Judgment:
(Circuit Bench Sitting at Delhi)
Order (No.167/2009)
S. Usha, Vice- Chairman
1. This miscellaneous petition has been filed by the applicant praying for an interim order, thereby staying the effect of the impugned registration granted under No.657547 in class 25 pending disposal of the rectification application.
2. The main rectification application is for expunging the registered trade mark No.657547 in class 25 from the Register of Trade Marks under sections 47 and 57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The brief facts of the case are that the first respondent herein filed an application for registration of the trade mark label âNODDY on 6.3.1995 claiming user since November, 1991 under No.657547. The said application was advertised in the Trade marks Journal No.1229 Supplement dated 21.8.2000 at page 140. The petitioner herein filed their notice of opposition on 1.12.2000 and the same was taken on record by the Registrar of Trade Marks, Mumbai which was notified in the Trade Marks Journal No.1239 dated 16.01.2001 at page 4169. The petitioner had changed their counsel and had filed Form TM-16 to bring on record the change. In the year 2007, the petitioner came to know that the trade mark under No.657547 in class 25 has been registered. The petitioner herein wrote a letter dated 05.10.2007 to the Registrar of Trade Marks about the pending opposition and registration of the trade mark and requested for withdrawal of the registration. Subsequently, in the year 2008 the petitioner came across some âkids wearâ bearing the trade mark âNODDY in the market at Delhi which were being manufactured by M/s Isha Apparels and immediately issued a legal notice. The petitioner received a reply to the legal notice where in the impugned registration was relied upon. In addition the petitioner made a request under the Right to Information Act in the year 2009 but received a vague reply. In the first week of July, 2009 the petitioner filed a suit for infringement and passing off before the Honble High Court of Delhi in CS (OS) No.1154/2009 against the first respondent and M/s Isha Apparels. The Honble High Court did not grant any interim order and had ordered notice to the first respondent. The petitioner further stated that if the first respondent is allowed to rely on the impugned registration in the suit, the petitioner would be put to irreparable loss. The balance of convenience is in favour of the petitioner. Though the registration is in respect of Mumbai Registry (jurisdiction), the matter is being filed before the Circuit Bench Sitting at Delhi in view of the urgency. The petitioner, therefore, prayed that the effect of registration be stayed pending disposal of the rectification application.
3. On oral request made by the counsel for petitioner, the miscellaneous petition was listed for hearing at the Circuit Bench Sitting at Delhi on 26.08.09. In view of the urgency expressed, the matter was listed though the registration was granted by the Trade Marks Registry, Mumbai. The notice issued to the first respondent was returned unserved with an endorsement âLEFT. The counsel for the petitioner insisted that the matter be heard exparte. In fact, the prayer of the petitioner in the miscellaneous petition is, ârespectfully prays that this Honble Board may be pleased to pass an exparte interim order thereby staying the effect of â¦â¦â¦.â
4. In reply to this Boards query as to the provisions of section 95 of the Act, the counsel submitted that the provision was applicable to the appeal and not to rectification application. The counsel reiterated the contents made in the miscellaneous petition.
5. We have heard and considered the arguments of the counsel for petitioner. We shall first decide the issue as to the hearing of the matter at Delhi, whereas the registration has been granted by the Mumbai Registry. This Appellate Board has been of the view that the matters pertaining to other jurisdiction can be heard at the other place if urgent orders are required. That is for the reason that as per the provisions of section 83 of the Act, only one Appellate Board is established for the entire country though there could be several branches of the same Board at different places under section 84 of the Act.
6. Rule 4 of the Trade Marks Rules, 2002 gives an indication of what is an appropriate office of the Trade Marks Registry. In relation to a trade mark already registered, rule 4 defines the appropriate office to be the office of the Registry within whose territorial limits the principal place of business in India of the registered proprietor of the trade mark is situated. In view of rule 4, the jurisdiction of appropriate office, once determined on the basis of original principal place of business, shall not get affected by any change. As per sections 83 and 84 of the Act, it is one of the Bench of the Appellate Board sitting in the benches to hear and decide the case, in the instant case the principal place of business of the registered proprietor is Mumbai and the matter is, therefore, to be heard at Mumbai only. The matter can be heard at a Bench sitting at a different place with the consent of both the parties in case of urgency as it is the same Board which is to decide the matter. In the instant case, the respondent has not been served. We do not see any reason to hear the matter at Delhi as the matter pertains to Mumbai jurisdiction where there is no urgency.
7. Even assuming that the provisions of section 95 is applicable to appeals and not to rectification applications, we find no prima facie case made out by the petitioner to grant an exparte order. In the interest of justice, we are of the opinion that an order can be passed only after hearing the respondents. On perusal of the records and on merits, we are also of the view that there is no urgency in this case. In fact, though the registration has been granted in the year 2006 or 2007 which is not clear, no action has been taken by the first respondent against the petitioner. The petitioner has only initiated infringement action against the first respondent and to seek an order to stay the effect of the registration is a wide prayer..
8. Considering the above facts and circumstances of the case, we do not find any merit in the petition either to hear the matter at a different Bench sitting at a place other than Mumbai or to hear the matter in the absence of first respondent (exparte) or is there any emergency for an urgent order. The miscellaneous petition is, therefore, dismissed. The Registry is directed to post the matter as and when the Circuit Bench sitting at Mumbai is fixed after the pleadings are complete. No order as to costs.