# l S.C.R. 808 JAGATJIT INDUSTRIES LIMITED v. THE INTELLECTUAL PROPERTY APPELLACE BOARD & ORS

- **Citation:** [2016] 1 S.C.R. 808
- **Court:** Supreme Court of India
- **Decided:** 2016-01-20
- **Case number:** Civil Appeal No. 430 of2016
- **Bench:** Kurian Joseph, R. F. Nariman
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/l-s-c-r-808-jagatjit-industries-limited-v-the-intellectual-property-appellace-31115
- **Pages:** 29

## Headnote

Trade and Merchandise Marks Act, 1999: s.125 -
.. pplicability of - Respondent no.4 engaged in manufacture and
marketing of alcoholic beverage and claiming to have adopted the
trade mark 'Blenders Pride' through its /icencee 'Seagram' -
Registration of said trade mark was granted in 50 countries -
Application for registration in India was pending -Appellant applied
for registration of identical trade mark 'Blenders Pride' -
Respondent no.4 filed notice of opposition - However, respondent
no.4 found that registration certificate was issued to appellant -
Writ petition by respondent no.4 - Meanwhile show cause notice
issued by Registrar proposing to rectify the register uls.57(4) - Writ
petition disposed of with direction to Registrar to decide the issues
arising out of show cause notice - Meanwhile suit for infringement
filed by appellant against licencee of respondent no.4 - While
Registrar proposed to rectify the register uls.57(4) by removing the
mark - Aggrieved appellant filed writ petition and High Court
directed Registrar to dispose of the proceedings before it - Registrar
recalled the show cause notice issued stating that he has no
;urisdiction to proceed by virtue of s.12 5 and proceedings could
only continue before the Appellate Board - Appellate Board held
that when the show cause notice was issued, /icencee had not yet
filed its counter statement as it was not even served with the suit
papers and that since suit had not been filed against respondent
no.4 but had only been filed against /icencee, s.125 would have no
application and therefore Registrar order would have to be set aside
- Registrar directed to expeditiously decide the opposition
proceedings -
Appellant filed writ petition - High Court held that
no injustice was done by Appellate Board in directing de novo
hearing of the case - Held: s.124(1) refers only to the plaintiff
and defendant of a suit for infringement,
and
s. l 24(1)(ii)
808
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
809
APPELLATE BOARD
specifically refers to the "party concerned"" who will apply to
the Appellate Board for rectification of the register - Similarly, s.125
also refers only to the "plaintiff' and the "defendant"" in a suit
for infringement of a registered trademark - It is obvious, therefore,
A
that an application for rectification of the register can either be
made by the defendant who raises a plea in the suit that the
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registration of the plaintiff's trademark is invalid, or by the plaintiff
who questions the validity of the registration of the defendant's
trademark in a situation where the defendant raises a defence u/
s.30(2)(e) - It is clear therefore that the application for rectification
of the register referred to-ins.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 licencee, it is clear that
the Section would have no application - Respondent no. 4 has not
been made a party defendant to the said suit - 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. s.125(1) would have no
application.
· ss.21(2), 23(1) - Opposition to registration -Application for
registration of impugned trade mark published in journal on 7'1'
October 2003 - Respondent no.4 seeking extension of one month's
time for filing its notice of opposition on 6.1.2004 ~On 19.1.2004,
respondent no.4 filed its notice of opposition - On 16.2.2004, Trade
Mark Registry issued a notice to 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 trade mark would
be deemed to be abandoned - On

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[2016] l S.C.R. 808
JAGATJIT INDUSTRIES LIMITED
v.
THE INTELLECTUAL PROPERTY APPELLACE BOARD &
ORS.
(Civil Appeal No. 430 of2016)
JANUARY 20, 2016.
(KURIAN JOSEPH AND R. F. NARIMAN, JJ.)
Trade and Merchandise Marks Act, 1999: s.125 -
.. pplicability of - Respondent no.4 engaged in manufacture and
marketing of alcoholic beverage and claiming to have adopted the
trade mark 'Blenders Pride' through its /icencee 'Seagram' -
Registration of said trade mark was granted in 50 countries -
Application for registration in India was pending -Appellant applied
for registration of identical trade mark 'Blenders Pride' -
Respondent no.4 filed notice of opposition - However, respondent
no.4 found that registration certificate was issued to appellant -
Writ petition by respondent no.4 - Meanwhile show cause notice
issued by Registrar proposing to rectify the register uls.57(4) - Writ
petition disposed of with direction to Registrar to decide the issues
arising out of show cause notice - Meanwhile suit for infringement
filed by appellant against licencee of respondent no.4 - While
Registrar proposed to rectify the register uls.57(4) by removing the
mark - Aggrieved appellant filed writ petition and High Court
directed Registrar to dispose of the proceedings before it - Registrar
recalled the show cause notice issued stating that he has no
;urisdiction to proceed by virtue of s.12 5 and proceedings could
only continue before the Appellate Board - Appellate Board held
that when the show cause notice was issued, /icencee had not yet
filed its counter statement as it was not even served with the suit
papers and that since suit had not been filed against respondent
no.4 but had only been filed against /icencee, s.125 would have no
application and therefore Registrar order would have to be set aside
- Registrar directed to expeditiously decide the opposition
proceedings -
Appellant filed writ petition - High Court held that
no injustice was done by Appellate Board in directing de novo
hearing of the case - Held: s.124(1) refers only to the plaintiff
and defendant of a suit for infringement,
and
s. l 24(1)(ii)
808
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
809
APPELLATE BOARD
specifically refers to the "party concerned"" who will apply to
the Appellate Board for rectification of the register - Similarly, s.125
also refers only to the "plaintiff' and the "defendant"" in a suit
for infringement of a registered trademark - It is obvious, therefore,
A
that an application for rectification of the register can either be
made by the defendant who raises a plea in the suit that the
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registration of the plaintiff's trademark is invalid, or by the plaintiff
who questions the validity of the registration of the defendant's
trademark in a situation where the defendant raises a defence u/
s.30(2)(e) - It is clear therefore that the application for rectification
of the register referred to-ins.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 licencee, it is clear that
the Section would have no application - Respondent no. 4 has not
been made a party defendant to the said suit - 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. s.125(1) would have no
application.
· ss.21(2), 23(1) - Opposition to registration -Application for
registration of impugned trade mark published in journal on 7'1'
October 2003 - Respondent no.4 seeking extension of one month's
time for filing its notice of opposition on 6.1.2004 ~On 19.1.2004,
respondent no.4 filed its notice of opposition - On 16.2.2004, Trade
Mark Registry issued a notice to 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 trade mark would
be deemed to be abandoned - On 20. 1 .2005. respondent no. 4 came
to know that trade mark registration certificate had been issued to
appellant on 13.1.2004 itself-Held: Time was extended by Registrar
as evidenced by letter dated 16.2.2004 - Therefore, any registration
certificate granted prior to 30 days extended period from 6.1.2004
would be violative of s.23(1) - Therefore, registration certificate
having been issued on 13.1.2004 would be violative of s.23(l)(a)
and register would have to be rectified by deleting the said trademark
therefrom.
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s.57(4) - Territorial jurisdiction -Show cause notice uls.57(4)
issued by Registrar in Bombay - Application for registration of trade
mark made in Delhi - Plea that the show cause notice was without
iurisdiction - Held: Under s.57(4) of the Act, the suo motu
power can only be exercised by the Registrar himself. being the
"Tribunal" referred to in sub-sections (1) and (2) of the said Section
- Therefore, the power to be exercised u!s.57(4) can only be
exercised by the Registrar of Trade Marks himself - There is only
one such Registrar and his registered office is in Bombay - The
Assistant Registrars in the other parts of the country including Delhi
all act under the superintendence and directions of the Registrar,
Bombay, as is clear from s. 3 (2) of the Act - Therefore, plea that
show cause notice issued by Registrar in Bombay was without
iurisdiction was without substance.
Dismissing the appeal, the Court
HELD: 1. Respondent No.4 sought an extension of one
month's time for filing its notice of opposition within the three
month period granted to it under Section 21(2) and did this in
the prescribed statutory Form TM-44 stating that the reason
for extension would be that they have to seek legal advice before
filing the notice of opposition. The notice of opposition dated
19.1.2004 was made within the extended period of one month,
and was expressly taken on record by the Registrar, as is
reflected in the Registrar's letter dated 16.2.2004. A perusal of
this letter shows that the notice of opposition was taken on
record. This could not have been done nnless 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. Thongh 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. It is thus
clear that time has been extended by the Registrar, as is
evidenced by the letter dated 16.2.2004. Therefore, 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 mattet', 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
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
APPELLATE BOARD
of Section 23(1)(a), and the register would have to be rectified
by deleting the said trademark therefrom. [Paras 15, 16, 18] [825C-D; 826-E-F; 828-B-FJ
2. The plea was raised that the show cause notice dated
16.2.2005 under Section 57(4) was without jurisdiction as it was
issued by the Registrar in Bombay and not by the authorities in
Delhi and as the application for registration of trademark was
made in Delhi and all the subsequent proceedings took place iu
Delhi, this show cause notice should also have been issued only
in Delhi. Under Section 57(4) of the Act, the suo motu power
can only be exercised by the Registrar himself, being the
"Tribunal" referred to in sub-sections (1) and (2) of the said
Section. It is clear therefore that the power to be exercised
under Section 57(4) can only be exercised by the Registrar of
Trade Marks himself. There is only one such Registrar - and
his registered office is in Bombay. The Assistant Registrars in
the other parts of the country including Delhi all act under the
superintendence and directions of the Registrar, Bombay, as is
clear from Section 3(2) of the Act. This point is, therefore,
without substance. [Para 19, 20, 21] [828-G-H; 829-C-D]
3.1. Section 124 of the Act inter alia states that where, in
a suit for infringement of a trademark, the defendant pleads that
the registration of the plaintiff's trademark is invalid, then the
court trying the suit shall stay the snit pending final disposal of
rectification proceedings either before the Registrar or the
Appellate Board, as the case may he. The scheme under Section
124 is of great importance in understanding the scope of Section
125. It is clear that where proceedings for rectification of the
register are pending before the filing of the suit for infringement
· in which the defendant pleads that the registration of the
plaintiff's trademark is invalid, snch proceedings may be made
either before the Registrar or before the Appellate Board, in
view of Section 57(1) and (2) of the Act. But, if rectification
proceedings are to be instituted after the filing of such suit for
infringement in which the defendant takes the plea that
registration of the plaintiff's trademark is invalid, then rectification
proceedings can only be taken before the Appellate Board and
not before the Registrar. [Paras 22 and 23] [829-E-G]
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3.2. Section 124(1) refers only to the plaintiff and defendant
of a suit for infringement, and Section 124(1)(ii) specifically refers
to the "party concerned" who will apply to the Appellate Board
for rectification of the register. Similarly, Section 125 also refers
only to the "plaintifr' and the "defendant" in a suit for infringement
of a registered trademark. It is obvious, therefore, that an
application for rectification of the register can either be made by
the defendant who raises a plea in the suit that the registration of
the plaintiff's trademark is invalid, or by the plaintiff who questions
the validity of the registration of the defendant's trademark in a
situation where the defendant raises a defence under Section
30(2)(e). It is clear therefore 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 respondent no.4, it is clear that the Section would have no
application. The submission that Seagram is only the licensee of
respondent no.4 and that the authorized signatory of both parties
are the same holds no water for the reason that respondent no.4
is not said to violate the registered trademark of the appellant.
Seagram again happens to be two separate Companies. The plaint
allegations are that both the said companies were 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 were licensees of
the said trademark of the respondent no.4. In fact, in paragraph
10 of the plaint, there was a specific avermeut by the plaintiffs
that upon necessary inquiries being made, the plaintiffs have learnt
that the defendants have not even applied for registration of the
trademark 'BLENDERS PRIDE' in their favour. The suit is both
a suit for infringement as well as passing off, and that respondent
no.4 has not been made a party defendant to the said suit. 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 ebe. 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. Secondly, the Division Bench of the
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
APPELLATE BOARD
High Court was 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.
[Paras 24, 25) (829-H; 830-A-H; 831-A-B]
4. Section 47( 4) was referred to in Section 107 for the
reason that the said sub-section refers to applications made to
the High Court or to the Registrar for cancellation of the
registration of a trademark as a defensive trademark. The other
sub-sections of Section 47 do not refer to any such application
but only explain what is meant by defensive trademarks, and
it is for that reason that Section 107 refers only to Section 47(4)
and not the entirety of Section 47 •. However, in Section 125(1)
of the Trade Marks Act, 1999, the width .of the expression
"Section 57" is cut down by the expression "and an application
for rectification of the register". Such rectification applications
are referable only to Sections 57(1) and (2) and not to the suo
motu power of the Registrar under Section 57(4). Therefore,
apart from the substantive reason given above of maintaining
the purity of the register, even on a literal construction of Section
125(1), it is clear that Section 57 (4) would have to be excluded.
[Para 26] [832-G-H; 833-A-B)
'
Whirlpool Corporation v. Registrar of Trade Marks,
Mumbai and others 1998 (2) Suppl. SCR 359 : (1998)
8 SCC 1; M Mazharuddin Ali v. Govt. of A.P., (2000)
10 SCC 383 - Held inapplicable
Hardie Trading Ltd. and another v. Addisons Paint &
Chemicals Ltd. 2003 (3) Suppl. SCR 686 : (2003) 11
SCC 92; Kai/ash v. Nanhku 2005 (3) SCR 289 : (2005)
4 sec 480 - relied on.
Mis Allied Blenders and Distillers Private Limited,
Mumbai v. Intellectual Property Appellate Board,
Chennai & Ors. AIR 2009 Madras 196 - referred to.
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Case Law Reference
1998 (2) Suppl. SCR 359
held inapplicable
Para 10
2003 (3) Suppl. SCR 686
relied on.
Para 11
AIR 2009 Madras 196
referred to.
Para 16
B
(2000) 10 sec 383
held inapplicable
Para 17
2005 (~) SCR 289
relied on.
Para 17
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 430 of
2016
From the Judgment and Order dated 27 .0 I.2009 of the High Court
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of Delhi in Letters Patent Appeal No. 245 of2008.
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Prathiba M. Singh, Kamal Budhiraja, Vaibhav M., Aman Gupta,
Nikhita, Devyanshu,Abhinav Mukerji for the appellant.
Sudhir Chandra, A. K. Sanghi, Heman! Singh, Mamta Jha, Manish
K. Mishra, Waseem ShuaibAhmed, SuruchiiAggarwal, Nikhil Majithia,
S. S. Rawat, Rashmi Malhotra, D. S. Mabra for the Respondents.
The Judgment of the Court was delivered by
R. F. NARIMAN, J.
Leave granted.
1. The respondent No.4 is a corporation incorporated under the
laws of the United States of America. It is an ultimate subsidiary of
Pernord Ricard S.A., which is engaged in the business of manufacturing
. and marketing a variety of alcoholic beverages worldwide. It claims
that it has coined and adopted the trademark 'BLENDERS PRIDE'
through its licensee M/s Seagram Company Limited in the year 1973.
According to respondent No.4, on account of extensive sales and
marketing worldwide, the trademark 'BLENDERS PRIDE' has come
to acquire a tremendous reputation in various countries including India.
In order to secure its proprietary rights in the said trademark, respondent
No.4 had applied for and was granted registration of the said trademark
in more than 50 countries and has been 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.
The appellant's application for registration of an identical trademark
'BLENDERS PRIDE' was advertised in the Trademarks Journal Mega1. This journal was published on 7'" October, 2003. Respondent No.4
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
815
APPELLATE BOARD [R. F. NARIMAN, J.]
had filed Form TM-44 seeking extension of one month's time for filing
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its notice of opposition against the appellant's application on 6.1.2004,
i.e. within the statutoty period of three months. On 19.1.2004, respondent
No.4 had filed its notice of opposition before the Trade Marks Registry,
New Delhi and the same was numbered as DEL-160325. On 16.2.2004,
the Trade Marks Registry issued a notice to the appellant inviting its
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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, when the matter stood
thus, respondent No.4 came to know on 20.1.2005 that a trademark
registration certificate·bearing No.618414 had been issued to the appellant
on 13. 1.2004 itself. Immediately, however, through its attorneys,
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respondent No.4 informed the Trade Marks Registry about the pending
opposition proceedings which were yet to be disposed of.
2. Since no communication was received from the Registry,
respondent No.4 filed a writ petition before the Delhi High Court being
Writ Petition Nos. 2712 and 2713 of2005. Meanwhile, on 16.2.2005, a
show cause notice was issued by the Registrar under Section 57( 4) of
the Trade Marks Act, 1999 to the appellant, in which it was said that the
registration certificate had been issued wrongly, and since the said
trademark was wrongly on the register of trademarks, it was proposed
to rectify the register under Section 57( 4) as per representation made by
the attorneys of respondent No.4.
3. Meanwhile, the writ petition filed by respondent No.4 to remove
the trademark from the register came up for hearing and was disposed
of by an order dated 2.3 .2005 with the observation that the Registrar
shall proceed to decide the issues arising out of the show cause notice
as expeditiously as possible and in accordance with law.
4. Thereafter, on 14.3.2005, a detailed reply was filed by the
appellant herein before the Registrar, in which it took the plea that the
show cause notice itself was not maintainable as it was issued by the
Registrar of Bombay and not New Delhi. Further, it was stated that the
opposition filed by respondent No.4 on I 9.1.2004 was clearly beyond
time as it was not filed within three months from the relevant date, which
is 6.1.2004, and it was thereafter pleaded that the show cause notice be
withdrawn.
5. Meanwhile, on 14.1.2005, a suit for infringement ofits trademark
had been filed by the appellant herein in the District Court of Jalandhar
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inter alia against the licensee of respondent No.4, namely, Seagram
Distilleries Private Limited. On 21.4.2005, Seagram India Private Limited
filed a written statement in which it took up a plea that the plaintiff's
registration is under challenge and since rectification proceedings are
sub-judice before the Registrar of Trademarks, the suit is liable to be
stayed till final disposal of the said rectification proceedings. It further
went on to plead that the registration obtained by the plaintiff (i.e. the
appellant herein) is void ab initio and confers no right on the plaintiff
and, therefore, questioned the very maintainability of the suit for
infringement.
6. While matters stood thus, after considering the reply of the
appellant, the Registrar, on 26.5.2005, referred to the show cause notice
dated 16.2.2005 and the reply of the appellant thereof and stated that
the impugned mark was registered by inadvertence/error and that it was
proposed to rectify the register under Section 57( 4) of the Trade Marks
Act, 1999 by removing the mark referred to. By the self same letter the
appellant was directed to return the registration certificate wrongly issued
forthwith, and further directed notto use the said certificate of registration
in respect of the above-mentioned trademark in any manner for any·
purpose and in any proceedings.
7. A Writ Petition bearing Nos. I 0080-81 of2005 was filed by the
appellant against the aforesaid order, and an interim order of stay was
obtained against the said order on 31.5.2005. Ultimately, on 13.9.2005,
the Delhi High Court directed the Registrar to dispose of the proceedings
before it on or before 16.11.2005.
8. The Registrar, by his order dated 14.11.2005, 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.
9. In an appeal filed before the Appellate Board, the Appellate
Board, by its judgment dated 6.10.2006, reversed the Registrar's order,
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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. It is
only after such acceptance that a show cause notice had been issued to
the appellant herein calling upon them to file their counter-statement.
This being so, the registration of the trademark on 13.1.2004, that is
H . even before the expiry of the extended one month, would obviously be
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
817 ,-
APPELLATE BOARD [R. F. NARIMAN, J.]
contrary to Section 23 of the Act and would therefore be invalid in law.
Significantly, the Appellate Board held that when the show cause notice
was issued on 16.2.2005, Seagram had not yet filed its counter-statement
as it was not even served with the suit papers, and that, since the suit
had not been filed against respondent no.4, but had only been filed against
Seagram, Section 125 would have no application and that therefore the
Registrar's order dated 14.11.2005 would therefore have to be set aside.
The Registrar was, therefore, directed to expeditiously decide the
opposition proceedings under Section 21 of the Act.
I 0. Againstthe order passed by the Appellate Board, the appellant
herein filed a Writ Petition in the Delhi High Court being Writ Petition
(Civil) No.16242/2006. The learned Single Judge, by hisjudgmentdated
9.5.2008, set aside the aforesaid Appellate Board order and sustained
the order dated 14.11.2004 passed by the Registrar. According to the
learned Single Judge, Section 125 of the Act would apply and would
therefore bar proceedings before the Registrar. The learned Single Judge,
therefore, following the judgment of this Court in Whirlpool Corporation
v. Registrar of Trade Marks, Mumbai and others, (1998) 8 SCC I,
held that the Section would apply as the defendant in the infringement
suit had filed a written statement questioning the validity of the trademark,
and that this being so, the non obstante clause in Section 25(1) would
bar proceedings under Section 57 of the Act before the Registrar.
11. In an appeal before the Division Bench, the Division Bench
set aside the learned Single Judge, holding 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, as has been held in Hardie Trading Ltd. and another v.
Addlsons Paint & Chemicals Ltd., (2003) 11 SCC 92. It was further
held that the power of the Registrar to correct his OVl'.n mistakes under
Section 57(4) of the Act is wholly independent of the right ofa party to
make or riot to make an application for rectification of the register, ·
referred to in Section 125. If Section 125 were to be applied, the effect
would be that an error committed by the Registrar may remain on the
register if the defendant, after raising a plea of invalidity in a suit for
infringement, chooses not to proceed with the filing of a rectification
before the Appellate Board. In such event, the purity of the register
would not be maintained, a result which could not have been envisaged
if Section 125 is to be correctly interpreted. The Division Bench finally
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held that the grant ofregistration on 13.1.2004 was itself invalid being
contrary to Section 23( I) of the Act. Ultimately, the appeal was allowed
in the following terms:
"Section 23( I) of the Act clearly mandates that only after the
statutory period for filling opposition has expired, a registration
certificate could be granted. The Appellant had filed an application
for extension of time in filing opposition to the registration of trade
mark of the 4th Respondent and the notice of opposition was
taken on record by the Registrar. The above fact is evident from
the show cause dated 16th February, 2004 and the interim order
of 26th May, 2005. In the absence of an order rejecting such
application, it cannot be held that time for filing opposition had
expired. The entire issue was considered by the Appellate Board
which is a tribunal as per Section 2(ze) of the Act. The tribunal
had ultimately come to the conclusion that the registration was in
contravention of the provisions of the Act and directed the Registrar
to decide the application of the 4th Respondent on merits.
After taking into consideration the above facts and contentions of
the parties we hold that no injustice has been done by the Appel late
Board in directing de novo hearing of the case. Consequently the
appeal is allowed and the order of the learned single Judge is set
aside. No order as to costs." [at para 22 and 23]
12. Smt. Prathiba Singh, learned senior advocate appearing on
behalf of the appellant herein, essentially argued that though the application
for extension of time by one month had been filed before the period of
three months ended, yet as the Registrar had not passed any order
condoning the delay, it is obvious that the period for filing the opposition
had ended on 6.1.2004.
She also argued that Section 21 of the Act
speaks of the Registrar "allowing" the application made to him in the
prescribed manner, and that therefore the expression "allows" in Section
21 (I) would make it clear that there has to be an order in writing by the
Registrar, and no implied order granting extension is therefore
contemplated by the Section. Therefore, the registration certificate issued
on 13 .1.2004 was in accordance with law. Further, as the show cause
notice dated 16.2.2005 had been issued from Bombay, it was clearly
withoutjurisdiction. Therefore, in view ofa written statement having
been filed in the infringement suit filed by the appellant's licensee taking
up the plea of invalidity ofregistration, Section 125 applied on all fours,
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APPELLATE BOARD [R. F. NARIMAN, J.]
and the judgment of this Court in Whirlpool Corporation (supra) would
apply to render rectification proceedings before the Registrar non est.
She also argued that the fact that Austin Nichols is not a defendant in
the infringement suit would also make no difference inasmuch as its
licensee Seagram is a defendant and has taken a plea as to invalidity of
the registered trademark. Seagram is merely enforcing Austin Nichols'
rights and the authorized signatory of both parties happens to be the
same. Thus, it would make no difference that the defendant in the
infringement suit is not Austin Nichols. She also argued that the suo
motu powers of the Registrar under Section 57(4) of the Act are taken
away by Section 125(1) of the Act inasmuch as the non obstante clause
covers the whole of Section 57. Where the legislature intends to specify
only a sub-section, it has made it clear in express language to that effect.
For that purpose, she referred to Section I 07( 1) of the Trade and
Merchandise Marks Act, 1958 which refers to the whole of Section 46,
the whole of Section 56, and only Section 4 7 sub-section ( 4 ). She has
also argued that in point of fact, though styled as a proceeding under
Section 57(4), being at the behest of Austin Nichols, in reality it was not
such a proceeding. She referred copiously to the Registrar's order dated
14.11.2005 as well as to the judgment of the Single Judge dated 9.5.2008,
and said that since the show cause notice itself was without jurisdiction,
these orders were correct and ought to be reinstated.
13. Shri Sudhir Chandra, learned senior counsel appearing on
behalf of respondent No.4, supported the judgment of the Division Bench
of the Delhi High Court. He argued before us that when the Registrar
issued the letter dated 16.2.2004 under Section 21(2) of the Act and
called for a counter-statement under the said Section from the appellant
herein to the notice of opposition filed by respondent No.4, it was clear
that the extension of time applied for within time had been allowed. He
referred in particular to Section 131 of the Act and stated that the Registrar
should be satisfied that there is sufficient cause for extending time and if
he is so satisfied, he will not be required to hear the parties before
disposing of an application for extension of time. Further, no appeal
shall lie from such an order. He also argued that as respondent No.4
was not a party to the suit for infringement, Section 125 would have no
application to the facts of this case. He further argued that suo motu
powers of the Registrar under Section 57(4) of the Act were not taken
away by Section 125 of the Act, stressing that Section 125 of the Act
concerned itself with "an application for rectification of the register."
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He referred us to the definition of"Tribunal" under Section 2(ze) and
stated that where a proceeding is pending before the Registrar, it would
necessarilv be a "Tribunal" for all purposes under the Act. He argued
that the judgment in Hardie's case (supra) was correctly referred to
and relied upon by the Delhi High Court and that the purity of the register
would have to be maintained by the Registrar as an independent duty
cast upon him under the Act. According to him, the judgment in
Whirlpool's case actually supported his client's case, and. in any case,
on the facts therein, it was clear that Section 125 would have applied,
unlike in the facts of the present case.
14. We have heard learned counsel for the parties. Before
embarking upon a discussion on the merits of the case, it is necessary to
set out the various statutory provisions contained in the Trade Marks
Act, 1999:-
"Section 2 -Definitions and interpretation
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(1) In this Act, unless the context otherwise requires,-
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(ze) "tribunal" means the Registrar or, as the case may be, the
Appellate Board, before which the proceeding concerned is
pending;
Section 21 -Opposition to registration
(I) Any person may, within three months from the date of the
advertisement or re-advertisement of an application for registration
or within such further period, not exceeding one month in the
aggregate, as the Registrar, on application made to him in the
prescribed manner and on payment of the prescribed fee, allows,
give notice in writing in the prescribed manner to the Registrar, of
opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant
for registration and, within two months from the receipt by the
applicant of such copy of the notice of opposition, the applicant
shall send to the Registrar in the prescribed manner a counterstatement of the grounds on which he relies for his application,
and if he does not do so he shall be deemed to have abandoned
his application.
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APPELLATE BOARD [R. F. NARlMAN, J.]
(3) If the applicant sends such counter-statement, the Registrar
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shall serve a copy thereofon the person giving notice of opposition.
( 4) Any evidence upon which the opponent and the applicant may
rely shall be submitted in the prescribed manner and within the
prescribed time to the Registrar, and the Registrar shall give an
opportunity to them to be heard, if they so desire.
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(5) The Registrar shall, after hearing the parties, if so required,
and considering the evidence, decide whether and subject to what
conditions or limitations, ifany, the registration is to be permitted,
and may take into account a ground of objection whether relied
upon by the opponent or not.
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(6) Where a person giving notice of opposition or an applicant
sending a counter-statement after receipt of a copy of such notice
neither resides nor carries on business in India, the Registrar may
require him to give security for the costs of proceedings before
him, and in default of such security being duly given, may treat
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the opposition or application, as the case may be, as abandoned.
(7) The Registrar may, on request, permit correction of any error
in, or any amendment of, a notice of opposition or a counterstatement on such terms as he thinks just.
Section 23 - Registration
(1) Subject to the provisions of section 19, when an application
for registration of a trade mark in Part A or Part B of the register
has been accepted and either-
(a) the application has not been opposed and the time for notice
of opposition has expired; or
(b) the application has been opposed and the opposition has been
decided in favour of the applicant,
the Registrar shall, unless the Central Government otherwise
directs, register the said trade mark in Part A or Part B of the
register, as the case may be, and the trade mark when registered
shall be registered as of the date of the making of the· said
application and the date shall, subject to the provisions of section
131, be deemed to be the date of registration.
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(2) On the registration ofa trade mark, the Registrar shall issue to
the applicant a certificate in the prescribed form of the registration
thereof, sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark is not completed within
twelve months from the date of the application by reason of default
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on the part of the applicant, the Registrar may, after giving notice
to the applicant in the prescribed manner, treat the application as
abandoned unless it is completed within the time specified in that
behalf in the notice.
(4) The Registrar may amend the register or a certificate of
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registration for the purpose of correcting a clerical error or an
obvious mistake.
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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) The tribunal may in any proceeding under this section decide
any question that may be necessary or expedient to decide in
connection with the rectification of the register.
(4) The tribunal, of its own motion, may, after giving notice in the
prescribed manner to the parties concerned and after giving them
·an opportunity of being heard, make any order referred to in subsection (1) or sub-section (2).
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY
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APPELLATE BOARD [R. F. NARIMAN, J.]
(5) Any order of the Appellate Board rectifying the register shall
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direct that notice of the rectification shall be served upon the
Registrar in the prescribed manner who shall upon receipt of such
notice rectify the register accordingly.
Section 124.