A majority of the case load of the Indian courts is, probably, made up of procedural cases, and most of these tend to be relatively straightforward. Yet, there are some cases that are heavily procedural and also simply ‘spicy’! The case at hand, Jagatjit Industries Ltd. v. the Intellectual Property Appellate Board and Ors., is one such case. The central issues in this case revolve around Form TM-44, the powers of the Registrar of Trademarks, and S. 125 of the Trademarks Act, 1999. The facts are crucial but slightly complex. Thus, this post first explains the facts and issues of the case, and then discusses the Supreme Court’s judgment. [Long post ahead!]
The Facts
The Respondent No. 4 in this case is Austin Nichols, a subsidiary of USA-based Pernord Ricard S.A. Austin Nichols claims to have coined and adopted the ‘Blenders Pride’ (‘BP’) mark is through its licensee M/s Seagram Co. Ltd, in 1973, and has been using it since. Austin Nichols has been using the mark in India since 1995 through its Seagram India Pvt. Ltd.
First issue – Form TM-44
The appellant here, Jagatjit Industries, had applied for the ‘Blenders Pride’ mark, and its application was advertised in October 7, 2003. Respondent No. 4 here had opposed the appellant’s registration, after applying for a one month extension through Form TM-44.
This application forms the first bone of contention. This Form-44 was filed on January 6, 2004, one day before the expiry of the statutory three month period. The opposition itself was filed on January 19, 2004, with the Trade Mark Registry issuing notice to the appellant on February 16, 2004. Since the Registrar had not passed an order explicitly accepting the Form, the question before the Court was whether an explicit order was necessary, or if the application had been accepted implicitly.
Second issue – Section 125
However, before that, respondent no. 4 learnt on January 20, 2005 that the appellant’s application had been granted on January 13, 2004 itself. On January 14, 2005, the appellant also filed a suit of infringement and passing off against, inter alia, Seagram. The latter responded in April 2006 by pleading for a stay, noting that the registration was under challenge and rectification proceedings are under way.
While all this was happening, the respondents filed a writ petition to remove the appellant’s marks from the register soon after they became aware that they had been granted. Simultaneously, the Registrar issued a show cause notice on February 16, 2005 to the appellants suo moto under S. 57(4) of the Trademarks Act, stating that the registration had been issued wrongly, and proposing to rectify the register as per the recommendations of Austin Nichols. The writ petition was disposed off with the Court leaving the matter to the Registrar.
The Registrar confirmed his earlier order by a letter dated May 26, 2005, and asked the appellant to return its registration certificate. The appellant filed a writ petition against this order on May 31, 2005, which concluded with the Registrar recalling his suo moto show cause notice by an order dated November 14, 2005, stating that the jurisdiction on the issue was limited to the Appellate Board under S. 125 of the Trademarks Act.
The appellants’ argument here was that the rectification proceedings before the Registrar were barred by S. 125. As a suit for infringement had already been filed, the jurisdiction for such proceedings was argued to be limited to the IPAB under S. 125. S. 125 of the Trademarks Act states that if the rectification proceedings are instituted after an a case for infringement has already been filed by the parties involved, they can only be filed with the Board in an infringement suit. Here, the appellants relied on the Whirlpool Corporation v. Registrar of Trademarks, Mumbai. They also argued the Registrar anyway did not have the jurisdiction to pass the order, as under S. 125, the jurisdiction was limited to the Appellate Board.
Curiously enough, the suo moto show cause was issued by the Mumbai Registrar, while the application itself had been made by the Delhi Registrar. Therefore, another bone of contention was that the Mumbai Registrar did not have the competent jurisdiction to pass the order.
The Rest of the Procedural History
The Intellectual Property Appellate Board (‘IPAB’) then passed a judgment on October 6, 2006. The IPAB noted that the opposition being taken on record and numbered indicates that the TM-44 filed by respondent no. 4 had been accepted. Therefore, it concluded, the acceptance of the appellant’s application was in error, contrary to S. 23, and invalid in law. The Board also stated that the Registrar’s show cause notice did not violate S. 125 as the infringement suit was against Seagram, and not Austin Nichols, and even so, Seagram hadn’t even received the suit papers yet. It therefore set aside the Registrar’s recall of his show cause notice, and directed the Registrar to respond to the matter.
The appellant made a winning appeal against the Board’s order at the Delhi High Court. The High court set aside the IPAB order, and reinstated the Registrar’s recall of his suo moto order. However, an appeal before the Division Bench overturned the High Court’s order, and the matter thereafter ended up at the Supreme Court.
The Judgment
The Supreme Court’s judgment here was delivered by Hon’ble Justice Rohinton Nariman. For the first limb of the argument, the Court agreed with the Division Bench and found the implied extension of time to be valid. Crucially, the Court relied on S. 131 of the Trademarks Act to conclude that the Registrar’s powers regarding extension of time are ministerial, and no hearing is required for the same. The Court therefore concluded that the appellant’s trademark was registered in error, and should be removed from the register.
Addressing the issue of the Mumbai Registrar’s jurisdiction under s. 57, the Court stated that under the Trademarks Act, there is only one Registrar of Trademarks, situated in Mumbai. The Assistant Registrars of the country all, therefore, act under the superintendence of the Registrar. Therefore, the Court held, there is no conflict in jurisdiction.
The issues under the second limb are twofold. First, can any rectification proceedings be filed before the registrar if an infringement claim has been filed, or would only the have the jurisdiction then under S. 125? Second, is the Registrar’s suo moto recall notice barred by s. 125?
The Court interprets S. 125 here to mean that an application for rectification under S. 125 could only be made by the defendant in the infringement case, which was Seagram. Since the defendant was not Austin Nichols, the Court held that S. 125 would have no effect on the present case as the application for rectification was not filed by any of the parties to the infringement suit. The Court here considered whether Seagram being a licensee of Austin Nichols and having the same authorised signatory would bring the latter under the ambit of S.125, and rejected the argument based on the ‘corporate veil’.
Regardless, the Court also goes on to confirm the Division Bench’s earlier holding that S. 125 is only applicable to applications for rectification, and not to suo moto actions of the Registrar under S. 57 (4). The appellants here tried to draw a parallel between S. 57 and S. 125 of the Trademarks Act and between Ss. 47 and 107 of the 1958 Act, where the latter has been held to restrict the former. The Court, though, states that in S. 125 (1), the width of the reference to S. 57 is cut down by ‘an application for rectification of the register’, and therefore not to the suo moto powers of the Registrar under S. 57 (4).
The Court here distinguished the case at hand with Whirlpool. Taking the facts of that case on record, the Court noted that in that case, the Registrar’s suo moto actions under S. 57(4) had been based on a letter sent by defendants to the Registar. The Court then discusses the parts of the Whirlpool judgment regarding Ss. 107 and 47, and concludes that ‘no argument was made in Whirlpool’s case that S. 57(4) would be independent of S. 125’. The Court, therefore, upheld and restored the Division Bench’s judgment.