Jenson and Nicholson (I) Ltd v. The Joint Registrar of Trademarks and Anr.
Read the decision here.
Facts of the Case: The petitioners in this case, who were in the business of making paints and varnishes had filed for the registration of a mark ‘Umbrella Synthetic Enamel’ in the year 1998 for its enamel paints. The mark was advertised and there was an objection filed to its registration by another company. The Registrar sent a notice to the petitioners stating that such an objection had been filed and sought a reply to this. The notice was however returned to the Registrar with a remark saying “Left”. In the year 2009, the Registrar declared the application to have been abandoned by operation of Section 21(2) of the Trade Marks Act of 1999. In its appeal before the IPAB (along with an application seeking the condonation of delay), the petitioners pointed out that they had changed their address in the year 2003 and therefore were not served the notice. The IPAB dismissed the appeal on the grounds that the notice of change of address was not conveyed to the Registry.
Contentions of the Parties: The petitioners argued that they had stated in their application that their address of service was to be that of their agents, who had not been served the notice of the opposition. They highlighted that due to their poor financial health, they had been declared as a sick company and thus required their agents to act and accept communication on their behalf. They relied on the case of N. Balakrishnan v. M. Krishnamurthy to state that since the reasons for their delay was not mala fide and were genuine, the delay in initiating legal proceedings (a delay of 82 days) should also be condoned.
The respondents on the other hand argued that the High Court of Delhi did not have the jurisdiction to deal with the present petition as the petitioners were resident in Kolkata and had initiated proceedings in the IPAB at Kolkata as well. The only reason that the proceedings had been shifted to Delhi was due to a consent order that was passed. Relying on the case of Ambika Industries v. Commissioner of Central Excise they argued that where a tribunal exercised jurisdiction over multiple states, jurisdiction would not arise merely because of the location of the tribunal. Neither parties residing or carrying out business in Delhi, therefore denied the High Court jurisdiction. They also argued that the petitioners had not provided adequate reasons to condone delay on their part and that the address of service could not be that of their agents as the petitioners had not attached a power of attorney in their favour along with the application.
The petitioners rebutted this with the argument that as per Kusum Ingots & Alloys Ltd. v. Union of India the High Court situated in the state in which the Tribunal which passed the impugned order is located does have the jurisdiction to entertain such petitions. They also raised the plea that the court should consider forum conveniens in deciding whether or not jurisdiction vests.
Issues before the Court: Quite evidently the issues before the court were whether the High Court had the jurisdiction to entertain the petitions and secondly as to whether IPAB had erred in not condoning the delay.
Decision of the Court and its reasoning: The Court in its reasoning points out by virtue of the 15th and 42nd Amendment to the Constitution, clause (2) to Article 226 was introduced by which a cause of action element was introduced in the jurisdiction conferred on the High Courts in writ proceedings. In interpreting this, the Supreme Court held in the case of Nasiruddin v. State Transport Appellate Tribunal that:
“the place from where an appellate order or a revisional order is passed may give rise to a part of cause of action although the original order was at a place outside the said area. When a part of the cause of action arises within one or the other High Court, it will be for the petitioner to choose his forum.”
The court also considered the question of forum conveniens and held that since the parties by mutual consent had agreed to shift the proceedings to the IPAB in Delhi, they could not now raise the argument that a proceeding in Delhi inconvenienced them.
In its analysis regarding whether or not the delay ought to be condoned or not, the court observed that it was admittedly the case that the petitioners had not been served notice, and that they had in fact changed address. Therefore, since there was no mala fide reason as to the delay, the application for condonation should have been allowed.
The court then turns its attention to the question of the address of service and notes that the question of power of attorney would only arise if the agents were to act on behalf of the petitioners. In the present case, a mere notice was to be served on them, and the information supplied to the Registry mentioning the agents’ address would be sufficient to direct all communication there.
For these reasons the court set aside the order of the IPAB.
