Rajiv Jain, Trading as M/S. Vepeejay Electrical Industries Vs. Dinesh Kumar Agarwal and Others - Court Judgment

(Circuit Bench sitting at Delhi)

ORDER:- (192 of 2013)

Ms. S. Usha Vice Chairman

The instant appeal arises out of the order dated 14.05.2012 passed by the Assistant Registrar of Trade Marks under Section 57 (4) of the Trade Marks Act, 1999 removing the registered trade mark “SAMAR SUHANA” under No.1881086 in Class 11.

2. The brief facts of the case are as follows:

The appellant is the sole proprietor of the firm M/s. Vepeejay Electrical Industries and is engaged in the business of manufacturing and marketing Cooler Motors, Cooler Pumps, A.C. Fans, Exhaust Fans, Desert Coolers and parts thereof, Geyser Heating Elements and other Electrical Appliances. The appellant is the registered proprietor of the trade mark Suhana under No.572598 in class 11 as of 05.05.1992. The said mark was initially registered in the name of the appellants father and later assigned in favour of the appellant. Necessary request in Form TM-23 has been filed and is pending before the Registrar of Trade Marks. The Trade Mark registered has been duly renewed and validly subsisting.

3. The appellant along with the predecessors has been using the trade mark “Suhana” since the year 1989. On 07.10.2009, the appellant had adopted and started using the trade mark Samar Suhana in respect of the goods falling in class 11. The trade mark Samar Suhana was registered under No.1881086 in class 11 as of 06.11.2009.

4. In July, 2009, the appellant came to know that the respondent had adopted and commenced the use of a deceptively similar trade mark Samar Suhana in respect of the same goods. The appellants therefore filed a Civil Suit No.2023 of 2009 in the High Court of Delhi against the respondents. On 28.10-.2009 the Honble High Court of Delhi was pleased to pass an order of injunction against the respondent and the same was confirmed on 06.08.2010.

5. The respondent filed an application before the Registrar of Trade Marks to rectify the register and remove the trade mark No.1881086 in class 11. The appellant was not put on notice of the application for removal of the trade mark. The appellant came to know of the same through the website of the Trade Mark Registry.

6. The Trade Mark Registry issued a show cause notice to the appellant on 26.09.2011 under Section 57 (4) of the Act, 1999. The operative part of the notice reads as

“… and whereas erroneously the trade mark under application No.1733591 was not cited as conflicting mark. The application was erroneously registered contrary to Section 11 of the Trade Mark Act, 1999. Therefore, the entry relating to the aforesaid registered trade mark has been made wrongly and remains on the Register of Trade Mark without sufficient cause. Please take notice under Section 57 (4) of the Trade Marks Act, 1999 and show-cause why the registration of the aforesaid Trade Mark should not be removed ….”

7. On 29.11.2011, the Trade Marks Registry issued a further notice to the appellant for the hearing fixed on 30.12.2011. On 30.12.2011, the matter was heard and the impugned order was passed on 14.05.2012

8. The grounds of appeal are:-

(a) That the Registrar erred in invoking the provisions of Section 57 (4) of the Act by opting, suo-motu to the rectification of the Register by removing the registered Trade Mark;

(b) That the Registrar erred in treating the non citation of the unregistered Trade Mark No.1733591 as conflicting mark in the examination report, as the ground of rectification being in violation of Section 11 of the Act;

(c) That the appellant has already filed the suit for infringement of this registered Trade Mark SUHANA against the respondent before the Honble High Court and the respondent has been restrained by an order of injunction for using the trade mark. In view of the same, the Registrar ceases to have jurisdiction in respect of rectification of the trade mark.

9. The respondent filed counter statement stating that the Registrar is competent to issue suo motu action whenever he comes to know of the wrong entries in the register. The appellant concealed and suppressed the material fact before the Registrar that there is a dispute between the parties and the suit is pending.

10. The appellant knowingly, deliberately and in connivance with the officials of the trade mark registry managed, the examination report of the application No.1733591 in class 11 and application No.1881086 in class 11 was not mentioned in the examination report. The impugned trade mark advertised in a hurried manner. The appeal is liable to be dismissed with heavy costs as the registration has been obtained by fraud. By registration there has been miscarriage of justice.

11. The appellants though was given an opportunity to file their reply to the show-cause notice under Section 57 (4) of the Act did not file any reply. The established principle of law is that the appellant, who appeared in the Court, is bound to produce and state all the facts and relevant materials to the Court to prove suppression which would amount to playing fraud. The rest of the averments were denied.

12. On completion of the pleadings, we heard Mr.Shailen Bhatia learned counsel for the appellants and Mr. Surender Tyagi learned counsel for the first respondent.

13. The learned counsel for the appellants submitted that the complaint was issued to the appellant for two marks i.e., Suhana under No.572598 and Samar Suhana under No.1881086 in Class 11. The Registrar had initiated action only for the mark Samar Suhana under No.1881086 in Class 11. The counsel pointed out to the observation of the Registrar in the impugned order. The counsel submitted that the Registrar misunderstood the observation of the Honble High Court of Delhi. In fact, the Registrar was free to decide the defendants application is the respondents registration and not the appellants registration. Therefore notice under Section 57 (4) of the Act 1999 was issued.

14. The counsel then relied on Section 125 of the Act and submitted that if the civil suit was pending, the Registrar had no powers to decide the validity of the Registration and the powers vested in the Tribunal/Board. When that be so, the Registrar ought not to have decided the matter.

15. The counsel then relied on the judgment reported in MANU/SC/0664/1998 (WHIRLPOOL CORPORATION VS. REGISTRAR OF TRADE MARKS, MUMBAI and OTHERS) - when a suit is pending before the High Court, The Registrar cannot issue notice for cancellation of the Trade Mark.

16. The respondents in reply submitted that the appellant was heard and the impugned order was passed. The appellants cannot be said to be aggrieved by this order. The counsel has relied on two judgments.

(1) 2004 (30) PTC 297 (IPAB) RAMESH L.VADODARIA Vs. ASST. REGISTRAR OF TRADE MARKS – when the entry is wrongly remaining in the Register, the Registrar is bound to make inquiries after issuing notice to both the parties.

(2) AIR 1988 Calcutta 326 S.M.CHOPRA and SONS Vs. RAJENDRA PRASAD – Raja and Maharaja was held to be not deceptively similar.

17. We have heard and considered the arguments of both the counsel and have gone through the pleadings and documents.

18. The issue that arises for consideration is whether the Registrar has powers to decide the validity of the registration when the suit is pending before a Civil Court. In this regard, it is worth quoting the provisions of Section 125 of the Act.

“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 to 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 o the Appellate Board.”

19. The Sub Section (1) of Section 125 is very clear that an application for rectification shall be made to the Board and not to the Registrar. Sub Section (2) reads as that if an application under Section 47 or 57 is made to the Registrar, the Registrar may refer the application to the Board.

20. The observation made by the Supreme Court in Whirlpool case squarely applies to this case (MANU/SC/0664/1998), which is as follows:-

“69. As against the above decision, there is a decision of a Division Bench of the same High Court in Registrar of Trade Marks and Anr. Vs. Kumar Ranjan Sen and Ors., AIR 1966 Calcutta 311, in which it was laid down as under :-

It will be noticed that the word "Tribunal" as defined in clause (x) of Sub-section (1) of S. 2 does not simply mean the Registrar or the High Court but the Registrar or the High Court, only when proceedings are pending before them. It is a convenient way of describing either the Registrar of the High Court before whom proceedings were pending. Coming now to S. 56, we find that sub-section (1) refers to an application made in the prescribed manner to a High Court or to a Registrar, but it is the Tribunal which can make an order under it of cancellation or varying the registration as the case may be. It is a mistake to think that the word "Tribunal" Stands in contra-distinction to the word "High Court" or the "Registrar". The word "Tribunal" has been used as meaning the "High Court" or the "Registrar" before whom proceedings are pending. It is in this sense that the word "tribunal" has been used in sub-section (4). It is intended to convey that the "Tribunal", that is to say, the High Court or the Registrar before whom proceedings are pending may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make an order a referred to in sub-section (1) or sub-section (2). As will appear from sub-section (5) the High Court has itself power to order a rectification of the register. In fact, the Court below, having come to the conclusion that the registration had been improperly done in violation of the provisions of the said Act, was not powerless in the matter, but could of its own motion have rectified the register, even if its conclusion as to the powers of the Deputy Registrar was right. It is clear to us that the use of the word "Tribunal" in sub-section (4) of S. 56 does not exclude the provisions of

Sub-section (2) of S.4. The only thing to note is that in order to attract the provisions of sub-section (4) of Section

56. Proceedings must be pending before the Registrar or the persons authorised by him to exercise a particular function under sub-section (2) or S. 4.

70. This decision has been considered by the learned Single Judge in Standard Pharmaceutical's case (supra). In our opinion, both the decisions are in line with the view that we have taken in the instant case on the interpretation of the definition of Tribunal. But the point before us is a little different as we are concerned essentially with the extent of jurisdiction of the "Registrar" and the High Court vis-a-vis other provisions of the Act.

71. In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellant's opposition to the registration of respondent's Trade Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court, which was admitted on 1.2.1993 and has since been registered as C.M.(Main) 414 of 1992. Thereafter, on 4.8.1993, the appellant filed a rectification petition under Sections 45 and 46 of the Act for removing the entry relating to the Trade Mark for which Registration Certificate was granted to the respondents on 30.11.1992. The appellant has also filed a suit for passing-off (Suit No. 1705 of 1994) in the Delhi High Court against the respondents in which an order of temporary injunction has been granted in favour of the appellant which has been upheld by the Division Bench of the High Court as also by this Court. In that suit, an amendment application has also been filed so as to include the ground of infringement of the appellant's Trade Mark but that application has not yet been disposed of. It is, however, obvious that if the application is allowed, the amendments will relate back to the date of the application, if not to the date of plaint.

72. In view of the pendency of these proceedings in the High Court and specially in view of Section 107 of the Act, the Registrar could not legally issue any suo motu notice to the appellant under Section 56(4) of the Act for cancellation of the Certificate of Registration/Renewal already granted. The appeal is consequently allowed and the show-cause notice issued by the Deputy Registrar (respondent No.2) on 26th of Sept. 1997 under Section 56(4) of the Act is hereby quashed. The appellants shall be entitled to their costs.” (Emphasis supplied).

21. The above matter has been dealtwithunder Section 107 of the 1958 Act, which is similar to the present Section 125 of the 1999, Act.

22. Applying the above mentioned principles, we are of the opinion that the Registrar ought not to have decided the matter, which is beyond the Registrars powers. The Registrar in fact had no powers to issue the notice under Section 57(4) of the Act, when the suit was pending before the Honble High Court. We are not going into the merits of the matter as to the validity of the registration. When we have held that the Registrar had no powers to issue the notice under Section 57 (4) the notice itself a nullity and the order passed thereunder is illegal and not in accordance with law.

23. For the reasons stated above, the appeal is allowed with costs of Rs.5000/-(Rupees five thousand only). Consequently, connected M.P.Nos.314/2012 and 181/2013 are closed.