Jagatjit Industries Limited vs The Intelectual Prop Appellate Bd. & Ors

The respondent No.4 is a corporation incorporated under the laws of the United States of America. It is an ultimate subsidiary of Pernord Ricard S.A., which is engaged in the business of manufacturing and marketing a variety of alcoholic beverages worldwide. It claims that it has coined and adopted the trademark ‘BLENDERS PRIDE’ through its licensee M/s Seagram Company Limited in the year 1973. According to respondent No.4, on account of extensive sales and marketing worldwide, the trademark ‘BLENDERS PRIDE’ has come to acquire a tremendous reputation in various countries including India. In order to secure its proprietary rights in the said trademark, respondent No.4 had applied for and was granted registration of the said trademark in more than 50 countries and has been selling ‘BLENDERS PRIDE’ whisky in India through its licensee Seagram India Private Limited since 1995. It has also applied for registration of the trademark ‘BLENDERS PRIDE’ under two applications in class 33 which are pending registration. The appellant’s application for registration of an identical trademark ‘BLENDERS PRIDE’ was advertised in the Trademarks Journal Mega-I. This journal was published on 7th October, 2003. Respondent No.4 had filed Form TM-44 seeking extension of one month’s time for filing its notice of opposition against the appellant’s application on 6.1.2004, i.e. within the statutory period of three months. On 19.1.2004, respondent No.4 had filed its notice of opposition before the Trade Marks Registry, New Delhi and the same was numbered as DEL-160325. On 16.2.2004, the Trade Marks Registry issued a notice to the appellant inviting its counter statement to the said notice of opposition, and had stated that if the counter statement was not filed within time, the trademark application would be deemed to be abandoned. However, when the matter stood thus, respondent No.4 came to know on 20.1.2005 that a trademark registration certificate bearing No.618414 had been issued to the appellant on 13.1.2004 itself. Immediately, however, through its attorneys, respondent No.4 informed the Trade Marks Registry about the pending opposition proceedings which were yet to be disposed of.

Since no communication was received from the Registry, respondent No.4 filed a writ petition before the Delhi High Court being Writ Petition Nos. 2712 and 2713 of 2005. Meanwhile, on 16.2.2005, a show cause notice was issued by the Registrar under Section 57(4) of the Trade Marks Act, 1999 to the appellant, in which it was said that the registration certificate had been issued wrongly, and since the said trademark was wrongly on the register of trademarks, it was proposed to rectify the register under Section 57(4) as per representation made by the attorneys of respondent No.4.

Meanwhile, the writ petition filed by respondent No.4 to remove the trademark from the register came up for hearing and was disposed of by an order dated 2.3.2005 with the observation that the Registrar shall proceed to decide the issues arising out of the show cause notice as expeditiously as possible and in accordance with law.

Meanwhile, on 14.1.2005, a suit for infringement of its trademark had been filed by the appellant herein in the District Court of Jalandhar inter alia against the licensee of respondent No.4, namely, Seagram Distilleries Private Limited. On 21.4.2005, Seagram India Private Limited filed a written statement in which it took up a plea that the plaintiff’s registration is under challenge and since rectification proceedings are sub- judice before the Registrar of Trademarks, the suit is liable to be stayed till final disposal of the said rectification proceedings. It further went on to plead that the registration obtained by the plaintiff (i.e. the appellant herein) is void ab initio and confers no right on the plaintiff and, therefore, questioned the very maintainability of the suit for infringement.

While matters stood thus, after considering the reply of the appellant, the Registrar, on 26.5.2005, referred to the show cause notice dated 16.2.2005 and the reply of the appellant thereof and stated that the impugned mark was registered by inadvertence/error and that it was proposed to rectify the register under Section 57(4) of the Trade Marks Act, 1999 by removing the mark referred to. By the self same letter the appellant was directed to return the registration certificate wrongly issued forthwith, and further directed not to use the said certificate of registration in respect of the above-mentioned trademark in any manner for any purpose and in any proceedings.

A Writ Petition bearing Nos.10080-81 of 2005 was filed by the appellant against the aforesaid order, and an interim order of stay was obtained against the said order on 31.5.2005. Ultimately, on 13.9.2005, the Delhi High Court directed the Registrar to dispose of the proceedings before it on or before 16.11.2005.

The Registrar, by his order dated 14.11.2005, recalled the show cause notice issued, stating that he had no jurisdiction to proceed in the matter inasmuch as, under Section 125 of the Act, the proceedings could only legally continue before the Appellate Board and not before him.

(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.

(5) Any order of the Appellate Board rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause (b) (ii) of sub-section (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

“In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellant's opposition to the registration of respondent's 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 appellant's 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.

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. The appeal is consequently allowed and the show-cause notice issued by the Deputy Registrar (respondent No. 2) on 26th of Sept. 1997 Under Section 56(4) of the Act is hereby quashed. The appellants shall be entitled to their costs.” [at paras 72 and 73]

31. We are, therefore, of the view that, for the reasons given by us, the Division Bench judgment requires no interference. The appeal is, therefore, dismissed. No costs.

January 20, 2016.