| SooperKanoon Citation | sooperkanoon.com/913040 |
| Court | Kolkata High Court |
| Decided On | Dec-07-2010 |
| Case Number | GA No. 2031 of 2009 CS No. 10 of 2009. |
| Judge | SANJIB BANERJEE, J. |
| Appellant | itc Limited. |
| Respondent | Godfrey Phillips India Limited. |
| Appellant Advocate | Mr S.K. Kapur, Sr; Mr Ranjan Bachawat; Mr Vipul Kundalia; Mr Ravi Kapur; Ms Sonal Shah; Mr Kushagra Shah; Mr Prithviraj Sinha; Ms Aditi Sehgal, Advs. |
| Respondent Advocate | Mr S.N. Mookerjee, Sr; Mr Abhrajit Mitra; Mr Ratnanko Banerji; Mr Sarvopriya Mukherje; Mr Soumya Sen; Ms Debamita Adhikari; Ms Siddiqua Parveen, Advs. |
| Cases Referred | (General Electric Co. (of U.S.A.) v. General Electric Co. Ltd. |
understanding of the word invalid as it appears in Section 124 of the Trade
Marks Act, 1999.
2. There are two parts to the defendants challenge to the continuance of the action. The primary attack is as to the continuation of the suit in this Court on the ground that appropriate proceedings have been launched by the defendant against the plaintiff before the Trade Marks Appellate Board. The defendants application to the Board appears to be on the ground of non-use of the plaintiffs registered mark. No copy of the defendants application before the Appellate Board has been appended to the defendants present application, nor has a copy thereof been otherwise produced in court; but it is not in dispute that the basis for assailing the mark is non-use of the mark for a period of at least five years and three months prior to the making of the defendants application to the Appellate Board. The defendant says a challenge to the continuation of a registered mark on the count of non-user can also be carried on the ground that it is an entry wrongly remaining in the register within the meaning of that expression found in Section 57(2) of the Trade Marks Act, 1999. The suit is for infringement and passing-off. Both parties are well-known in the tobacco industry. In the plaint it has been claimed that the plaintiff is the proprietor of the trademark Pilot in respect of manufactured tobacco since December, 1945. The plaintiff claims to have conceived and adopted the mark with the word Pilot being the most prominent feature thereof along with a distinctive figure of a pilot. The label mark was registered in Class 34 in December, 1945. The plaint says that the registration has been renewed and is valid and subsisting. Paragraph 5 of the plaint says that at the time that the plaintiff applied in November, 1999 for registration of a mark containing the word Pilot and a distinctive devise, again in Class 34, it claimed user since 1945 in respect of the word Pilot. Such application is pending. The plaint suggests that early in December, 2008 the plaintiff came across cigarettes of the defendants manufacture under the mark Pilot Number One. Paragraph 16 of the plaint records as follows:
16. By reason of the aforesaid, the defendant is guilty of infringement of the Plaintiffs registered trade mark and is also guilty of passing off the cigarettes manufactured by the Defendant with the mark PILOT as and for the cigarettes manufactured by the plaintiff. The defendant has wrongfully and with a mala fide intention used and imitated in the packaging of their cigarettes the essential and leading feature PILOT which is the exclusive property of the plaintiff which the plaintiff has adopted as long back as in 1945. The defendant has, further, wrongfully and illegally adopted a colour scheme, get-up, style and manner of writing and layout for its product which is identical and/or deceptively similar to that of the plaintiff. The suit was brought in this Court on the strength of the plaintiffs principal place of business being within jurisdiction. No leave under clause 12 of the Letters Patent has been sought though the claim is both on account of infringement and for alleged passing-off. Despite the fact that it is of little relevance in the context of the present application, it may be mentioned that the plaintiff had obtained an ad-interim order of injunction which was subsequently vacated and the only order now subsisting is for the defendant to keep accounts in respect of the products sold by and under the impugned mark. The defendant asserts that it had filed an application for cancellation of the plaintiffs said registered trade mark in December, 2006
3. It contends that after being served with a copy of such application for cancellation, the plaintiff carried the present action to this Court. The defendant insinuates that the plaintiff was aware that the suit was not maintainable or was otherwise liable to be stayed in view of the defendants previous application for rectification of its registered mark. On the cause of action of passing-off, the defendant says that this Court has no jurisdiction to entertain such claim as no part of the alleged cause of action on such count is alleged in the plaint to have arisen within jurisdiction and no leave under clause 12 of the Letters Patent has been obtained. In effect, the defendant has sought a stay of the suit in so far as it relates to the claim on account of infringement; and, the defendant has sought the rejection of the plaint in so far as it relates to passing-off. It is submitted by the defendant that though a prayer for rejection of the plaint implies that the entirety of the plaint be rejected and not a part thereof, when a suit for both infringement and passing-off is instituted, it is possible for the two causes of action to be divorced. The submission is that it is open to a defendant to seek the arrest of the action in so far as it relates to infringement by virtue of Section 124 of the 1999 Act if there is an application pending before the Appellate Board or Registrar where the validity of the registered mark is in question even though the court can continue with the claim of passing-off if a combined action had been instituted. In support of such argument, the defendant relies on a judgment reported at AIR 1966 Cal 247 (Formica International Ltd v. Caprihans (India) Pvt. Ltd.). The plaintiff has no quarrel with such proposition. The corollary to this argument, as canvassed by the defendant, is that if the present suit in so far as it relates to the infringement action has to be stayed, the plaint relating to the alleged cause of action of passing-off is liable to be rejected or the claim relating to passing-off completely disregarded as no part of such alleged cause of action has, or is claimed to have, arisen within the jurisdiction of this Court. The defendant relies on Section 134(2) of the 1999 Act which is an introduction into the statute and an improvement on the 1958 Act as it allows the plaintiff to bring a suit for infringement in the court of a district judge if, at the time of institution of the suit, the plaintiff or any of the plaintiffs actually and voluntarily reside or carry on business or personally work for gain within the local limits of the jurisdiction of the district court. In support of such ground, the defendant has relied on Order VI Rule 16 of the Code which provides for expunction of averments in pleadings. The defendant has also referred to a judgment reported at 33 PTC 348 (Dabur India Limited v. K.R. Industries) where a Division Bench of the Delhi High Court held that notwithstanding the infringement claim in the rolled-up action being permissible in that court, the claim for passing-off could not have been made there. The cause of action as to passing-off was delinked from the infringement action and permitted to be carried to the appropriate forum. The defendant has relied on the judgment reported at (2008) 10 SCC 595 (Dabur India Ltd. v. K.R. Industries) wherein the Delhi decision was affirmed.
4. On such aspect of the matter, the plaintiff has brought a Bombay judgment reported at 2004 (28) PTC 362 (Hindustan Petroleum Corpn. Ltd v. H.P. Oil Corporation Ltd) for a contrary view. The Bombay decision is based on a consideration of the leave available under clause 14 of the Letters Patent governing that chartered High Court. The plaintiff submits that since, unlike leave under clause 12 of the Letters Patent, leave under clause 14 of the Letters Patent applicable to this Court can be obtained at a subsequent stage of the suit, the Delhi view on splitting the causes of action to retain one and release the other should not be followed. Clause 14 of the Letters Patent applicable to this Court ordains that where a plaintiff has several causes of action against the defendant, such causes of action not being for land and other immovable property, if this Court has the jurisdiction in respect of one of such causes of action, it shall be lawful for this Court to call on the defendant to show cause why the several causes of action should not be joined together in one suit and to make such order for trial as may seem fit. It is no longer open to argument that leave under clause 14 of the Letters Patent can be granted after the institution of the suit since the wording of the clause is such. In view of clause 14 of the Letters Patent it cannot be said that a second cause of action cannot be joined by a plaintiff in an action on the Original Side of this Court even if the second cause of action has no nexus with this Court and only the first does. It then becomes a question of relative convenience of the parties. It is not necessary to finally assess at this stage as to whether the plaintiff should be permitted to pursue the cause of action as to passing-off in this suit, both because the plaintiff has not yet sought leave under clause 14 of the Letters Patent and the defendant has not applied its mind to address the issue of convenience in the present application. Section 134(2) of the 1999 Act is an incorporation of the like provision in the Copyright Act, 1957. The Trade and Merchandise Marks Act, 1958, which was replaced by the 1999 Act, did not have an equivalent provision. The object of such provision appears to be to afford the proprietor of a registered mark the comfort of instituting a civil action for infringement in a court which is convenient to the proprietor without requiring to follow the ordinary rule recognised in the Code of Civil Procedure where, in a suit not involving land or other immovable property, the situs of the defendant or the place of accrual of the cause of action or a part thereof is given primacy in the matter of choice of the civil court.
5. The defendants challenge to the cause of action in passing-off is merely on the ground that if the allegations in support of the relief of passing-off are culled out from the plaint relating to this suit and were seen to be a separate plaint altogether, a suit on the basis of such plaint could not have been entertained by this Court. Even if all the averments in support of the claim for infringement were obliterated from the plaint and the suit in so far as it relates to passing-off assessed, notwithstanding there being no averment in the plaint for the independent cause of action relating to passing-off being carried to this Court, clause 14 of the Letters Patent confers jurisdiction on this Court to consider, at any stage of the suit, as to whether such cause of action could have been joined with the cause of action for infringement. Since it is not in dispute that this Court had the authority to receive the claim for infringement, the parties are left to fight another day on this score.
6. On the other, more important feature of the present petition, it is tempting to merely refer to a binding precedent and conclude the matter. A Single Bench judgment of this Court reported at AIR 1992 Cal 300 (Fosroc International Ltd. v. The Structural Waterproofing Co. Pvt. Ltd.) had this to say when dealing with a prayer for stay of an infringement action on the ground of the pendency of an application before the Registrar challenging the continuance of the mark in the register on the ground of non-use:
2. From the submissions made by Mr. Gautam Chakraborty the learned lawyer appearing on behalf of the plaintiff, it appears that the bar of proceeding of suit under Section 111 of the said Act is in respect of proceedings whereunder the validity of the registration of trade mark has been questioned. The heading of the Section provides stay of proceedings where the validity of registration of the trade mark is questioned. Under those circumstances, referring to the application that had been made by the defendant and pending before the Registrar it would indicate that such application has been made not for any declaration of the validity or invalidity of the registration of the trade mark of the plaintiff inasmuch as the application has been made by invoking the provisions of Section 46(1)(b) on the allegations that the plaintiff up to a date, one month prior to the date of the application had not been in continuous period of 5 years or longer in use of the trade mark. Under those circumstances that up to a date one month before the date of application as continuous period of 5 years or longer has elapsed during which the trade mark was registered and during which there was no bona fide user thereof in relation to the goods by the proprietor thereof for the time being. Under those circumstances it appears that the validity of the registration has not been challenged, but the jurisdiction of the Registrar has been invoked only on the ground that the plaintiffs had not been in continuous use of the said product for a period of five years.
7. The parties have, however, proffered varying arguments on such previous view of this Court on the issue; and both sides submit that the decision should not be followed without assessing the position under the identical provision in the successor statute. The defendant says that the Fosroc International Ltd decision has been rendered per incurium or is otherwise irrelevant as it considered a provision, albeit similar, in the previous statute. The defendant also contends that only the reasons in a previous judgment of a superior or coordinate jurisdiction may be binding and not the decision itself; the defendants underlying suggestion is that the Fosroc International Ltd judgment did not give any reasons in support thereof. The plaintiff urges that the question has to be addressed in greater depth. It is prudent at this stage to notice the mandate in Section 124 of the 1999 Act and the scope of Section 47 thereof: 124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. (1) Where in any suit for infringement of a trade mark
(a) the defendant pleads that registration of the plaintiffs trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendants trade mark, the court trying the suit (hereinafter referred to as the court), shall,-
(i) if any proceedings for rectification of the register in relation to the plaintiffs or defendants trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the finaldisposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffsor defendants trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of threemonths from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may forsufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.
(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.
(4) The final order made in any rectification proceedings referred to in sub-section (1) or sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. (5) The stay of suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attracting any property), during the period of the stay of the suit.
47. Removal from register and imposition of limitations on ground of non-use. (1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods or services by him or, in a case to which the provisions of section 46 apply, by the company concerned or the registered user, as the case may be, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods or services by any proprietor thereof for the time being up to a date three months before the date of the application; or (b) that up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods or services by any proprietor thereof for the time being: Provided that except where the applicant has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of the goods or services in question, or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods or services, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to (i) goods or services of the same description; or (ii) goods or services associated with those goods or services of that description being goods or services, as the case may be, in respect of which the trade mark is registered. (2) Where in relation to any goods or services in respect of which a trade mark is registered (a) the circumstances referred to in clause (b) of sub-section (1) are shown to exist so far as regards non-use of the trade mark in relation to goods to be sold, or otherwise traded in a particular place in India (otherwise than for export from India), or in relation to goods to be exported to a particular market outside India; or in relation to services for use or available for acceptance in a particular place in India or for use in a particular market outside India; and (b) a person has been permitted under section 12 to register an identical or nearly resembling trade mark in respect of those goods, under a registration extending to use in relation to goods to be so sold, or otherwise traded in, or in relation to goods to be so exported, or in relation to services for use or available for acceptance in that place or for use in that country, or the tribunal is of opinion that he might properly be permitted so to register such a trade mark, on application by that person in the prescribed manner to the Appellate Board or to the Registrar, the tribunal may impose on the registration of the first-mentioned trade mark such limitations as it thinks proper for securing that that registration shall cease to extend to such use. (3) An applicant shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non-use of a trade mark which is shown to have been due to special circumstances in the trade, which includes restrictions on the use of the trade mark in India imposed by any law or regulation and not to any intention to abandon or not to use the trade mark in relation to the goods or services to which the application relates.
8. In its endeavour to arrest the infringement part of the action in this Court, the defendant has placed a well-known judgment reported at (1998) 8 SCC 1 (Whirlpool Corpn. v. Registrar of Trade Marks). The defendant quotes paragraph 61 of the report which refers to Section 111 of the 1958 Act that contained the provision equivalent to Section 124 of the 1999 Act. The defendant stresses on the binding mandate of the word shall as noticed by the Supreme Court in observing that if it is brought to the notice of the court (civil court) that any rectification proceedings relating to the plaintiffs or the defendants trade mark are pending either before the Registrar or the High Court (the High Court under the old Act had such jurisdiction which is now vested in the Appellate Board), the proceedings in the suit shall be stayed pending final decision of the High Court or the Registrar. The defendant argues that Section 124 does not take into consideration either the quality of or the ground on which a challenge to a registered mark is made, but is concerned only with the fact that a challenge is pending before the Registrar or the Appellate Board. As to the implication of the word invalid in Section 124 of the 1999 Act, the defendant refers to Blacks Law Dictionary (6th Ed.) where invalid is defined as vain; inadequate to its purpose; not of binding force or legal efficacy; lacking in authority or obligation The point that the defendant makes is that the word invalid in Section 124 is used in the sense of the mark being unworthy of the statutory protection attendant to registration, and not in the sense that the initial registration has been called into question. The parties have referred to several provisions of the 1999 Act including Sections 9 and 11 thereof and, in particular, to Section 57. The plaintiff makes a distinction between a challenge as to the validity of a registration and a challenge accepting the validity but questioning the propriety of its continuance on the register. Section 9 of the Act lays down, as the heading says, the absolute grounds for refusal of registration. These absolute grounds include cases where the marks are devoid of any distinctive character; cases where the marks exclusively consist of indications which may serve in the trade to designate the kind, quality, quantity, purpose, origin or the like; and, cases where the marks consist only of indications which have become customary in the prevailing language or in the practices of the trade. The other prohibitions in the Section cover deceit and confusion; injury to religious or class sentiments; obscenity; grounds under the Emblems and Names (Prevention of Improper Use) Act, 1950; and, the shape of the goods in certain cases. The grounds in Section 11 cover the similarity or identity with earlier trade marks which would lead to confusion. There are other prohibitions envisaged in Sections 13 and 14 of the 1999 Act. The plaintiff asserts that a challenge to the registration of a mark as invalid questions the propriety of the grant or the propriety of acceding to a request for the same grant as on the date of the challenge. The plaintiff has referred to the English Trade Marks Act, 1994 and a judgment reported at 66 RPC 84 (Lever Brothers, Port Sunlight, Ld. v. Sunniwite Products, Ld.) to submit that for a challenge that a registration of a mark is invalid, it has to relate back to the grounds which would entitle the Registrar to decline registration. The defendant joins issue on such score. It says that the legal interpretation cannot be such that the conduct of the registered proprietor, subsequent to the registration, would entitle a challenger to assail the registration as invalid in some cases while the conduct of the registered proprietor, subsequent to the grant, would be considered irrelevant in other cases. The defendant submits that no involved interpretation of the word invalid is necessary in the construction of Section 124 as all challenges assailing a registered mark before the Appellate Board or the Registrar, without any distinction as to the grounds of challenge, would necessitate the suit for infringement brought by the registered proprietor being stayed by the civil court. The defendant has relied on a judgment reported at (1972) 1 WLR 729 (General Electric Co. (of U.S.A.) v. General Electric Co. Ltd.) in support of such contention. The plaintiff has attempted to use the General Electric decision to turn the defendants argument on its head. The plaintiff has also placed passages from Kerlys Law of Trade Marks and Trade Names (14th Ed.) in support of its argument. In Lever Brothers, the plaintiffs sued for infringement and the defendants counter-claimed to rectify the register by striking out the registration in respect of goods other than soap on the ground of non-user since the use of the plaintiffs mark, though substantial, was confined only to soap. The court held that the plaintiffs mark had been infringed and that the specification of goods ought not to be amended to exclude detergents or substances for laundry use. After the judgment was delivered, counsel for the plaintiff sought a certificate of validity relating to the mark under a provision similar to Section 141 of the 1999 Act in this country. Such certificate was declined and the plaintiff in the present case insists that the reason for not acceding to the request for issuing the certificate of validity was that a challenge on the ground of non-user did not impinge on the validity of the registration. The following passage from the judgment is the only one of any relevance in the present context: I do not think that is appropriate, is it, because the trade mark is perfectly valid, and always has been perfectly valid. All that has happened is it is subject to attack now by reason of non-user in relation to certain of the goods. I think really Sec. 47 is not appropriate. In General Electric the tussle was between two companies with almost identical names that were giants in a similar line of business. The English company brought proceedings for rectification of the register by expunging the American companys device mark. The ground canvassed was that by reason of supervening circumstances the use of the impugned mark on the date of the challenge was likely to deceive or cause confusion and was, accordingly, an entry wrongly remaining on the register within the meaning of that expression in the English Act of 1938 that governed the contest. The House of Lords concurred with the challenger that if there was likelihood of a mark causing confusion by reason of events occurring between the date of registration and the date of the application for expunging it, it would be a challenge covered by the expression entry wrongly remaining on the register in Section 32 of the English statute of 1938. But it added the rider that for a registered mark to be expunged from the register on the ground that it was an entry wrongly remaining on the register, there had to be blameworthy conduct attributable to the registered proprietor. So as not to leave the story unfinished by only extracting the dry legal principle therefrom, the English companys challenge to the continuation of the American companys mark on the register was thrown out despite it being acknowledged that the American companys mark would be incapable of registration as on the date of the challenge since the proliferation of the sale of the American companys product, and the likelihood of confusion caused thereby, was not a result of any disagreeable act on the part of the proprietor of the impugned registered mark. It is in such vein that the plaintiff relies on paragraphs 10-034 and 10-038 from Kerly which postulate that if or to the extent that a trade mark is declared invalid, the registration is deemed never to have been made; but the effect of revocation on the ground of non-user is that the life of the registration comes to an end. In the defendants attempt to distinguish the dictum in General Electric, a case that the defendant had carried to court in the first place, it urges that the provisions of the English Act are not akin to the governing statute in this country. The defendant insists that in Section 46 of the English Act providing for revocation of registration as distinct from Section 47 thereof setting out grounds for invalidity of registration, there is a clear demarcation between revocation and invalidity. This, the defendant contends, is not apparent in the context of the 1999 Act in this country. The defendant refers to the comparable not identical provisions in Section 47 and Section 57 of the 1999 Act where the former sets down circumstances for seeking removal of a mark from the register and imposition of limitations on the ground of non-use; and the latter provides for the power to cancel or vary registration and to rectify the register. It is at this stage that the two primary limbs of Section 57 need to be seen:
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)
(4)
(5)
Sub-section (1) of Section 57 is restricted to the contravention of, or failure to observe, a condition entered on the register in relation to a mark. Though such sub-section is not the foundation of the defendants challenge to the continuation of the plaintiffs mark on the register, it is relevant in the matter of interpretation of the word invalid in Section 124. Sub-section (1) of Section 57 touches upon the conduct of the proprietor of the registered mark and does not question the grant at its inception. But the issue in a challenge under such provision will go to the root of the registration since the right of the registered proprietor in using the mark cannot be divorced from the conditions imposed at the time of the grant; the grant and the conditions have to be seen as one. Section 57(2) of the 1999 Act envisages a challenge on the ground of absence or omission from the register of any entry; the making of any entry in the register without sufficient cause; the continued presence of any entry in the register; and, any error or defect in any entry in the register. The rest of the subsection is procedural in both as to who may challenge a registered mark and the manner of making the challenge. The expression, entry wrongly remaining on the register, is the same as in the English Act. There are two approaches to the construction of such expression and the resultant implication thereof in the understanding of the word invalid or, better, of the expression registration of the plaintiffs trade mark is invalid in Section 124 of the 1999 Act. It is possible that a substantive right is conferred by a provision but such provision does not lay down the procedure for the enforcement of the substantive right. If such is the case, the substantive right will be in a particular provision or even a particular statute and a right to apply in pursuance of such substantive right in another provision or in another enactment. There are many examples. A particular provision in one statute may stipulate the mandatory length of a notice for convening a meeting. That provision or even that statute may not deal with a right to bring a challenge on the ground of an act in contravention of such mandatory provision. In other cases, the substantive right and the manner of assertion of the right may be found in the same provision or in different provisions in the same statute. When both the substantive right and the manner for enforcement thereof is found in the same provision, it would defy reason to take recourse to a general provision for enforcing a specific right conferred by another provision when such other provision also lays down the procedure for assertion of the right. In the context of Sections 47 and 57 of the 1999 Act, since Section 47 provides for removal of a mark from the register on the ground of non-user and also lays down the manner for carrying the challenge, the ground of non-user simpliciter cannot be brought within the ambit of the expression entry wrongly remaining on the register appearing in Section 57(2) of the Act. A challenge under Section 57(2) has to be fashioned to question the validity of a registered mark on the ground that it was invalid as on the date of the registration or on the basis of an argument that such mark would be incapable of registration as on the date of the challenge or on the count that there is some error or defect in the register relating to the mark or on the ground that there is any absence or omission of any entry.
9. The law as to registration permits both a user and a proposed user to apply for the registration of a mark. That would imply that it is not mandatory that a mark be previously used for an application for registration thereof being received. Thus, it cannot be said that if a registered mark has not been used for the length of time that is stipulated in either limb of Section 47(1) of the 1999 Act, the application for grant would have to be rejected if such application were made as on the date of the challenge. It is also of some significance that both in its heading and the sense that the provision conveys, Section 47 provides for removal of a mark from the register or the impositions of limitations in its use. Ordinarily, the word removal in the context such as these as amplified by the expression taken off the register presupposes that the mark was validly entered in the register or otherwise remains valid as on the date of the challenge, but for the statutory ground provided for the challenge. In contrast, Section 57 recognises the power to cancel or vary the registration and to rectify the register. The expression cancelling or varying the registration appears in Section 57(1) and the expression expunging or varying the entry appears in Section 57(2) of the Act. The ground that may be canvassed under Section 57(1) of the Act is for contravention of, or the failure to observe, a condition entered in the register in relation to the use of the mark. This envisages either a case where the registered proprietor acts in complete derogation of any condition attached to the mark or acts in such manner that tends to breach the spirit of the condition attached to the use of the mark. There is a discretion that is available to the tribunal receiving the complaint to consider the nature of the breach and the quality of the conduct of the registered proprietor in assessing whether the registration should be cancelled or varied. It is also possible that the spirit of any condition is breached without the letter of the condition being contravened; and this would entitle the registration to be varied in the sense that the condition is clarified or additional conditions are imposed. Section 57(2), on the other hand, refers to four classes of challenge and the power to expunge or vary the relevant entry. In each case it is the validity of the mark or the sanctity of the entry that is questioned. Though the judgment in General Electric is instructive in the interpretation of the expression entry wrongly remaining on the register, as to whether such entry should be expunged or varied depends on an assessment of whether there is blameworthy conduct on the part of the registered proprietor. But that is in considering what the result ought to be and not in assessing whether the entry is wrongly on the register since the only consideration for such purpose is as to whether the entry could have climbed on to the register as on the date of the challenge. The second approach to assessing the impact of the word invalid in Section 124 of the 1999 Act is to import the understanding thereof from the interpretation of the equivalent provision in the contemporary English statute. If the genesis of a statute is in the body of common law governing such aspect prior to the enactment and if any provision undergoes subsequent statutory refinement, the understanding of the principle embodied therein in the Indian context may be based on the effect of the statutory refinement of the equivalent provision in England. The provisions as to cancellation or rectification and those as to removal or revocation of a mark in England are distinct. There are indications on the same lines in the 1999 statute but not with the degree of clarity that is apparent in the English statute. But if it is the general rule that a specific provision available for a purpose has to be taken recourse to rather than a more general provision, a challenge on the ground of non-user has per force to be confined to Section 47 of the 1999 Act and not carried under Section 57(2) of the Act. The result is that the challenge on the ground of non-user is for removal of the mark. The word removal in the context implies cessation, whereas the words rectification and cancellation in the context of Section 57 of the Act imply obliteration. In the one case the propriety of the mark getting on the register is not in question; in the other it is. The word invalid in Section 124 of the 1999 Act has to be understood in the second sense. The defendants challenge to arrest the continuance of the claim for infringement in this Court fails. As observed above, the attack on the cause of action relating to passing-off does not have to be decided at this stage. GA No. 2031 of 2009 is dismissed. There will be no order as to costs. Urgent certified photocopies of this judgment, if applied for, be supplied to the parties subject to compliance with all requisite formalities.