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

2. On 6th of August, 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 has duly advertised by the Registrar in Trade Marks Journal No. 945 on page 845 pursuant to 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. 414 of 19923. 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 and 46 of the Act. It is still pending4. 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 and 2 of theCode of Civil Procedure 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 this Court on 30.8.19965. 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 August, 1997, 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 reply6. In the meantime, Chinar Trust, through its attorneys, wrote on 10th September, 1997 to the Registrar to take suo motu action under Section 56(4) for 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 September, 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 against this judgment that the present appeal has been filed.

Reasoning:
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.