Trademark

Procedures and Spice – Jagatjit Industries v. IPAB and Ors.


174917-blenders-pride-night-with-minissha-lambaA majority of the case load of the Indian courts is, probably, made up of procedural cases, and most of these tend to be relatively straightforward. Yet, there are some cases that are heavily procedural and also simply ‘spicy’! The case at hand, Jagatjit Industries Ltd. v. the Intellectual Property Appellate Board and Ors., is one such case. The central issues in this case revolve around Form TM-44, the powers of the Registrar of Trademarks, and S. 125 of the Trademarks Act, 1999. The facts are crucial but slightly complex. Thus, this post first explains the facts and issues of the case, and then discusses the Supreme Court’s judgment. [Long post ahead!]

The Facts

The Respondent No. 4 in this case is Austin Nichols, a subsidiary of USA-based Pernord Ricard S.A. Austin Nichols claims to have coined and adopted the ‘Blenders Pride’ (‘BP’) mark is through its licensee M/s Seagram Co. Ltd, in 1973, and has been using it since. Austin Nichols has been using the mark in India since 1995 through its Seagram India Pvt. Ltd.

First issue – Form TM-44

The appellant here, Jagatjit Industries, had applied for the ‘Blenders Pride’ mark, and its application was advertised in October 7, 2003. Respondent No. 4 here had opposed the appellant’s registration, after applying for a one month extension through Form TM-44.

This application forms the first bone of contention. This Form-44 was filed on January 6, 2004, one day before the expiry of the statutory three month period. The opposition itself was filed on January 19, 2004, with the Trade Mark Registry issuing notice to the appellant on February 16, 2004. Since the Registrar had not passed an order explicitly accepting the Form, the question before the Court was whether an explicit order was necessary, or if the application had been accepted implicitly.

Second issue – Section 125

However, before that, respondent no. 4 learnt on January 20, 2005 that the appellant’s application had been granted on January 13, 2004 itself. On January 14, 2005, the appellant also filed a suit of infringement and passing off against, inter alia, Seagram. The latter responded in April 2006 by pleading for a stay, noting that the registration was under challenge and rectification proceedings are under way.

While all this was happening, the respondents filed a writ petition to remove the appellant’s marks from the register soon after they became aware that they had been granted. Simultaneously, the Registrar issued a show cause notice on February 16, 2005 to the appellants suo moto under S. 57(4) of the Trademarks Act, stating that the registration had been issued wrongly, and proposing to rectify the register as per the recommendations of Austin Nichols. The writ petition was disposed off with the Court leaving the matter to the Registrar.

The Registrar confirmed his earlier order by a letter dated May 26, 2005, and asked the appellant to return its registration certificate. The appellant filed a writ petition against this order on May 31, 2005, which concluded with the Registrar recalling his suo moto show cause notice by an order dated November 14, 2005, stating that the jurisdiction on the issue was limited to the Appellate Board under S. 125 of the Trademarks Act.

The appellants’ argument here was that the rectification proceedings before the Registrar were barred by S. 125. As a suit for infringement had already been filed, the jurisdiction for such proceedings was argued to be limited to the IPAB under S. 125. S. 125 of the Trademarks Act states that if the rectification proceedings are instituted after an a case for infringement has already been filed by the parties involved, they can only be filed with the Board in an infringement suit. Here, the appellants relied on the Whirlpool Corporation v. Registrar of Trademarks, Mumbai. They also argued the Registrar anyway did not have the jurisdiction to pass the order, as under S. 125, the jurisdiction was limited to the Appellate Board.

Curiously enough, the suo moto show cause was issued by the Mumbai Registrar, while the application itself had been made by the Delhi Registrar. Therefore, another bone of contention was that the Mumbai Registrar did not have the competent jurisdiction to pass the order.

The Rest of the Procedural History

The Intellectual Property Appellate Board (‘IPAB’) then passed a judgment on October 6, 2006. The IPAB noted that the opposition being taken on record and numbered indicates that the TM-44 filed by respondent no. 4 had been accepted. Therefore, it concluded, the acceptance of the appellant’s application was in error, contrary to S. 23, and invalid in law. The Board also stated that the Registrar’s show cause notice did not violate S. 125 as the infringement suit was against Seagram, and not Austin Nichols, and even so, Seagram hadn’t even received the suit papers yet. It therefore set aside the Registrar’s recall of his show cause notice, and directed the Registrar to respond to the matter.

The appellant made a winning appeal against the Board’s order at the Delhi High Court. The High court set aside the IPAB order, and reinstated the Registrar’s recall of his suo moto order. However, an appeal before the Division Bench overturned the High Court’s order, and the matter thereafter ended up at the Supreme Court.

The Judgment

The Supreme Court’s judgment here was delivered by Hon’ble Justice Rohinton Nariman. For the first limb of the argument, the Court agreed with the Division Bench and found the implied extension of time to be valid. Crucially, the Court relied on S. 131 of the Trademarks Act to conclude that the Registrar’s powers regarding extension of time are ministerial, and no hearing is required for the same. The Court therefore concluded that the appellant’s trademark was registered in error, and should be removed from the register.

Addressing the issue of the Mumbai Registrar’s jurisdiction under s. 57, the Court stated that under the Trademarks Act, there is only one Registrar of Trademarks, situated in Mumbai. The Assistant Registrars of the country all, therefore, act under the superintendence of the Registrar. Therefore, the Court held, there is no conflict in jurisdiction.

The issues under the second limb are twofold. First, can any rectification proceedings be filed before the registrar if an infringement claim has been filed, or would only the have the jurisdiction then under S. 125? Second, is the Registrar’s suo moto recall notice barred by s. 125?

The Court interprets S. 125 here to mean that an application for rectification under S. 125 could only be made by the defendant in the infringement case, which was Seagram. Since the defendant was not Austin Nichols, the Court held that S. 125 would have no effect on the present case as the application for rectification was not filed by any of the parties to the infringement suit. The Court here considered whether Seagram being a licensee of Austin Nichols and having the same authorised signatory would bring the latter under the ambit of S.125, and rejected the argument based on the ‘corporate veil’.

Regardless, the Court also goes on to confirm the Division Bench’s earlier holding that S. 125 is only applicable to applications for rectification, and not to suo moto actions of the Registrar under S. 57 (4). The appellants here tried to draw a parallel between S. 57 and S. 125 of the Trademarks Act and between Ss. 47 and 107 of the 1958 Act, where the latter has been held to restrict the former. The Court, though, states that in S. 125 (1), the width of the reference to S. 57 is cut down by ‘an application for rectification of the register’, and therefore not to the suo moto powers of the Registrar under S. 57 (4).

The Court here distinguished the case at hand with Whirlpool. Taking the facts of that case on record, the Court noted that in that case, the Registrar’s suo moto actions under S. 57(4) had been based on a letter sent by defendants to the Registar. The Court then discusses the parts of the Whirlpool judgment regarding Ss. 107 and 47, and concludes that ‘no argument was made in Whirlpool’s case that S. 57(4) would be independent of S. 125’.  The Court, therefore, upheld and restored the Division Bench’s judgment.

3 comments.

  1. Avataranonymous

    I would like stir an academic discussion through your blog, i hope many of IPR lawyers will respond to this issue which I am raising here as this issue remains elusive for lasts more than a decade from judicial scrutiny .

    In my view the Registrar have been granted concurrent judicial powers equivalent to IPAB under section 57 to save Registrar from having under IPAB judicial superintendence, therefore both IPAB and Registrar both have concurrent judicial powers hence equal as per section 57 as well as the IPAB has appellate power of the same authority.

    So my question is ” How a judicial authority (IPAB) vested with concurrent power can sit and hear appeal emanated under section 57 from Registrar order as appellate authority.

    In my view the insertion of Registrar and granting powers under section 57 is contrary to the spirit of creation of IPAB, the section 57 , as the section 57 starts with heading “Power to cancel and Correction and to rectify register”, wherein the Registrar has been granted similar power under section 58 under “Correction of Register” and section 58 sub-section (c) which says ” Cancel the entry of Trademark on the Register” so the section 58 clearly gives ample power to regisrar to cancel or correct the wrong entry in the trademark register and section 57 also talks about “Power to cancel and Correction and to rectify register”.

    So my question is that when there are ample powers vested with Registrar under section 22 with reference pre grant of registration in my view post grant of registration certificate stage as the 1st line of section 22 says that “The Registrar may, on such terms as he thinks just, at anytime, whether before or after acceptance of an application for registration under section 18, permit the correction ofany error in or in connection with the application or permit an amendment of the application”.

    1stly it says “on such terms as he thinks just, at anytime,” in my view even after the grant of registration certificate, the application of trademark does not dies its death it remain alive till the registration certificate is alive my view is further fortifies when the section 22 further states that “on such terms as he thinks just, at anytime, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application”

    In my view the Registrar has ample power even after grant of certificate, the application of registration does not lose its existence it subsist and does not die, so the registrar has power to correct any error which he deems fit just and proper before or after acceptance and further 1st sentence says “at anytime, whether before or after acceptance of an application for registration under section 18, ”

    So my view is that when the regsirar has been granted ample powers under section 22 and section 58, so further granting of further power of rectify its own mistake is contrary to the spirit of trademarks act, there are reasons which are enumerated are as under shows that the registrar powers under section 57 beyond his authority:

    1. As per section 22 and section 58 (c) of trademarks act, when registrar has ample powers to correct, amend wrong entries remaining in the register, thus under section 57 the registrar can not sit on its own cause as appellate authority to rectify its own decision.

    2. The IPAB judicial body can not be equated by providing concurrent jurisdction as well as same time appellate jurisdiction over the registrar order under section 57, thereby further creating anomoly as well as prolonging judicial ladders, in this view the Apex court has reproduced the “Whirlpool judgment in the Para 29 which talks about creating prallel authorities.

    3. Visualize the scenario if litigant opts rectification before registrar under section 57, than he has also challenged the very existence of the trademark, how can a mark where the existence is challenged of trademark before registrar under section 57, how can be civil suit can be pursued, in this scenario, whether suit can be pursued by the plaintiff even to the extent the challenge of the trademark is before the registrar, how can one action under section 57 before registrar will not stay the suit proceedings before the civil court and in the other end if one files a rectification under section 57 before IPAB than the suit proceedings will, be stayed “A QUANDRY” as both action though different forums but at the end it is challenging the validity of the trademark which is wrongly in the register so how can one action before registrar does not stay the proceeding of the civil suit at the other action before IPAB stays the civil suit proceedings, even when the applicant in both cases have s challenged the very existence of the registration so in my view in both cases when its existence as trademark is in limbo before IPAB or Registrar, the civil suit cannot be proceeded.

    How this confusion has been created reason the makers of law did not visualize the confusion will emanate by putting registrar in to section 57 which was solely meant for appellate judicial body, wherein registrar word was added in section 57 bringing registrar power equivalent to IPAB, keeping registrar out of judicial superintendence.

    So what was the purpose of inserting registrar under section 57 was only to save registrar from bringing to judicial superintendence under IPAB, how a IPAB appellate judicial body can work without judicial superintendence over its subordinate body. it is a big quandary. As lower court is under juicial superintendence of High Court and High Court is under judicial superintendence of Supreme Court so on .

    The section 57 was created for the IPAB as appellate judicial body but is without judicial superintendence of its subordinate body, therefore registrar has concurrent jurisdiction and IPAB has concurrent and appellate over the body which has equal power, I am confused.

    In view of the section 22 and section 58 (c), this power vested with registrar is contrary to law.

    Reply
    1. AvatarSanuj Das

      Dear Anon,

      Could you please a) try and re-write you comment to ensure that it resembles a point that you are trying to make; b) use grammatically correct English to ensure a reader doesn’t have to strain to understand what you are writing. The way we lawyers write and speak is all that makes us !

      For what I could understand, following is my response:

      i) Powers under S. 57(4) and S. 58 are entirely different. While the former mandates use of powers suo moto by the Registrar, the latter would only be invoked upon an application by a ‘registered proprietor’;

      ii) There is no anomaly in the manner S. 57 and S.125 have been drafted. If a rectification is already pending (by anyone),an infringement suit will automatically get stayed save except that nothing will stop the Court from granting an interim injunction. If no such challenge to the validity of the mark is pending, the Court will give an option under Section 124 to file a rectification only to the Plaintiff and Defendant involved in such a suit upon there arising a challenge to the validity of the mark.

      If only you could write less confusingly would it be easier for us to under stand and satiate your confusion !

      Reply
  2. Avataranonymous

    further to above i have forget to mention one thing that the apex court has noted the observation of the whirpoool case in Para 29 of the order where in last lines of para 29 clearly says that the High Court power can not be equated with the registrar but the powers of High Court were delegated to IPAB , hence same ratio will apply, in this scenario the rgisrar can not be equated with IPAB being appellate judicial body.

    Reply

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