# WHIRLPOOL CORPORATION v. REGISTRAR OF TRADE MARKS, MUMBAI AND ORS

- **Citation:** [1998] Supp. 2 S.C.R. 359
- **Court:** Supreme Court of India
- **Decided:** 1998-10-26
- **Bench:** S. Saghir Ahmad, K.T. Thomas
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/whirlpool-corporation-v-registrar-of-trade-marks-mumbai-and-ors-16475
- **Pages:** 31

## Headnote

Trade and Merchandise Marh; Act, 1958 : Sections 2(1) (x), 5-7, JO,
12, 17, 19, 21, 23, 46, 47, 56, 107-109 and Ill.
A
B
Trade MarhJ-Registrar of Trade Marh; and High Court-Jurisdiction C
to act as Tribunal-Held, apparently concurrent-But in certain matters held
mutually exclusive-Before "which the proceeding concerned is pending"-
Held has to be treated Tribunal.
Trade Mar hi-Registration of Trade Mark 'WHIRLPOOL' by appellant-
. Initially renewal not obtained but subsequently obtained for three successive D
periods-Jn the meantime registration of Trade Mark 'WHIRLPOOL' by Chinar
Trust-Appellant's objection for registration dismissed-Appeal by appellant
before High Court-Petition filed by appellant for removal of Trade Mark
registered in favour of Chinar Trust-Appellant also filed a passing of suit
against Chinar Trust-Grant of temporary injunction by High CourtThereafter appellant filed an amendment application in passing off suit to E
include the ground of infringement-During tendency of proceedings Chinar
Trust approached Registrar-Consequently show cause notice under Section
56(4) issued to appellant for cancellation of certificate or renewal grantedHeld, issue of notice was without authority and consequently quashed
Trade MarhJ-Legislative history of-Discussion regarding Constitution F
of India, 1950 : Article 226
High Court-Power to issue writ-Nature of -Power to refuse relief
in case alternative remedy is al'ailable--Exception to-Show cause notice
issued to appellant under Trade Mark Act-Challenge to notice in writ G
jurisdiction-Held, permissible.
Statutory lnterpretation-Definiticns-lnterpretation of
Maxim-Grammatica falsa a non vitiat chartam (false grammar does
not vitiate a deed)-Applicability of
359
H
A
360
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.
The appellant, a Corporation based in USA registered its trade mark
'WHIRLPOOL' under the Trade and Merchandise Marks Act, 1940 on 31st
July, 1957. This Act was subsequently replaced by the Trade and Merchandise
Marks Act, 1958. The registration certificate was renewed twice for a period
of seven years once in 1962 and again w. e. f. 22.2.1970. As no further
B renewal was obtained after 1977 the trade mark was removed from the
register. However, the appellants continued to publicise their trade mark
'WHIRLPOOL' and also the company name through publications which had
made wide circulation in the country. On 6th August, 1986 two trustees of
the Chinar Trust applied for registration of trade mark 'WHIRLPOOL' and
the objections raised by the appellant against registration were dismissed by
C Assistant Registrar. The appeal preferred by appellant was admitted by Delhi
High Court. In the meantime 'WHIRLPOOL' was registered as trade mark
of the Chinar Trust and a certificate of Registration was granted to it. A
petition for rectification and removal of entry filed by the appellants on
4.8.1993 under Sections 45 and 46 was admitted by Registrar. Since chinar
Trust started using the aforesaid trade mark the appellant Corporation filed
D a suit for passing off in the Delhi High Court for restraining the defendantsChinar Trust from using the trade mark, 'WHIRLPOOL'. A temporary
injunction granted by the Single Judge was upheld by the Division Bench
of the High Court. Against this order chinar Trust unsuccessfully filed
special leave petition before this Court. Thereafter the appellant filed an
E application for renewal of trade mark on 26.2.1997 and the Registrar allowed
renewal for three successive periods namely 22.2.1977, 22.2.1984 and finally
22.12.1991. The appellant also filed an application under order 6 Rule 17
C. P.C. for amendment of the plaint in the passing off suit filed by it earlier
so as to include the ground of infringement of trade mark also in the suit.
Thereafter Chinar Trust approached Registrar for taking suo motu action
F under Section 56( 4) for cancellation of the certificate of renewal granted to
the appellant and consequently the Registrar issued a

## Text

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WHIRLPOOL CORPORATION
v.
REGISTRAR OF TRADE MARKS, MUMBAI AND ORS.
OCTOBER 26, 1998
[S. SAGHIR AHMAD AND K.T. THOMAS, JJ.]
Trade and Merchandise Marh; Act, 1958 : Sections 2(1) (x), 5-7, JO,
12, 17, 19, 21, 23, 46, 47, 56, 107-109 and Ill.
A
B
Trade MarhJ-Registrar of Trade Marh; and High Court-Jurisdiction C
to act as Tribunal-Held, apparently concurrent-But in certain matters held
mutually exclusive-Before "which the proceeding concerned is pending"-
Held has to be treated Tribunal.
Trade Mar hi-Registration of Trade Mark 'WHIRLPOOL' by appellant-
. Initially renewal not obtained but subsequently obtained for three successive D
periods-Jn the meantime registration of Trade Mark 'WHIRLPOOL' by Chinar
Trust-Appellant's objection for registration dismissed-Appeal by appellant
before High Court-Petition filed by appellant for removal of Trade Mark
registered in favour of Chinar Trust-Appellant also filed a passing of suit
against Chinar Trust-Grant of temporary injunction by High CourtThereafter appellant filed an amendment application in passing off suit to E
include the ground of infringement-During tendency of proceedings Chinar
Trust approached Registrar-Consequently show cause notice under Section
56(4) issued to appellant for cancellation of certificate or renewal grantedHeld, issue of notice was without authority and consequently quashed
Trade MarhJ-Legislative history of-Discussion regarding Constitution F
of India, 1950 : Article 226
High Court-Power to issue writ-Nature of -Power to refuse relief
in case alternative remedy is al'ailable--Exception to-Show cause notice
issued to appellant under Trade Mark Act-Challenge to notice in writ G
jurisdiction-Held, permissible.
Statutory lnterpretation-Definiticns-lnterpretation of
Maxim-Grammatica falsa a non vitiat chartam (false grammar does
not vitiate a deed)-Applicability of
359
H
A
360
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.
The appellant, a Corporation based in USA registered its trade mark
'WHIRLPOOL' under the Trade and Merchandise Marks Act, 1940 on 31st
July, 1957. This Act was subsequently replaced by the Trade and Merchandise
Marks Act, 1958. The registration certificate was renewed twice for a period
of seven years once in 1962 and again w. e. f. 22.2.1970. As no further
B renewal was obtained after 1977 the trade mark was removed from the
register. However, the appellants continued to publicise their trade mark
'WHIRLPOOL' and also the company name through publications which had
made wide circulation in the country. On 6th August, 1986 two trustees of
the Chinar Trust applied for registration of trade mark 'WHIRLPOOL' and
the objections raised by the appellant against registration were dismissed by
C Assistant Registrar. The appeal preferred by appellant was admitted by Delhi
High Court. In the meantime 'WHIRLPOOL' was registered as trade mark
of the Chinar Trust and a certificate of Registration was granted to it. A
petition for rectification and removal of entry filed by the appellants on
4.8.1993 under Sections 45 and 46 was admitted by Registrar. Since chinar
Trust started using the aforesaid trade mark the appellant Corporation filed
D a suit for passing off in the Delhi High Court for restraining the defendantsChinar Trust from using the trade mark, 'WHIRLPOOL'. A temporary
injunction granted by the Single Judge was upheld by the Division Bench
of the High Court. Against this order chinar Trust unsuccessfully filed
special leave petition before this Court. Thereafter the appellant filed an
E application for renewal of trade mark on 26.2.1997 and the Registrar allowed
renewal for three successive periods namely 22.2.1977, 22.2.1984 and finally
22.12.1991. The appellant also filed an application under order 6 Rule 17
C. P.C. for amendment of the plaint in the passing off suit filed by it earlier
so as to include the ground of infringement of trade mark also in the suit.
Thereafter Chinar Trust approached Registrar for taking suo motu action
F under Section 56( 4) for cancellation of the certificate of renewal granted to
the appellant and consequently the Registrar issued a show cause notice to
the appellant as to why the certificate of registration be not cancelled.
Against this notice the appellant filed a writ petition before the Bombay High
Court which was dismissed. Hence this appeal.
G
In appeal to this Court it was contended on behalf of the appellant that ,
(i) in view of the definition of Tribunal u/s 2(1) (x) a notice under Section
56(4) can be issued either by the Registrar or the High Court but out of the
two, only that authority can issue the notice before which the 'proceeding
concerned' is pending; (ii) since a passing-off suit was already pending in
H the Delhi High Court, where the appellant had also moved an application for
-
WHIRLPOOL CORPN. v. REGISTRAR OF TRADE MARKS, MUMBAI
361
amendment of the plaint so as to include the relief of infringement of its A
trade mark, notice under Section 56(4) could have been issued only by the
Delhi High Court and not by the Registrar; (iii) where the action initiated
by a statutory authority is wholly without jurisdiction, it can be challenged
under Article 226 of the Constitution and the writ petition cannot be dismissed
summarily and (iv) since suo motu action under Section 56(4) could be taken B
only by the High Court and not by the Registrar, the notice issued to the
appellant was wholly without jurisdiction and, therefore, a writ petition even
at that stage was maintainable.
On behalf of the Registrar it was contended that the Registrar
continued to retain his jurisdiction under Section 56 of the Act, C
notwithstanding the pendency of the passing-off suit filed by the appellant in
the High Court as the said suit could not be treated to constitute, in any
manner, "proceedings" under the Act particularly when the application for
amendment, by which the relief relating to infringement of trade mark was
sought to be added in the plaint was still pending.
Allowing the appeal, this Court
HELD : 1. The power to issue prerogative writs under Article 226 of
the Constitution is plenary in nature and is not limited by any other provision
D
of the Constitution. Under Article 226 of the Constitution, the High Court, E
having regard to the facts of the case, has a discretion to entertain or not
to entertain a writ petition. But the High Court has imposed upon itself
certain restriction one of which is that if an effective and efficacious remedy
is available, the High Court would not normally exercise its jurisdiction. But
the alternative remedy has been consistently held by this court not to operate
as a bar in at least three contingencies, namely, where the writ petition has F
been filed for the enforcement of any of the Fundamental Rights or where
there has been a violation of any of the principles of natural justice or where
the order of proceedings are wholly without jurisdiction or the vires of an
Act is challenged. The jurisdiction of the High Court in entertaining a writ
petition under Article 226 of the Constitution, in spite of the alternative G
statutory remedies, is not affected, specially in a case where the authority
against whom the writ is filed is shown to have had no jurisdiction or had
purported to usurp jurisdiction without any legal foundation. Therefore, the
High Court was not justified in dismissing the writ petition at the initial
stage without examining the contention that the show cause notice issued to
the appellant was wholly without jurisdiction and, that the Registrar, in the H
362
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.
A circumstances of the case, was not justified in acting as the "TRIBUNAL".
[368-G; 369-A-B; 370-F-H; 371-A)
K.S. Rashid & Son v. The Income Tax Investigation Commissioner, AIR
(1954) SC 207; State of U. P. v. Mohd. Nooh, [1958) SCR 595 =AIR (1958)
SC 86; A. V. Venkateswaran, Collector of Customs, Bombay v. Ramchand
B Sobhraj Wadhwani and Anr., AIR (1961) SC 1506; Calcutta Discount Co.
Ltd v. Income Tax Officer, Companies Distt., I Am (1961) SC 372 and Rashid
Ahmad v. Municipal Board, Kairana, AIR (1950) SC 163, referred to.
2. The question relating to the jurisdiction of the "Registrar" and the
"High Court" which individually and separately constitute "TRIBUNAL"
C within the meaning of Section 2(1) (x), has to be considered in the light of
the provisions of the Trade and Merchandise Marks Act, 1958. The definition
ofTribunal under Section 2(1) (x) indicates that High Court and the Registrar,
on their own, are not "TRIBUNAL". They become "TRIBUNAL" if"thc
proceeding concerned" comes to be pending before either of them. In other
words, if "the proceeding concerned" is pending before the High Court, it
D will be treated as "TRIBUNAL". If, on the contrary. "the proceeding
concerned" is pending before the Registrar, the latter will be treated as
"TRIBUNAL". In view of the provisions contained in Sections 56,107 and
109 and 111 the phrase "before which the proceeding concerned is pending"
stands out prominently to convey the idea that if the proceeding is pending
E before the "Registrar", it becomes the "TRIBUNAL". Similarly, if the
proceeding is pending before the "High Court", then the High Court has to
be treated as "Tribunal". Thus, the jurisdiction of the Registrar and the
High Court, though apparently concurrent in certain matters, is mutually
exclusive. That is to say, if a particular proceeding is pending before the
Registrar, any other proceeding, which may, in any way, relate to the pending
F proceeding, will have to be initiated before and taken up by the Registrar and
the High Court will act as the Appellate Authority of the Registrar under
Section 109. If the proceedings are pending before the High Court, the
Registrar will ke~p his hands off and not touch those or any other proceeding
which may, in any way, relate to those proceedings as the High Court, which
G has to be the High Court having jurisdiction as set out in Section 3, besides
being the Appellate Authority of the Registrar has primacy over the Registrar
in all matters under the Act. Any other interpretation of the definition of
"Tribunal" would not be in consonance with the scheme of the Act or the
contextual background set out therein and may lead to conflicting decision
on the same question by the Registrar and the High Court besides generating
H multiplicity of proceedings. [373-A-B; 382-C; 384-F-H; 385-A-C]
WHIRLPOOL CORPN. v. REGISTRAR OF TRADE MARKS, MUMBAI
363
3.1. Since "Tribunal" is defined in Section 2 which, in its opening A
part, uses the phrase "unless the context otherwise requires'', the definition,
obviously, cannot be read in isolation. The phrase "unless the context otherwise
requires" is meant to prevent a person from falling into the whirlpool of
"definitions" and not to look to other provisions of the Act which, necessarily,
has to be done as the meaning ascribed to a "definition" can be adopted only B
if the context does not otherwise require. [373-C)
3.2. The principle is that all statutory definitions have to be read
subject to the qualification variously expressed in the definition clauses
which created them and it may be that even where the definition is exhaustive
inasmuch as the word defined is said to mean a certain thing, it is possible C
for the word to have a somewhat different meaning in different sections of
the Act depending upon the subject or context. That is why all definitions in
statutes generally begin with the qualifying words, similar to the words used
in the present case, namely 'unless there is anything repugnant in the
subject or context'. Thus there may be sections in the Act where the meaning
may have to be departed from on account of the subject or context in which D
the word had been used and that will be giving effect to the opening sentence
in the definition section, namely, unless there is anything repugnant in the
subject or context'. In view of this qualification, the Court has not only to
look at the words but also to look at the context, the collocation and the object
ofsuch words relating to such matter and interpret the meaning intended E
to be -:onveyed by the use of the words under those circumstances.
(372-E-H)
4. The argument that in view of the placement of the words "as the case
may be" between two commas, the said words would not be applicable to the
Registrar, and that he can therefore exercise the jurisdiction under Section
56 irrespective of pendency of any "proceeding" is fallacious. Incidentally, F
there is another "comma" before and after the word "High Court". This
"comma" obviously separates the phrase "before which the proceeding
concerned is pending" from the word "High Court" with the result that this
phrase becomes applicable both to "High Court" and the "Registrar". The
word "concerned" in the phrase is also of significance inasmuch as the word G
"Tribunal" has been used in different sections in relation to different
proceedings. At some places in the Act, all the three words, namely,
Registrar'', "High Court" and "Tribunal" have been used which indicate
that if the proceeding under that particular provision is pending before the
"Registrar" then on account of that proceeding, the Registrar becomes the
"TRIBUNAL". So also, if the proceeding is pending before the High Court H
364
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.
A then that proceeding makes the High Court a "Tribunal". It is in that sense
that the word "proceeding concerned" has to be understood.
[385-C-H; 386-A)
S. The contention that if the phrase "before which the proceeding
B concerned is pending" were meant to apply to the "Registrar" the legislature
would have used the pronoun "whom" instead of "which" and the phrase
would have read "before whom the pr1,ceeding concerned is pending" is of
no use to the respondent. The pronoun in this case is the relative pronoun,
namely, the pronoun "Which", which, incidentally, can be used in many
other forms namely, as an interrogative pronoun, an interrogative adjective,
C or as a relative adjective. Its use is not limited to inanimate objects or
animals but it can also be used for "people". The two nouns, namely, the
"Registrar" and the High Court, used in the definition of "Tribunal" are
followed by the relative pronoun "which" and, therefore, the phrase "before
which the proceeding concerned is pending" would relate to both the nouns,
namely, the "Registrar" and the High Court". In a situation of this nature,
D mere rule of Grammar would not lead to correct interpretation of the definition
which has to be analysed, in the background of those provisions in which the
word "Tribunal" has been used together with the purpose for which it has
been used keeping in mind the overall scheme of the Act. [386-B-G]
E
Standard Pharmaceuticals v. Dy. Registrar of Trade Marks, (Appeal No.
213of1970 decided on 18.2.1975 by Calcutta High Court) and Registrar of
Trade Marks and Anr. v. Kumar Ranjan Sen & Ors., AIR (1966) Calcutta 311,
referred to.
A.J. Thompson And A. V. Martinet, A Practical English Grammar, 4th
F Edn. referred to.
6. In the instant case, 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,
G which was admitted on 1.2.1993. 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 in the Delhi High Court against the respondents in which an
order of temporary injunction has been granted in favour of the appellant
H which has been upheld by the Division Bench of the High Court as also by
WHIRLPOOL CORPN. '" REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, l.] 365
this Court. In that suit, an amendment application has also been filed so as A
to include the ground of infringement of the appellant's Trade Mark but that
application has not yet been disposed of. 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 B
Registration/Renewal already granted. Consequently the show-cause notice
issued under Section 56(4) of the Act is quashed. [389-A-E)
Vanguard Fire and General Insurance Co. Ltd Madras v. Fraser &
Ross, AIR (1960) SC 971, referred to.
CIVIL APPELLATE JURISDICTION : Civil Appeal No. 5201 of C
1998.
·From the Judgment and Order dated 8.12.97 of the Bombay High Court
in W. P. No. 1775of1997.
Iqbal Chagla, P. Chidambaram, A. R. Lall, S. S. Rana, Ms. Anuradha D
Salhotra and Vikrant Rana for the Appellant.
R. N. Trivedi, Additicnal Solicitor General, S. C. Agrawal, N. K. Anand,
R. K. Sanghi, Ms. Binu Tamta, D. S. Mehra, Narender Mohan Sharma, Ms.
Ritu Singh and R. P. Singh for the Respondents.
The Judgment of the Court was deHvered by
S. SAGHIR AHMAD, J. Leave granted.
WHIRLPOOL, true to their name have created a WHIRLPOOL of litigation
E
in this country. Based, as they are, the United States of America, they started F
the gyrating movement by applying for registration of their Trade Mark
"WHIRLPOOL" to the Registrar of the Trade Marks under the Trade Marks
Act, 1940, which has since been replaced by the Trade and Merchandise
Marks Act, 1958 and which for the sake of brevity, shall hereinafter be referred
to as the "Act". The Trade Mark was duly registered and a Certificate of G
Registration was issued on 31st of July, 1957 which was renewed twice, in
1962 for a period of seven years and again for seven years with effect from
22.2.70. Since further renewal was not obtained after 1977, it was removed
from the Register but the appellants continued to publicise their Trade Mark
"WHIRLPOOL" as also the company name through publications Which had
wide circulation in this country and thus managed to maintain their reputation H
366
SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.
A among the business circle including prospective customers and buyers.
On 6th of Aug. 1986, Mrs. Sumitra Charat Ram and Mr. N.R. Dongre,
as Trustees of Chinar Trust applied for registration of the Trade Mark
"Whirlpool" in class 7 under Application No. 458134, which was duly advertised
by the Registrar in Trade Marks Journal No. 945 on Page 845 pursuant to
B which the appellant filed their Opposition on 6th January, 1989, but their
objections were dismissed by the Assistant Registrar by his order dated
12.8.1992. An appeal against this order which was filed in the Delhi High
Court on 7 .11.1992 has since been admitted on 1.2.1993 and registered as C.M.
(Main) No. 414of1992.
c
D
In the meantime, "Whirlpool" was registered as the Trade Mark of the
Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was
granted to them. A petition for Rectification and for removal of this entry from
the Register has already been filed by the appellant before the Registrar on
4.8.1993 under Sections 45 & 46 of the Act. It is still pending.
Since Chinar Trust had also started using the Trade Mark "Whirlpool"
in relation to certain washing-machines, allegedly manufactured by them, the
appellant, as owner of the Trade Mark "Whirlpool", filed a Suit (Suit No. 1705
of 1994) for passing off in the Delhi High Court with an application for
temporary injunction under Order 39 Rules 1 & 2 of the Code of Civil Procedure
E for restraining the defendants, namely, Chinar Trust, etc., from using the
Trade Mark Whirlpool in relation to their products. A Single Judge of the
Delhi High Court granted temporary injunction to the appellant on 31.10.1994
which was upheld by the Division Bench on 21.4.1995. Special Leave Petition
filed against this order by the Chinar Trust has already been dismissed by
p this Court on 30.8.1996.
On 28.2.1997, the appellant filed an application in Form TM-12 for
renewal of the Trade Mark "Whirlpool" in Class 7 and the Registrar, by his
order dated 29th July, 1997, allowed the renewal for three successive periods,
namely, 22.2.1977, 22.2.1984 and finally 22.2.1991. Thereafter, on 8th Aug., 1997
G appellant made an application under Order 6 Rule 17 C.P.C. for amendment of
the plaint in Suit No. 1705 of 1994, referred to above, so as to include the
ground of infringement of the Trade Mark also in the suit but the application
is still pending in the Delhi High Court which has already granted time twice
to the defendants, namely, Chinar Trust to file a reply.
H
In the meantime, Chinar Trust, through its attorneys, wrote on 10th
•
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI IS. SAGHIR AHMAD, J.] 367
Sept. 1997 to the registrar to take suo motu action under Section 56( 4) for A
cancellation of the Certificate of Renewal granted to the appellant on 29th
July, 1997 and the registrar, acting on that request, issued a notice to the
appellant on 26th Sept., 1997 requiring it to show cause why the Certificate
of Registration be not cancelled. Against this notice, the appellant filed a writ
petition in the Bombay High Court which was dismissed on 8.12.1997. It is B
against this judgment that the present appeal has been filed.
Mr. Iqbal Chagla, senior counsel appearing for the appellant, has
contended that a notice under Section 56(4) can be issued only by the
'TRIBUNAL' which has been defined in Section 2 {l)(x), which means the
Registrar or the High Court before which the 'proceeding concerned' is C
pending. Mr. Chagla has contended that it is either the Registrar or the High
Court, which can issue a notice under Section 56( 4), but out of the two, only
that authority can issue the notice before which the 'proceeding concerned'
is pending. It is further contended that since a passing-off suit was already
pending in the Delhi High Court, where the appellant has also moved an
application for amendment of the plaint so as to include the relief of D
infringement of its Trade Mark. notice under Section 56(4) could have been
issued only by the Delhi High Court and not by the Registrar.
Mr. R.N. Trivedi, ASG appearing for the Registrar, has on the contrary,
contended that the Registrar continued to retain his jurisdiction under Section E
56 of the Act, notwithstanding the pendency of the passing off suit filed by
the appellant in the High Court as the said suit could not be treated to
constitute, in any manner, "proceedings" under the Act. Moreover, the
application for amendment, by which the relief relating to infringement of
Trade Mark was sought to be added in the plaint was still pending and unless
that application was allowed and the additional paragraphs, including the F
above relief, were added in the plaint, the nature of proceedings would not
change and they will continue to be treated as proceedings in a suit and not
"proceeding" under the Act.
This is also the contention of Mr. Sudhir Chandra, senior counsel G
appearing for the Chinar Trust. He has also contended that the High Court
was fully justified in dismissing that petition at the threshold particularly as
the Writ Petition was directed only against a notice issued under Section 56( 4)
of the Act requiring the appellant to show cause why the Registration Certificate
be not cancelled. The appellant, it is contended, should have submitted a
reply to that notice and allowed the Registrar to dispose of the whole matter H
368
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.
A on merits particularly as the Registrar had initiated the action principally on
the ground that the appellant had obtained the renewal of the Trade Mark by
misrepresentation and concealment of relevant facts.
Mr. Chagla, in reply, has submitted that where the action initiated by a
statutory authority is wholly without jurisdiction, it can be challenged under
B Article 226 of the Constitution and the Writ Petition cannot be dismissed
summarily. In the instant case, the Registrar, it is contended, could not have
legally acted as the Tribur,d as the "Proceedings concerned" was pending
before the High Court and, therefore, the High Court alone could have acted
as a "TRIBUNAL" and initiated action under Section 56(4) of the Act.
c
Learned counsel appearing on behalf of the parties have thus tried to
create a whirlpool of arguments around the word "TRIBUNAL" as defined in
Section 2(1 )(x) of the Act and, therefore in order to save ourselves from
becoming the victim of"Vertigo" of this whirlpool at the Bar, we have, for the
time being, dispassionately assumed the role of a grammarian, to consider the
D science of English language from the point of view of inflexion, punctuation
and of course, whole syntax, as the argument of the respondent's counsel is
based, almost wholly, on the importance of "comma" and the pronouns,
"which" or "whom" occurring in that definition keeping at the same time in
our mind the principle Grammatica falsa non vitiat chartam (false grammar
E does not vitiate a deed) and the question whether this would also apply to
statutory interpretation. But before we do it, we will first dispose of the
preliminary objection relating to maintainability of the Writ Petition as filed in
the High Court, allegedly, being premature and having been brought without
first exhausting the alternative remedies under the Act.
F
Learned counsel for the appellant has contended that since suo motu
action under Section 56( 4) could be taken only by the High Court and not
by the Registrar, the notice issued to the appellant was wholly without
jurisdiction and, therefore, a writ petition even at that stage was maintainable.
The appellant, in these circumstances, was not obliged to wait for the Registrar
G to complete the proceedings as any further order passed by the Registrar
would also have been without jurisdiction.
The power to issue prerogative writs under Article 226 of the Constitution
is plenary in nature and is not limited by any other provision of the constitution
This power can be exercised by the High Court not only for issuing writs in
H the nature of Habeas Corpus, Mandamus, prohibition, Qua Warranto and
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 369
Certiorari for the enforcement of any of the Fundamental Rights .~ontained in A
Part III of the Constitution but also for "any other purpose".
Under Article 226 of the Constitution, the High Court, having regard to
the facts of the case, has discretion to entertain or not to entertain a writ
petition. But the High Court has imposed upon itself certain restrictions one
of which is that if an effective and efficacious remedy is available, the High B
Court would not normally exercise its jurisdiction. But the alternative remedy
has been consistently held by this court not to operate as a bar in at least
three contingencies, namely, where the Writ Petition has been filed for the
enforcement of any of the Fundamental rights or where there has been a
violation of the principle of natural justice or where the order or proceedings C
are wholly without jurisdiction or the vires of an Act is challenged. There is
a plethora of case law on this point but to cut down this circle of forensic
whirlpool we would rely on some old decisions of the evolutionary era of the
constitutional law as they still hold the field.
Rashid Ahmad v. Municipal Board, kairana, AIR (1950) SC 163, laid D
down that existence of an adequate legal remedy was a factor to be taken into
consideration in the matter of granting Writs. This was followed by another
Rashid case, namely, KS.Rashid & Son v. The Income Tax Investigation
Commissioner, AIR (1954) SC 207 which reiterated the above proposition and
held that where alternative remedy existed, it would be a sound exercise of
discreation to refuse to interfere in a petition under Article 226. This proposition E
was, however, qualified by the significant words, "unless there are good
grounds therefor", which indicated that alternative remedy would not operate
as an absolute bar and that Writ Petition under Article 226 could still be
entertained in exceptional circumstances.
Specific and clear rule was laid down in State of U.P. v. Mohd. Nooh,
[1958] SCR 595 =AIR 1958 SC 86, as under:
"But this rule requiring the exhaustion of statutory remedies before
F
the Writ will be granted is a rule of policy convenience and discretion
rather than a rule of law and instances are numerous where a writ of G
certiorari has been issued in spite of the fact that the aggrieved party
had other adequate legal remedies."
This proposition was considered by a Constitution Bench of this Court
in A. V. Venkateswaran, Collector of Customs. Bombay v. Ramchand Sobhraj
Wadhwani & Anr., AIR (1961) SC 1506 and was affirmed and followed in the H
370
SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.
A following words :
B
c
D
E
F
"The passages in the judgments of this Court we have extracted
would indicate (I) that the two exceptions which the learned solicitor
General formulated to the normal rule as to the effect of the existence
of an adequate alternative remedy were by no means exhaustive and
(2) that even beyond them a discretion vested in the High Court to
have entertained the petition and granted the petitioner relief
notwithstanding the existence of an alternative remedy. We need only
add that the broad lines of the general principles on which the Court
should act having been clearly laid down, their application to the facts
of each particular case must necessarily be dependent on a variety of
individual facts which must govern the proper exercise of the discretion
of the Court, and that in a matter which is thus pre-eminently one of
discretion, it is not possible or even if it were, it would not be
desirable to lay down inflexible rules which should be applied with
rigidity in every case which comes up before the Court".
Another Constitution Bench decision in Calcutta Discount co.Ltd. v.
Income Tax Officer Companies Distt., I AIR (1961) SC 372 laid down:
"Though the writ of prohibition or certiorari will not issue against an
executive authority, the High Courts have power to issue in a fit case
an order prohibiting an executive authority from acting without
jurisdiction. Where such action of an executive authority acting without
jurisdiction subjects or is likely to subject a person to lengthy
proceedings and unnecessary harassment. the High Court will issue
appropriate orders or directions to prevent such consequences. Writ
of certiorari and prohibition can issue against Income Tax Officer
acting without jurisdiction under S.34 LT.Act".
Much water has since flown beneath the bridge, but there has been no
corrosive effect on these decisions which though old, continue to hold the
field with the result that law as to the jurisdiction of the High Court in
G entertaining a Writ Petition under Article 226 of the Constitution, in spite of
the alternative statutory remedies, is not affected, specially in a case where
the authority against whom the Writ is filed is shown to have had no jurisdiction
or had purported to usurp jurisdiction without any legal foundation.
That being so, the High Court was not justified in dismissing the Writ
H Petition at the initial stage without examining the contention that the show
t
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.] 371
cause notice issued to the appellant was wholly without jurisdiction and that A
the Registrar, in the circumstances of the case, was not justified in acting as
the "TRIBUNAL".
We proceed to the next question now.
Section 56, under which the notice to show cause has been issued to B
the appellant, provides as under :
56. Power to cancel or vary registration and to rectify the register -
I. On application made in the prescribed manner to a High Court or
to the registrar by any person aggrieved, the tribunal may make such C
order as it may think fit for the 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 D
cause or by any entry wrongly remaining on the register, or by any
error of defect in any entry in the register, may apply in the prescribed
manner to a High Court or to the Registrar, and the tribunal may make
such order for making expunging or varying the entry as it may think
&
E
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 F
prescribed manner to the parties concerned and after giving them an
opportunity of being heard, make any order referred to in sub-section
(I) or sub-section (2).
5. Any order of the High Court rectifying the register shall direct that
notice of the rectification shall be served upon the Registrar in the G
prescribed manner who shall upon receipt of such notice rectify the
register accordingly.
6. The power to rectify the register conferred by this section shall
include the power to remove a trade mark registered in Part A of the
register to Part B of the register.
H
A
B
c
D
E
372
SUPREME COURT REPORTS (1998] SUPP. 2 S.C.R.
Section 56(1) provides that on an application made to the High Court
or the Registrar by the person aggrieved, the "TRIBUNAL" may cancel or
vary the registration of the Trade Mark. Under Sub-section 4 of Section 56,
this power can be exercised by the "TRIBUNAL" suo motu.
TRIBUNAL has been defined under Section 2(l} (x) as under:
"Tribunal" means the Registrar, or as the case may be the High Court
before which the proceeding concerned is pending."
This definition treats "High Court" and "Registrar" both as "TRIBUNAL" for
purposes of this Act.
High Court has been defined in Section 2(h) as the "High Court" having
jurisdiction under Section 3" which, in its turn, provides that it shall be that
High Court within the limits of whose appellate jurisdiction the office of the
Trade Marks Registry referred to in each of the sub-clauses (a) to (e) is
situate.
We have to consider the meaning of these definitions in the context of
other relative provisions of the Act so· as to find an answer to the question
relating to the extent of jurisdiction of the Registrar and the High Court
functioning as "TRIBUNAL".
Now the principle is that all statutory definitions have to be read
subject to the qualification variously expressed in the definition clauses
which created them and it may be that even where the definition is exhaustive
inasmuch as the word defined is said to mean a certain thing, it is possible
for the word to have a somewhat different meaning in different sections of
F the Act depending upon the subject or context. That is why all definitions
in stautes generally begin with the qualifying words, similar to the words used
in the present case, namely 'unless there is anything repugnant in the subject
or context'. Thus there may be sections in the Act where the meaning may
have to be departed from on account of the subject or context in which the
G word had been used and that will be giving effect to the opening sentence
in the definition section, namely 'unless there is anything repugnant in the
subject or context'. In view of this qualification, the Court has not only to
look at the words but also to look at the context, the collocation and the
object of such words relating to such matter and interpret the meaning
intended to be conveyed by the use of the words under those circumstance".
H (See : Vanguard Fire and General Insurance Co. Ltd. Madras v. Fraser &
WHIRLPOOL CORPN. v. REG. OF TRADE MARKS, MUMBAI [S. SAGHIR AHMAD, J.]
373
Ross, AIR (1960) SC 971.
A
Before considering the contextual aspect of the definition of
"TRIBUNAL'', we may first consider its ordinary and simple meaning. A bare
look at the definition indicates that High Court and the Registrar, on their
own, are not "TRIBUNAL". They become "TRIBUNAL" if "the proceeding
concerned" comes to be pending before either of them. In other words, if "the B
proceeding concerned" is pending before the High Court, it will be treated as
"TRIBUNAL''. If on the contrary, "the proceeding concerned" is pending
before the Registrar, the latter will be treated as "TRIBUNAL".
Since "TRIBUNAL" is defined in Senction 2 which, in its opening part,
uses the phrase "Unless the context otherwise requires", the definition, C
obviously, cannot be read in isolation. The phrase "Unless the context otherwise
requires" is meant to prevent a person from falling into the whirlpool of
"definitions" and not to look to other provisions of the Act which, necessarily,
has to be done as the meaning ascribed to a "definition" can be adopted only
if the context does not otherwise require.
D
The history of legislation is more than a century old. The first legislation
brought on the Statute Book was the Indian Merchandise Marks Act, 1889
(Act No. 4 of 1889). This was followed by the Trade Marks Act, 1940 (Act
No. 5 of 1940). Both these acts were repealed by the :rrade & Merchandise
Marks Act, 1958. This Act follows the pattern of Trade Marks Act, 1938 of E
the United kingdom. Prior to the enactment of Trade Marks Act, 1940, the
disputes or problems, specially those relating to infringement of trade-marks
or passing-off were decided in the light of Section 54 of the Specific Relief
Act, 1877, while the registration problem was tackled by obtaining a declaration
as to ownership of a trade-mark under the Indian Registration Act, 1908. The F
present Act which, as pointed out above, has repealed the Indian Merchandise
Marks Act, l 889 and Trade Marks Act, 1940, also provides in Section 129 that
any document declaring or purporting to declare the ownership or title of a
person to a trade-mark other than a registered trade mark, shall not be
registered under the Indian Registration Act, 1908.
We may now have a quick look at other relevant provisions of the Act.
Section 4 provides that Central Govt. shall appoint a person as
Controller-General of Patents, Designs & Trade Marks who shall be the
Registrar of Trade Marks under the Act. The functions of the Registrar, as
G
are authorised by him, can also be performed by such other persons as the H
374
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R.
A Central Government may appoint. Thus, there is an element of plurality in the
sense that the functions of the Registrar can be performed by more than one
person.
Section 5 provides for the establishment of a Registry known as Trade
Marks Registry, with a Head Office and Branch Offices at such places as the
B Govt. may think fit.
Under Section 6 read with Section 7 of the Act, a Register of Trade
Marks, in two parts, namely, Part A and Part B, is to be maintained with the
original Register kept at the Head Office of the Trade Marks Registry and
copies thereof at the Branch Offices. All Registered Trade Marks with the
C names, addresses and descriptions of the proprietors, and all notifications of
assignments are to be entered in that Register. Section 9 indicates the requisites
for registration of a Trade Mark in Part A or Part B.