Case: Whirlpool Corporation Vs. Registrar of Trade Marks, Mumbai

the High Court and the Registrar perform the function of the tribunal, only in cases where proceedings are pending. Proceedings in the case of statutory bodies, like this, need not be a dispute between two contending private parties. It could be a dispute between the adjudicating party and the party against whom the proceedings are taken. In this connection, reliance may be placed on the observations of the Supreme Court in the case of Associated Cement Companies Ltd. v. P. N. Sharma and another, A.I.R. 1965 S.C. 1965 at page 1999 where the Supreme Court observed If a statutory body has power to do any act which will prejudicially affect the subject then although there are not two parties apart from the authority and the contest is between the authority proposing to do the act and the subject opposing it, the final determination of the authority will yet be a quasi judicial act provided that the authority is required by the statute to act judicially. In such case the statutory body which adjudicates such a dispute would, in my opinion be a tribunal in terms of Section 2(1)(x) of the Trade and Merchandise Marks Act, 1958. In this case, after the proceeding which was pending by the initiation of the notice dated the 9th May, 1968, the Registrar in deciding this controversy in my opinion, was acting as a tribunal and, therefore, was competent to take action as a tribunal contemplated under Section 56(4) of the Act. 65. As against the above decision, there is a decision of a Division Bench of the same High Court in Registrar of Trade Marks and another v. Kumar Ranjan Sen and others, AIR 1966 Calcutta 311, in which it was laid down as under :- It will be noticed that the word Tribunal as defined in Clause (x) of sub-section (1) of Section 2 does not simply mean the Registrar or the High Court but the Registrar or the High Court, only when proceedings are pending before them. It is a convenient way of describing either the Registrar or the High Court before whom proceedings were pending. Coming now to Section 56, we find that sub-section (1) refers to an application made in the prescribed manner to a High Court or to a Registrar, but it is the Tribunal which can make an order under it of cancellation or varying the registration, as the case may be. It is a mistake to think that the word Tribunal stands in contra-distinction to the word High Court or the Registrar. The word Tribunal has been used as meaning the High Court or the Registrar before whom proceedings are pending. It is in this sense that the word Tribunal has been used in sub- section (4). It is intended to convey that the Tribunal, that is to say, the High Court or the Registrar before whom proceedings are pending may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make an order as referred to in sub-section (1) or sub-section (2). As will appear from sub-section (5), the High Court has itself power to order a rectification of the register. In fact, the Court below, having come to the conclusion that the registration had been improperly done in violation of the provisions of the said Act, was not powerless in the matter, but could of its own motion have rectified the register, even if its conclusion as to the powers of the Deputy Registrar was right. It is clear to us that the use of the word Tribunal in sub-section (4) of Section 56 does not exclude the provisions of sub-section (2) of Section 4. The only thing to note is that in order to attract the provisions of sub-section (4) of Section 56, proceedings must be pending before the Registrar or the persons authorised by him to exercise a particular function under sub-section (2) of Section 4. 66. This decision has been considered by the learned single Judge in Standard Pharmaceuticals case (supra). In our opinion, both the decisions are in line with the view that we have taken in the instant case on the interpretation of the definition of TRIBUNAL. But the point before us is a little different as we are concerned essentially with the extent of jurisdiction of the Registrar and the High Court vis-a-vis other provisions of the Act. 67. In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellants opposition to the registration of respondents Trade Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court, which was admitted on 01.02.1993 and has since been registered as C.M. (Main) 414 of 1992. Thereafter, on 04.08.1993, 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 (Suit No. 1705 of 1994) in the Delhi High Court against the respondents in which an order of temporary injunction has been granted in favour of the appellant which has been upheld by the Division Bench of the High Court as also by this Court. In that suit, an amendment application has also been filed so as to include the ground of infringement of the appellants Trade Mark but that application has not yet been disposed of. It is, however, obvious that if the application is allowed, the amendments will relate back to the date of the application, if not to the date of plaint. 68. 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 Registration/Renewal already granted.

Decision (1 = appeal accepted, 0 = rejected): 1

Explanation:
1[ds]19. That being so, 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 circumstances of the case, was not justified in acting as the TRIBUNAL31. 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 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. Sub-section (5) of Section 9 gives guidelines to the TRIBUNAL to follow in determining one of the relevant criteria for that purpose32. There is a prohibition contained in Section 12 on the registration of a Trade Mark which is identical or deceptively similar to an already registered mark except as provided in sub-section (3) thereof which authorises the Registrar to permit the registration by more than one proprietor of Trade Marks which are identical or nearly resemble each other (whether any such Trade Mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations as he may think fit to impose8. The functions and extent of jurisdiction of the Registrar and that of the High Court which, incidentally, has also been constituted as the Appellate Authority of the Registrar, have been distinctly set out in different provisions of the Act. There are, however, certain matters for which jurisdiction has been given to the TRIBUNAL which, by its definition, includes the High Court and the Registrar and, therefore, the question is can both be said to have concurrent jurisdiction over matters as are set out, for example, in Sections 9, 10, 26, 45, 46, 47 and 5649. If the proceeding is cognisable both by the Registrar and the High Court, which of the two will have jurisdiction to entertain such proceeding to the exclusion of the other or the jurisdiction being concurrent, can the proceeding go on simultaneously before the High Court and the Registrar, resulting, may be, in conflicting decisions at the end, is a question which seems to be answered by the words before which the proceeding concerned is pending occurring in the definition of TRIBUNAL in Section 2(1)(x) of the Act. Let us test whether the answer is correct55. The extent of jurisdiction conferred by Section 56 on the Registrar to rectify the Register, is, however, curtailed by Section 107 which provides that an application for rectification shall, in certain situations, be made only to the High Court. These situations are mentioned in sub-section (1) of Section 107, namely, where in a suit for infringement of the registered Trade Mark, the validity of the registration is questioned by the defendant or the defendant, in that suit, raises the defence contemplated by Section 30(1)(d) in which the acts which do not constitute an infringement, have been specified, and the plaintiff in reply to this defence questions the validity of the defendants Trade Mark. In these situations, the validity of the registration of the Trade Mark can be determined only by the High Court and not by the Registrar56. Section 107 thus impels the proceedings to be instituted only in the High Court. The jurisdiction of the Registrar in those cases which are covered by Section 107 is totally excluded. Significantly, Section 107(2) provides that if an application for rectification is made to the Registrar under Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks fit, refer that application, at any stage of the proceeding, to the High Court57. Similarly, under Section 111 of the Act, in a pending suit relating to infringement of a Trade Mark, if it is brought to the notice of the Court that any rectification proceedings relating to plaintiffs or defendants Trade Mark are pending either before the Registrar or the High Court, the proceedings in the suit shall be stayed pending final decision of the High Court or the Registrar. Even if such proceedings are not pending either before the Registrar or the High Court, the trial court, if prima facie satisfied that the plea regarding invalidity of plaintiffs or defendants Trade Mark is tenable, may frame an issue and adjourn the case for three months to enable the party concerned to apply to the High Court for rectification of the Register. If within three months, the party concerned does not approach the High Court, the plea regarding invalidity of Trade Mark would be treated as abandoned but if such an application has been given hearing, the suit would be stayed awaiting final decision of the High Court. The finding of the High Court would bind the parties and the issue relating to the invalidity of Trade Mark would be decided in terms of those findings58. In this background, the phrase before which the proceeding concerned is pending stands out prominently to convey the idea that if the proceeding is pending 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 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. It is obvious that if the proceedings are pending before the High Court, the Registrar will keep his hands off and not touch those or any other proceedings which may, in any way, relate to those proceedings, as the High Court, which 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 multiplicity of proceedings59. Learned counsel for the respondent-Chinar Trust, at this stage, invoked the Rule of Punctuation in English Grammar and contended that the definition of TRIBUNAL is amply clear and requires no interpretative exercise as there is a distinction between the Registrar and the High Court inasmuch as the Registrar will have jurisdiction irrespective of the pendency of any proceeding, the High Court will have jurisdiction only when proceeding concerned is pending before it. This he tried to show by pointing out that the words as the case may be are placed between two commas, one at the beginning immediately after the word Registrar and the other at the end, with the result that the words Tribunal means the Registrar stand out distinctly, while the words High Court before which the proceeding concerned is pending stand out separately as an independent phrase. It is contended that the words before which the proceeding concerned is pending will not be applicable to the Registrar and, therefore, the Registrar can exercise the jurisdiction under Section 56 irrespective of pendency of any proceeding60. Learned counsel for the Chinar Trust is trying to give a measure of importance to the punctuation mark comma, more than it deserves. If comma were that important, there, incidentally, 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 this phrase is also of significance inasmuch as the word 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 then that proceeding makes the High Court a TRIBUNAL. It is in that sense that the word proceeding concerned has to be understood61. Not content with the rejection of the above contention, learned counsel for the respondent invoked another rule of English grammar relating to the use of pronouns which and whom and contended that if the phrase before which the proceeding 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 proceeding concerned is pending. The High Court, it is contended, is an inanimate object and, therefore, the pronoun which has been used62. Pronoun means for-a-noun. It is defined as a word used instead of a noun. The Pronoun with which we are concerned 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, or as a relative adjective. Its use is not limited to inanimate objects or animals but it can also be used for people as explained in A Practical English Grammar (A. J. Thomson and A. V. Martinet - Fourth Edition). 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. This rule of Grammar which was sought to be pressed into aid by the learned counsel for the respondent is, therefore, of no use to him63. Moreover, in a situation of this nature, mere rule of Grammar would not lead to correct interpretation of the definition which has to be analysed, as we have already done, 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 Act67. In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellants opposition to the registration of respondents Trade Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court, which was admitted on 01.02.1993 and has since been registered as C.M. (Main) 414 of 1992. Thereafter, on 04.08.1993, 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 (Suit No. 1705 of 1994) in the Delhi High Court against the respondents in which an order of temporary injunction has been granted in favour of the appellant which has been upheld by the Division Bench of the High Court as also by this Court. In that suit, an amendment application has also been filed so as to include the ground of infringement of the appellants Trade Mark but that application has not yet been disposed of. It is, however, obvious that if the application is allowed, the amendments will relate back to the date of the application, if not to the date of plaint68. 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 Registration/Renewal already granted.