue under section 47 of the Act, even though it was not argued. If that be so, then question arise as to what for the respondent No.1 has relied upon the Hardie Trading Ltd.s case and whether has the applicant not sought relief under section 47 of the Act? In Colombia Gramophone Co. Ltd.s TM, (1932) 49 RPC 621 (CA), it was held that if there is a bona fide use of the mark within 5 years, however small, the mark cannot be removed. In respect of the other Grounds taken by the applicant for claification, we are of the view that the applicant has in the garb of clarification come up for rehearing of the entire case. The specific grounds by mentioning the specific sections such as 9(2), 11(1),11(2) ,11(3)(a) of the Act sought to be raised at this stage is beyond the scope of the review as these issues cannot be decided without elaborate arguments. However, records do not show that these specific sections of the Act were raised at the time of hearing the rectification application. We are not inclined to deal with the cited judgement in the Cycle Corporation of India Ltd. vs. T.I. Raleigh Industries Pvt. Ltd., and others, (1996) 9 Supreme Court Cases 430, as the same was not relied upon by the applicant at the time of hearing the rectification application. There is no procedural or inadvertent error committed on the part of the Appellate Board. We have already stated that the issues raised by the applicant in the instant application cannot be decided without elaborate arguments, which is certainly not the objective of review. Even this Appellate Board has in many cases observed that this Appellate Board has no jurisdiction to or power to review its own orders or decisions except due to procedural defect or inadvertent error which may require correction ex debito justitiae. The applicant has failed to show any error which can be said to be due to procedural defect or inadvertent error which may require correction ex debito justitiae. We are of the opinion that the applicant, even knowing that this Appellate Board has no power to review its own orders on merits has delibrately filed this clarificatory application, which is nothing but an abuse of process of law. We are of the considered view that the present application is devoid of any substance and it must fail.
7. In view of the above, the present miscellaneous petition is dismissed. However, there shall be no order as to costs.