IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 27-10-2006 CORAM THE HONOURABLE MR. JUSTICE D. MURUGESAN AND THE HONOURABLE MR. JUSTICE V. RAMASUBRAMANIAN WRIT APPEAL No.863 of 2006 and W.P.No.25372 of 2006 and W.P.No.28352 of 2004 and C.R.P.Nos.800, 808, 809 and 810 of 2006 W.A.No.863 of 2004: B.Mohamed Yousuff Proprietor, M/s.Mujeeb Modern Rice Mill, Pathirapuliyur Road, Palappattu Village 604 302, Chendur Post, Tindivanam Taluk, Villupuram District, Tamil Nadu. ..Appellant in WA.863/2004, Petitioner in WP.25372/2006 R.4 in WP.28352/2004 R.1 in CRP[NPD].800, 808 to 810/2006. Vs. 1.M/s.Prabha Singh Jaswant Singh, No.1, Khari Baoli, Delhi 110 006 rep., by its Power of Attorney Mr.C.Raghu. 2.The Registar of Trade Marks, O/o.the Trade Marks Registry, Mumbai Boudhik Sampanda Bhavan, Near Antop Hill Post Office, S M Road, Antop Hill, Mumbai-400 037. 3.The Assistant Registrar of Trade Marks, O/o.The Trade Marks Registry, Chennai IPR Building, G.S.T.Road, Guindy, Chennai-600 032. https://hcservices.ecourts.gov.in/hcservices/ 4.The Controller General of Patents, Designs and Trade Marks, Government of India, Boudhik Sampanda Bhavan, Near Antop Hill Post Office, S.M.Road, Antop Hill, Mumbai-400 037. 5. B.Mohamed Sheriff 6. B.Hyder Ali (The respondents 5 and 6 are given up in this writ appeal) 7. Shanmugha Rice Mill, S.F.No.156, Kovai Road, Kadaiyur Post, Via Kangayam Taluk, Periyar District, Tamil Nadu .. Respondents 1 to 7 in WA.863/2006 Petitioner and Respondents 2 to 4 nil and Respondents 5 to 7 in WP.28352/2004 R.1 Nil and Respondents 4, 5 in WP.25372/ 2006. 1. M/S.Prabha Singh Jaswanth Singh rep. by Joginder Singh Malhotra No.1, Khari Baoli, Delhi - 110006. 2. Joginder Singh Malhotra No.1, Khari Baoli, Delhi - 110006. 6. M/S.P.Doraisami Gounder Shanmugha Rice Mill. S.F.No.156, Kovai Road, Kadaiyur (P.O) Kangeyam Taluk, Erode District 7. P.Ponnusamy Gounder S.F.No.156, Kovai Road, Kadaiyur (P.O) Kangeyam Taluk, Erode District. 8. P.Papathall W/O.P.Ponnusamy Gounder S.F.No.156, Kovai Road, Kadaiyur (P.O) Kangeyam Taluk, Erode District. https://hcservices.ecourts.gov.in/hcservices/ 9. D.Deivathall W/O.Late P.Doraisamy Gounder S.F.No.156, Kovai Road, Kadaiyur (P.O) Kangeyam Taluk, Erode District. 10. D.Eswaramurthy S/O.Late P.Doraisamy Gounder, S.F.No.156, Kovai Road, Kadaiyur (P.O) Kangeyam Taluk, Erode District. 11. D.Rekkiyappasamy S/O.Late. P.Doraisamy Gounder S.F.No.156, Kovai Road, Kadaiyur (P.O) Kangeyam Taluk, Erode District. Respondents 1,2,6 to 12 in WP.25372/2006. RR.9.10,5 to 8 and petitions 2 and 3 in CRP.800/2006 RR.1,2 & 6 nil and RR2 to 4 in CRP.800/2006 to 810/2006 and petitioners 1 and 2 in CRP.808/2006 to 810/2006. 12. The Registrar Intellectual Property Appellate Board Guna Complex Annex-1, 2nd Floor, 443, Anna Salai, Teynampet, Chennai - 18. R.12 in WP.25372/2006 R1. The Registrar of Trade Mark Office of the Trade Mark Registry Mumbai, Central Building M.Karve Road, Mumbai - 400020. 2. The Assistant Registrar of Trade Mark, Office of the Trade Mark Registry Chennai Rajaji Bhavan, 'D' Wing, Besant Nagar, Chennai - 90. 3. The Controller General of Patents Designs and Trade Marks Government of India, Central Building, M.Karve Road, Mumbai - 400020. RR1 to R3 in WP.28353/2004 RR3,4 and 2 in CRP.800/2006. https://hcservices.ecourts.gov.in/hcservices/ For Appellants/Petitioners in Writ Appeal, Writ Petitions and Civil Revision Petitions : Mr.P.S.Raman, Senior Advocate for M/s.Saravana Sowmiyan For respondents in Writ Appeal, Writ Petitions and Civil Revision Petitions : Mr.S.J.Jagadev and Gladys Daniel. Writ Appeal filed under clause 15 of the Letters Patent against the Order of this Court dated 30.06.2006 and made in WPMP.No.34413/2004 in WVMP No.1937/2004 in WP.No.28352/2004. WPMP.No.34413/2004: Petition presented to this Court to grant order of Interim Injunction against respondents 1 and 2 restraining them from entering the name of Respondent 4 or renew / restore the mark in pursuance of the application for renewal filed in TM 12 and 13 filed on 16.9.2004 before the 2nd Respondent. WVMP.No.1937/2004: Petition to vacate the interim Order granted on 1.10.2004 made in WPMP.34413/2004 in WP.28352/2004. WP.No.25372/2006: Writ Petition filed under Article 226 of the Constitution of India to issue a Writ of Certiorarified Mandamus, calling for the records of the 12th respondent by proceedings dated 15.3.2006 in order No.35 of 2006 made in Original Rectification Application NO.1/2005/TM/[CH] and quash the same in so far as against the petitioner and consequently directing the 4th Respondent to remove the Trade Mark "Maharaja Special" in Trade Mark No.325536 from the Register of Trade Marks. WP.28352/2004: Writ of Mandamus directing the respondents 1 to 3 not to record the names of Respondents 4 to 6 in the name of Respondents 4-6 or 7 or renew or restore the Mark "MAHARAJA" for Rice which has been registered in the name as evidenced by the records. Civil Revision Petition filed under Article 227 of constitution of India, against the Order dated 15.03.2006 made in ORA.No.1 of 2005 on the file of Honourable Intellectual Property Appellate Board, Chennai [CRP.800/2006]. https://hcservices.ecourts.gov.in/hcservices/ 2) against the order dated 15.3.2006 made in Review Petitions R.P.No.2 of 2004 to 4 of 2004 in OA.No.24 of 2004 to 26 of 2004 respectively on the file of the Honourable Intellectual Property Appellate Board, Chennai [CRP.Nos.808 to 810/2006] COMMON JUDGMENT V. RAMASUBRAMANIAN, J. The writ appeal, 2 writ petitions and 4 civil revision petitions arise out of a cobweb of litigation, in which, the word “Maharaja” and his caricature are caught in a triangular contest. 2. The parties involved in this contest, carry on business in the sale of rice and grains, under the brand name “MAHARAJA” with or without a caricature/device of a Maharaja. Since they are arrayed in different positions in the writ appeal, writ petitions and civil revision petitions, their description as petitioners or respondents would defy uniformity and would only create confusion. Therefore, they are referred to herein, as the ‘Delhi Party’, ‘Tindivanam Party’ and ‘Kangayam Party’, for the sake of convenience, since they have their head offices at Delhi, Tindivanam (Villupuram District, Tamilnadu) and Kangayam (Erode District, Tamilnadu) respectively. 3. Since the parties hereto have wielded against one another, almost all the weapons available under the Trade Marks Act, 1999, such as (i) opposition for registration, (ii) Assignment (iii) appeals and review petitions before the Appellate Board, (iv) rectification petition, (v) petition for prosecution (vi) civil suit and (vii) proceedings under Article 226/227 of the Constitution, it is necessary to give a brief prelude, before plunging into complete factual details, though it would be at the cost of repetition. 4. The Delhi party had a registration in respect of the word mark, “MAHARAJA SPECIAL” from 23-5-1977 without any picture or caricature, in Class 30, in respect of grains and rice, claiming user since 1966. The Tindivanam and Kangayam parties applied for registration of the same word mark along with the caricature of a Maharaja, on 4-8-1992 and 15-9-1992 respectively in respect of the same goods, claiming user since 1983 and 1980 respectively. It is pertinent to note that the application of the Tindivanam Party for registration, was made in the names of B.MOHAMMED YOUSUF, B.MOHAMMED SHERIFF AND B.HYDER ALI, trading as MUJEEB MODERN RICE MILL. https://hcservices.ecourts.gov.in/hcservices/ 5. When the applications of Tindivanam and Kangayam parties for registration, were published in the Trade Marks Journal in the year 2000, the Tindivanam and Kangayam parties filed notices of opposition against each other. The notices of opposition filed by them against each other, were dismissed and the applications for registration filed by both of them were allowed by the Assistant Registrar of Trade Marks, by orders dated 23-1-2004 and 30-1-2004. But while doing so, the Assistant Registrar imposed different conditions upon them for registration. In respect of the Tindivanam party, the Assistant Registrar directed them to use the mark always with the full name and address of their firm in prominent feature on the label, sticker etc., under section 12 of the Act without any territorial restriction. But in respect of the Kangayam party, the Assistant Registrar not only imposed the same condition, namely that they shall use the mark along with the name and address of their firm prominently, but also imposed a territorial restriction to the user of the mark, within the State of Tamilnadu only. 6. Aggrieved by the conditional registration (granted by the Assistant Registrar under order dated 30-1-2004) restricting their area of operation to the State of Tamilnadu only, the Kangayam party filed an appeal in O.A.No.25 of 2004 before the Intellectual Property Appellate Board, hereinafter referred to as the ‘Board’. Contending that no registration ought to have been granted in favour of Kangayam party even conditionally, B.Mohammed Yousuf, describing himself as the Proprietor of Mujeeb Modern Rice Mill (who is also hereinafter referred to only as the Tindivanam party, though the actual Tindivanam party who filed the application for registration comprised of 3 persons) filed an appeal in O.A.Nos.24 of 2004 before the Board. Similarly, challenging the grant of registration to the Tindivanam party, (granted by the Assistant Registrar under order dated 23-1-2004) the Kangayam party filed an Appeal in O.A.No.26 of 2004. 7. By a detailed order dated 6-8-2004, the Intellectual Property Appellate Board dismissed O.A.No.26 of 2004 filed by the Kangayam party against the grant of registration to Tindivanam party. Even while doing so, the Board directed the Registrar to amend the application for registration filed by the Tindivanam party by restricting the same to the first named brother namely B.Mohammed Yousuf, among the 3 original applicants. It is pertinent to point out here that by the time the said order was passed (on 6-8-2004) the Registrar had already issued a certificate of registration dated 26-2-2004 in favour of the original 3 applicants constituting the Tindivanam Party. Therefore the question of amending the application for registration did not arise on that date and any amendment could have been done only for the certificate of registration. But nevertheless, the Appellate Board did not take note of https://hcservices.ecourts.gov.in/hcservices/ the issue of the certificate of registration in favour of the 3 original applicants constituting the Tindivanam party and issued the aforesaid direction for amendment of the application of the Tindivanam Party to enable one person to get the certificate as a proprietor. 8. By another order of the same date namely 6-8-2004, the Board allowed the appeal of the Tindivanam party O.A.No.24 of 2004 and dismissed the other appeal of the Kangayam party O.A.No.25 of 2004. As a result of the orders passed by the Appellate Board in all the 3 appeals, (O.A.Nos.24, 25 and 26 of 2004), the Kangayam party became completely disentitled to use the trade mark and the Tindivanam party’s right to use the mark got upheld. 9. At that time, the Kangayam party came to know about the registration of a similar mark by the Delhi party as early as in 1977 and hence entered into a Deed of Assignment with the Delhi party on 5-10-2004. Simultaneously, the Kangayam party filed Review Petitions in R.P.No.2, 3 and 4 of 2004, against the orders passed in the appeals O.A.Nos.24, 25 and 26 of 2004, but the same were dismissed by the Intellectual Property Appellate Board, by a common order dated 15-3-2006, holding that the assignment made by the Delhi party in favour of the Kangayam party, being a subsequent event, cannot be a ground for review of its earlier orders. But as a matter of fact, the review petitions were not filed on the strength of the Assignment entered into on 5-10-2004, but were filed on other grounds including that the direction issued by the Board for amending the application for registration, was an error in view of the fact that there is a prescribed procedure for amending a certificate of registration. As against the said order passed in the Review Petitions, the Kangayam party has filed Civil Revision Petitions in C.R.P.Nos.808, 809 and 810 of 2006 under Article 227 of the Constitution. 10. In the meantime, the Delhi party, on coming to know about the rival claims of the Tindivanam and Kangayam parties regarding the same trade mark, filed a civil suit in C.S.No.726 of 2004, followed by a Writ petition in W.P.No. 28352 of 2004 for preventing renewal of registration. But, as stated above, the Kangayam party entered into a Deed of Assignment with the Delhi party and compromised the dispute with them. Pending the said writ petition, the Delhi party obtained an interim order restraining the Registrar from renewing the registration of the Tindivanam party, in W.P.M.P.No.34413 of 2004. Against the said interim order, the Tindivanam party has filed the writ appeal W.A.No.863 of 2006. 11. While the above proceedings were in progress, the Tindivanam party filed 2 petitions namely (1) for Rectification of the Register in O.R.A.No. 1 of 2005 on the file of the Intellectual Property Appellate https://hcservices.ecourts.gov.in/hcservices/ Board for the removal of the Delhi Party’s trade mark and (2) for prosecution of the Delhi party under section 107 of the Act before the Registrar. 12. The rectification application filed by the Tindivanam party was partly allowed by the Board, by its order dated 15-3-2006 directing the Registrar to rectify the Register, restricting the area of operation of the Delhi party only to Delhi. Aggrieved by such a partial rectification ordered against them by the Board, the Delhi party has filed a civil revision petition in C.R.P.No.800 of 2006. The Tindivanam party also challenged the order passed in their rectification application, by way of a writ petition in W.P.25372 of 2006, contending that the Delhi party was not entitled to have the use of the trade mark even within Delhi. 13. The prosecution application filed by the Tindivanam party against the Delhi party was allowed by the Registrar as against which, the Delhi party filed an appeal to the Board in O.A.No.13 of 2005. The Board dismissed the said appeal by an order dated 15-3-2006, forcing the Delhi party to file C.R.P.No.801 of 2006. The said civil revision petition is delinked from the batch since all other cases revolve around the same issues but C.R.P.No.801 of 2006 stands independently of the common issues. 14. Thus in brief, there are 5 civil revision petitions, 2 writ petitions and a writ appeal. While 3 civil revision petitions are filed by the Kangayam party arising out of applications for registration and the rival notices of opposition between Tindivanam and Kangayam parties, two revision petitions are by Delhi party against the rectification order suffered by them and the prosecution sanctioned against them. Out of the 2 writ petitions, one is by Delhi party for preventing renewal of the Tindivanam party’s registration and the other is by Tindivanam party challenging the order of the Intellectual Property Appellate Board passed in their rectification application, merely restricting the area of operation of the Delhi party’s registration but not removing their mark from the register. The writ appeal filed by the Tindivanam party is against the interim order granted in favour of the Delhi party restraining the renewal of registration in favour of Tindivanam party. All these petitions (except C.R.P.No.801 of 2006) were taken up for disposal together, in view of the fact that the dispute is intertwined between them and a finding in one cannot be rendered without any bearing on the other. 15. We have heard Mr.S.J.Jagadev, learned Counsel appearing for the Delhi party, Ms.Gladys Daniel, learned counsel appearing for the Kangayam party and Mr.P.S.Raman, learned Additional Advocate General appearing for the Tindivanam party. https://hcservices.ecourts.gov.in/hcservices/ 16. Before proceeding to decide the inter se dispute between the parties, a preliminary was issue raised by the parties at the outset, about the nature of the remedy available to a person aggrieved by an order of the Intellectual Property Appellate Board, which requires consideration. While the Kangayam party and the Delhi party have chosen to invoke the supervisory/revisional jurisdiction of this court under Article 227 of the Constitution, the Tindivanam party has chosen to invoke the extraordinary jurisdiction (writ) of this court under Article 226 of the Constitution, against the orders of the Intellectual Property Appellate Board. The counsel for the parties advanced detailed arguments on this issue and hence it has become necessary to resolve the same for future application. 17. PRELIMINARY ISSUE:- A plain reading of Articles 226 and 227 of the Constitution shows— (a) that the jurisdiction of the High Court under Article 226 is original, while the jurisdiction under Article 227 is supervisory and revisional; (b) that the power of the High Court under Article 226 is to issue directions, orders or writs for the enforcement of any of the rights conferred by Part III of the Constitution and for any other purpose, while the power of the High Court under Article 227 is a power of superintendence, both administrative as well as judicial, over courts and Tribunals; (c) that the power conferred under Article 226 is not restricted by the location of the seat of the Government or the authority or person against whom it is exercised, if the cause of action for its exercise arose in whole or in part within its territorial limits, while the power conferred under Article 227 is restricted to the courts and Tribunals located within the territories in relation to which the High Court exercises jurisdiction; and (d) that the jurisdiction under Article 226 extends over any person, authority or the Government, while the jurisdiction under Article 227 is confined to courts and Tribunals including those exercising quasi judicial functions. 18. The power under Article 227, being a revisional power, varies in its scope and ambit, than the power under Article 226, which is original. Moreover, the remedy of a Letters Patent Appeal to the Division Bench of the High Court, (wherever applicable) is available to a person https://hcservices.ecourts.gov.in/hcservices/ aggrieved by an order passed by a single Judge, in a writ petition under Article 226 of the Constitution, but no such appellate remedy is available against an order passed under Article 227 of the Constitution. 19. In Umaji Keshao Meshram –vs- Radhikabai 1986 Supp.SCC 401, the Supreme Court analysed the distinction between these 2 Articles threadbare, in paragraphs 100, 101 and 107, on the following lines. “100. … … … … … … . Under Article 226 the High Courts have power to issue directions, orders and writs to any person or authority including any government. Under Article 227 every High Court has power of superintendence over all courts and tribunals throughout the territory in relation to which it exercises jurisdiction. The power to issue writs is not the same as the power of superintendence. By no stretch of imagination can a writ in the nature of habeas corpus or mandamus or quo warranto or prohibition or certiorari be equated with the power of superintendence. These are writs which are directed against persons, authorities and the State. The power of superintendence conferred upon every High Court by Article 227 is a supervisory jurisdiction intended to ensure that subordinate courts and tribunals act within the limits of their authority and according to law (see State of Gujarat vs. Vakhatsinghji Vajesinghji Vaghela (AIR 1968 SC 1481) and Ahmedabad Mfg. & Calico Ptg. Co. Ltd. vs. Ram Tahel Ramnad ((1973) 1 SCR 185)). The orders, directions and writs under Article 226 are not intended or this purpose and the power of superintendence conferred upon the High Courts by Article 227 is in addition to that conferred upon the High Courts by Article 226. Though at the first blush it may seem that a writ of certiorari or a writ of prohibition partakes of the nature of superintendence inasmuch as at times the end result is the same, the nature of the power to issue these writs is different from the supervisory or superintending power under Article 227. The powers conferred by Articles 226 and 227 are separate and distinct and operate in different fields. The fact that the same result can at times be achieved by two different processes does not mean that these two processes are the same. 101. Under Article 226 an order, direction or writ is to issue to a person, authority or the State. In a proceeding under that article the person, authority https://hcservices.ecourts.gov.in/hcservices/ or State against whom the direction, order or writ is sought is a necessary party. Under Article 227, however, what comes up before the High Court is the order or judgment of a subordinate court or tribunal for the purpose of ascertaining whether in giving such judgment or order that subordinate court or tribunal has acted within its authority and according to law. 107. Petitions are at times filed both under Articles 226 and 227 of the Constitution … … … . In our opinion, where the facts justify a party in filing an application either under Article 226 or 227 of the Constitution, and the party chooses to file his application under both these articles, in fairness and justice to such party and in order not to deprive him of the valuable right of appeal the court ought to treat the application as being made under Article 226, and f in deciding the matter, in the final order the court gives ancillary directions which may pertain to Article 227, this ought not to be held to deprive a party of the right of appeal under Clause 15 of the Letters Patent where the substantial part of the order sought to be appealed against is under Article 226” 20. The differences in jurisdiction between Articles 226 and 227 are brought out by the Supreme Court in Surya Dev Rai –vs- Ram Chander Rai (2003) 6 SCC 675, in the following words:- “25. Upon a review of decided cases and a survey of the occasions, wherein the High Courts have exercised jurisdiction to command a writ of certiorari or to exercise supervisory jurisdiction under Article 227 in the given facts and circumstances in a variety of cases, it seems that the distinction between the two jurisdictions stands almost obliterated in practice. Probably, this is the reason why it has become customary with the lawyers labeling their petitions as one common under Articles 226 and 227 of the Constitution, though such practice has been deprecated in some judicial pronouncement. Without entering into niceties and technicality of the subject, we venture to state the broad general difference between the two jurisdictions. Firstly, the writ of certiorari is an exercise of its original jurisdiction by the High Court; exercise of supervisory jurisdiction is not an original jurisdiction and in this sense it is akin to appellate, revisional or corrective jurisdiction. https://hcservices.ecourts.gov.in/hcservices/ Secondly, in a writ of certiorari, the record of the proceedings having been certified and sent up by the inferior court or tribunal to the High Court, the High Court if inclined to exercise its jurisdiction, may simply annul or quash the proceedings and then do no more. In exercise of supervisory jurisdiction, the High Court may not only quash or set aside the impugned proceedings, judgment or order but it may also make such directions as the facts and circumstances of the case may warrant, maybe, by way of guiding the inferior court or tribunal as to the manner in which it would now proceed further or afresh as commended to or guided by the High Court. In appropriate cases the High Court, while exercising supervisory jurisdiction, may substitute such a decision of its own in place of the impugned decision, as the inferior court or tribunal should have made. Lastly, the jurisdiction under Article 226 of the Constitution is capable of being exercised on a prayer made by or on behalf of the party aggrieved; the supervisory jurisdiction is capable of being exercised suo motu as well.” 21. In L.Chandrakumar’s case (1997) 3 SCC 261, the Constitution Bench of the Supreme Court held in para 91 that “all decisions of Tribunals, whether created pursuant to Article 323-A or Article 323-B of the Constitution will be subject to the High Court’s writ jurisdiction under Articles 226/227 of the Constitution before a Division Bench of the High court within whose territorial jurisdiction the particular Tribunal falls.” In para 99 of the same judgment, the Constitution Bench declared clause 2 (d) of Article 323-A and clause 3 (d) of Article 323-B unconstitutional to the extent they excluded the jurisdiction of the High Courts under Article 226/227 and that of the Supreme Court under Article 32 of the Constitution.