The Registrar Of Trade Marks And Another v. Kumar Ranjan Sen And Others

Sinha, J.:— In this case we are concerned with the provisions of the Trade and Marchandise Marks Act, 1958 (Central Act No. 43 of 1958). The facts are shortly as follows: The respondent No. 4, Addisons Paints and Chemicals Private Ltd. of Madras had been using a trade mark containing the letters ‘A.P.C’ in a monogram form, since the year 1953. In 1957, the said trade mark was registered. On the 26th of May, 1959 the respondents Nos. 1 to 3, Kumar Rajan Sen, Tushar Kanti Sen and Mrinal Kanti Sen, partners of the Astatic Paints and Chemicals, applied for the registration of a trade mark containing the same letters ‘A.P.C’ in a monogram form. On the 25th November, 1959 the new Trade and Merchandise Act, 1958 (hereinafter referred to as the “said act”) came into force. This Act repealed the Indian Merchandise Marks Act, 1889 and the Trade Marks Act, 1940. On the 1st December, 1959 the application was advertised in the Trade Marks Journal which was published on that date. On the 29th February, 1960 the respondent No. 4, Addisons Paints and Chemicals Private Ltd., sent a notice of objection or opposition to the application for registration by the applicant. This notice was received in the Office of the Deputy Registrar, Trade Marks, Calcutta, on the 2nd March, 1960. On the 8th March, 1960, the Deputy Registrar, Trade Marks, Calcutta, the appellant No. 2 called upon the respondent No. 4 to show cause why the notice of opposition should not be treated as not admissible as having been filed beyond time and as such barred under Section 21(1) of the said Act read with rule 51 of the Trade and Merchandise Marks Rules, 1959. On 12th March, 1960 Messrs Kamath and Kamath, Trade Marks and Patent Attorneys, wrote to the Deputy Registar, Trade Marks Calcutta, on behalf of the respondent No. 4 contending that the opposition has been filed in time. On the 20th June, 1960, without any further steps being taken or without complying with the provisions of the said Act as to hearing etc., the application for registration of the trade mark made by the respondents Nos. I to 3 was granted by the Registar of the Trade Marks, Bombay, and a certificate of registration of trade mark, No. 190460 dated 20-6-60 was issued to them. On the 9th June, 1961 the Assistant Examiner of Trade Marks, Calcutta, on behalf of the Deputy Registrar, wrote a letter to the respondents No. 1 to 3 in their firm of Astatic Paints and Chemicals informing them that a notice of opposition to the application for registration of trade mark had been filed on the 2nd March, 1960. The question whether the opposition was filed within time would be considered at a hearing on the 31st July, 1961 and in the event of a decision that a notice of opposition had been duly filed in accordance with law, the registration of the trade mark of the said respondents would be held to have been effected through error and would be liable to cancellation. The letter stated that it should be taken to be a notice to show cause why the said registration should not be cancelled, in exercise of the power conferred by Section 56(4) of the said Act. Thereafter, both the parties, namely, the respondents Nos. 1 to 3 and the respondent No. 4 submitted their respective contentions on the question of the notice of opposition being time barred or not. On the 27th August, 1961 the Deputy Registrar of Trade Marks, Calcutta, held that the notice of opposition was filed within time; but unfortunately the application was granted and the trade mark registered on the 20th June, 1960, at a time when the notice of opposition was pending. It was remarked that under clause (b) of Sub-section (1) of Section 23 an application can be granted and a trade mark registered only when the opposition had been decided in lavour of the applicant. In the present case the application was granted and the registration effected through inadvertence, while a notice of opposition was actually pending. It was stated that every tribe not had inherent power to correct its mistake and accordingly, an order was made cancelling the registration and directing that the notice of opposition which had been filed, would now be considered in accordance with the said Act and the Rules framed thereunder. On or about 29th September, 1964, an appeal was filed against this order under Section 109 of the said Act to this High Court by the respondents No. 1 to 3. The appeal was heard by Datta, J., who by his judgment and order dated 18-9-1963 allowed the appeal and set aside the order of the Deputy Registrar, Trade Marks, Calcutta, dated 27th August, 1961. Before the Learned Judge, two points were canvassed. The first point was as to whether the notice of opposition had been filed in time and the second point was as to whether the Deputy Registrar. Trade Marks, Calcutta, had jurisdiction to make an order of cancellation of a registration. On the first point, the learned Judge held that the notice of opposition had been filed in time, upholding the finding of the Deputy Registrar, Trade Marks, Calcutta. Before us, this finding has not been challenged. On the second point, the learned Judge held that the registration had been made in violation of the provisions of the said Act, inasmuch as the opposition was still pending and without deciding the same a registration could not be effected. Although on the merits therefore, the learned Judge was in favour of the cancellation of the registration, he held that the Deputy Registrar, Trade Marks, Calcutta, had no jurisdiction to make an order of cancellation and accordingly his order D/- 27th August, 1961 was not in accordance with the law and was set aside. It is this point which has been canvassed in appeal filed by the Registrar of Trade Marks and the Deputy Registrar of Trade Marks and has to be decided by us.

2. In order to decide this point, it will be necessary to consider the provisions of the said Act in some detail. It is an Act to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. The first provision to be considered is Section 2 which is the definition section Under Cl. (h) of sub-section (1) of section 2, the expression “High Court” has been defined to be the High Court having jurisdiction under Section 3, namely the High Court within the limits of whose Appellate jurisdiction the office of the Trade Marks Registry is situate. Roughly speaking, Trade Marks Registries are situated in the towns of Bombay, Calcutta, Madras and Delhi. The Registrar of Trade Marks, who under Sec. 4(1) is also known as the ‘Controller-General of Patents, Designs and Trade Marks’ functions at Bombay, and the Trade Marks Registries including that at Calcutta function under a Deputy Registrar of Trade Marks. Cl. (o) defines “Register” as meaning the Register of Trade Marks referred to in Section 6. It is provided in Section 6 that for the purposes of the said Act a record called the Register of Trade Marks shall be kept at the head-office of the Trade Marks Registry, which happens to be situated at Bombay, wherein shall be entered all registered trade marks with all the particulars necessary and there shall be kepi at each branch of the Trade Marks Registry a copy of the said register. Under Cl. (t), the word “Registrar” means the Registrar of Trade Marks referred to in Section 4. This Section will have to be considered in greater detail presently. Under cl. (x) the word “Tribunal” means the Registrar or, as the case may be, the High Court, before which: the proceeding concerned is pending. Cl. (d) of Sub-section (2) of Section 2 provides that in the said Act, unless the context otherwise requires, any reference to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of Sub-section (2) of Section 4. The next Section to be considered is Section 4 the relevant provisions whereof are as follows:

“4.(1) The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller-General of Patents, Designs, and Trade Marks, who shall be the Registrar for the purposes of this Act and the Controller of Patents and Designs for the purposes of the Indian Patents and Designs Act, 1911.

(2) The Central Government may appoint such other officers with such designations as it thinks fit for the purpose of discharging, under the superintendence and direction of the Registrar, such functions of the Registrar under this Act as he may from time to time authorise them to discharge.”

3. In pursuance of sub-sec. (2) of S. 4, the Central Government has appointed an officer called the Deputy Registrar of Trade Marks (actually there are several such officers) and the Registrar of Trade Marks, that is to say, the Controller. General of Patents, Designs and Trade Marks, has authorised the Deputy Registrar of Trade Marks to hear applications for registration, opposition proceedings, rectification and correction of the Registrar, all interlocutory applications and all other matters connected with the above. He has been authorised to pass final orders as to acceptance and refusal of applications for registration of trade marks. The other functions which have been delegated are not necessary to be considered in this case: A copy of the authorisation appears at pages 69 to 70 of the paper book. Section 5 deals with the establishment of a Trade Marks Registry and its territorial jurisdiction and Section 12 provides that except as provided therein no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. Section 18 provides as to how applications for registration of trade marks are to be made. When an application for the registration of a trade mark has been accepted, it has to be advertised as provided in Section 20 of, the said Act. Sec. 21 provides that any person may within 3 months from the date of the advertisement or re-advertisement of an application for registration or within such further period as is provided therein, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. The Registrar shall serve a copy of the notice of opposition on the applicant for registration who is at liberty to file a counter-statement in the prescribed manner. Sub-section (5) of Section 21 is important and is set out below:—

“(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.”

4. Section 23 deals with the registration of trade marks. The relevant provisions are as follows:—

“23.(1) Subject to the provisions of Section 19, when an application for registration of a trade mark in part A or part B of the Register has been accepted and either—

(a) the application has not been opposed and the time for notice of opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favour of the applicant;

The Registrar shall, unless the Central Government otherwise directs, register the said trade mark in Part A or Part B of the register, as the case may be, and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of Section 131, be deemed to be the date of registration.”

5. Coming now to the facts of the instant case, we find that upon an application for registration having been made, advertisements were issued and a notice of opposition was received. Without considering the opposition and hearing the parties, the registration was effected. Under such circumstances, the provision of section 23(1)(b) applies and one of the pre-conditions is that the opposition should be decided in favour of the applicant. In other words before an application for registration is granted, the opposition must be considered and rejected. In the present case an opposition had been filed but through mistake or inadvertence, it was not considered, so that it cannot be said that the opposition had been decided in favour of the applicant. Thus, the registration was granted although the pre-condition mentioned above had not been satisfied. The learned Judge in the court below has agreed with the above proposition and has actually held that the registration was not made in accordance with law. He has however come to the conclusion upon a consideration of the provisions of the said Act, that the Deputy Registrar of Trade Marks, Calcutta, had no jurisdiction to rectify the mistake and to cancel the registration. The provision as to rectification and correction of the register is contained in chapter VII of the said Act. Reference may be made to Section 56 of the said Act and the relevant provisions are as follows:—

“56.(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The tribunal may in airy proceeding under this Section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in sub-section (1) or sub-section (2).

(5) Any order of the High Court 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.”

6. On the question of jurisdiction of the Deputy Registrar of Trade Marks, the learned Judge has repelled the contention that he has any inherent power. The learned Judge is of the opinion that inasmuch as there are express provisions as to rectification e.g sub-section (4) of S. 56 there is no scope for the exercise of any inherent power. The learned Judge has accepted an argument put forward by Mr. Sen advanced before him in the court below and also repeated before us to the following effect: It is argued that under the said Act, the words “Registrar” and “Tribunal” are not identical but have different meanings. In the body of the Act, the Registrar has several functions to discharge. The Tribunal again has been entrusted to discharge several prescribed functions. There are again functions which the Registrar or the High Court can discharge as also functions which the High Court alone can discharge. There are functions which the Central Government alone can discharge and others which the Central Government with the Registrar can discharge. The learned Judge is of the opinion that where in the said Act, power is given to a “Tribunal” to do something, it does not refer to the powers or functions of a Registrar mentioned in other parts of the said Act where only the word “Registrar” is used. Briefly speaking, the argument is as follows: The word “Tribunal”, according to Mr. Sen, has been used in the said Act as distinguishable from the word “Registrar” and, therefore, when we come to S. 56(4), power is given to the “Tribunal” and cannot mean the exercise of power by the Registrar alone, and therefore, the operation of sub-sections (1) and (2) of S. 4 is excluded or not attracted. Under sub-section (1) of S. 4, the Central Government may, by notification appoint a person to be known as the Controller-General of Patents, Designs and Trade Marks, who shall be the Registrar for the purposes of this Act and the Controller of Patents and Designs for the purposes of the Indian Patents and Designs Act, 1911. Under sub-section (2) the Central Government may up point other officers for the purpose of discharging the functions of the Registrar under the said Act, such as he may from time to time authorize them to discharge. According to Mr. Sen these officers can only discharge such functions as the Registrar alone is authorised to discharge under the said Act. But where the word “Tribunal” is used, the provision of sub-section (2) is not attracted. This is the view which has been accepted by the Court below. In our opinion, this is not the correct view. It will be noticed that the word “Tribunal” as defined in clause (x) of sub-section (1) of S. 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 S. 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 concern ed 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 S. 56 does not exclude the provisions of sub-section (2) of S. 4. The only thing to note is that in order to attract the provisions of sub-section (4) of S. 56, proceedings must be pending before the Registrar or the persons authorised by him to exercise a particular function under sub-section (2) of S. 4. From the facts stated above, it is obvious that proceedings were pending inasmuch as an application had been made for registration and an opposition had been sent to the Registrar at Bombay but the Deputy Registrar at Calcutta, overlooking the fact that a notice of opposition had been filed, and that the parties had not been heard and before the contest had been decided in favour of the applicant, allowed the application for registration and issued the certificate. As the opposition had not been decided, the proceedings had not rightfully come to an end. In our opinion, the Deputy Registrar of Trade Marks, Calcutta, who had been properly authorised under sub-section (2) of S. 4 for that purpose, could proceed and was competent to proceed under sub-section (4) of S. 56 and make an order of cancellation of registration on the ground that it had not been made in accordance with the law and was in direct contravention of the provisions of Section 23(1)(b) read with Section 21(5) of the said Act. Apart from this, reference may be made to the provisions of clause (d) of sub-section (2) of S. 2. It provides that in the said Act, unless the context otherwise requires, any reference to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of sub-section (2) of S. 4. Therefore, even where we find that a power has been given to the “Registrar” alone, it would include the persons discharging the functions of the Registrar in sub-section (2) of S. 4. It is argued that in sub-section (2) of S. 4, since these persons were to act under the superintendence and direction of the Registrar, they were excluded by reference to the context. In other words, it is argued that since the exercise of the functions of the Registrar by the Deputy Registrars is under his superintendence and direction, they cannot be equated with the Registrar. In our opinion, that would render the provisions of cl. (d) of sub-section (2) of S. 2 a nullity. Wherever such officers will be called upon to act they will be under the superintendence and directions of the Registrar and therefore, the word “Registrar” can never be construed as including a reference to any such officer. I cannot see, therefore, under what circumstances the provisions of cl. (d) of sub-section (2) of S. 2 could be made applicable. The superintendence and direction in sub-section (2) of S. 4 obviously refers to administrative superintendence and direction. The Registrar cannot possibly give direction to the officers as to how and in what manner they should decide a particular case. There is, however, no insuperable difficulty in giving the Registrar administrative superintendence over officers who do not occupy the office of the Registrar but are to be deemed to exercise some of his powers, and thus function as a Registrar for certain purposes. In our opinion, to give the interpretation which Mr. Sen asks us to give, we shall have to modify some of the provisions of the said Act. Under sub-section (2) of S. 4, it has been provided that the Registrar may delegate to officers appointed by the Central Government for that purpose, any function which may be discharged by him under the Act. Rectification of the register is one of his functions, and yet we are called upon to hold that he cannot delegate that power to such officers. On the other hand, the word “Tribunal” in sub-section (4) of S. 56 includes a Registrar when proceedings are pending before him. When acting as such, he has all the powers of the Registrar including the power of rectification of the registration, and yet we are called upon to hold that he cannot delegate that power to the officers appointed under sub-section (2) of S. 4. All this would mean modifications of the provisions of the Act.

7. At one time, Mr. Sen went to the length of saying that there was nothing to prevent the Registrar from delegating the functions of rectification of the register to an officer appointed by the Central Government under sub-section (2) of S. 4, but that such an officer cannot of his own motion proceed under the provisions of sub-section (4) of Section 56. Under Section 109 of the said Act, an appeal lies to the High Court from any order or decision of the Registrar, but there is no provision for an appeal from a Tribunal. Therefore, it would mean that when a Registrar has proceedings pending before him, and becomes a Tribunal his orders cannot be appealed from, although an appeal lies against his orders as a Registrar. Again, an appeal may he from the orders of the Registrar as such, but not from that of officers to whom he has delegated power under sub-section (2) of S. 4. These are impossible interpretations. The result is that we are unable to concur with the interpretation put by the learned Judge in the Court below upon the point in issue and we hold that the Deputy Registrar, Trade Marks, Calcutta, had ample jurisdiction to make the order dated 27th August, 1961. The result is that the appeal succeeds and the order of Datta, J., dated 18th September, 1963 is set aside and the appeal made to the High Court under Section 109 of the said Act is dismissed, it being declared that the order made by the Deputy Registrar, Trade Marks, Calcutta, dated 27th August, 1961 cancelling the registration dated 20th June, 1960 is a competent order. The proceedings for registration may now continue in accordance with law. The respondent, except respondent No. 4 must pay the cost of the appeal.

8. Certified for two counsel.

A.C Sen, J.:— I agree.

LI/AGJ/D.V.C

9. Appeal allowed.