NDLI: Jagatjit Industries Limited Vs. The Intellectual Property Appellace Board & Ors.

Content Provider	Supreme Court of India
e-ISSN	30484839
Language	English
Access Restriction	NDLI
Subject Keyword	1999 Blenders Pride Trade and Merchandise Marks Act Seagram
Content Type	Text
Resource Type	Law Judgement
Jurisdiction	India
Act(s) Referred	Trade and Merchandise Marks Act, 1958 (43 of 1958) Trade Marks Act, 1999 (47 of 1999)
Case(s) Referred	Referred Case 0 Referred Case 1 Referred Case 2
Case Type	Appeal
Court	Supreme Court of India
Disposal Nature	Appeal Dismissed
Headnote	Trade and Merchandise Marks Act, 1999: s.125 - applicability of - Respondent no.4 engaged in manufacture and marketing of alcoholic beverage and claiming to have adopted the trade mark 'Blenders Pride' through its licencee 'Seagram' - Registration of said trade mark was granted in 50 countries - Application for registration in India was pending -Appellant applied for registration of identical trade mark 'Blenders Pride' - Respondent no.4 filed notice of opposition - However, respondent no.4 found that registration certificate was issued to appellant - Writ petition by respondent no.4 - Meanwhile show cause notice issued by Registrar proposing to rectify the register u/s.57(4) - Writ petition disposed of with direction to Registrar to decide the issues arising out of show cause notice - Meanwhile suit for infringement filed by appellant against licencee of respondent no.4 - While Registrar proposed to rectify the register u/s.57(4) by removing the mark - Aggrieved appellant filed writ petition and High Court directed Registrar to dispose of the proceedings before it - Registrar recalled the show cause notice issued stating that he has no jurisdiction to proceed by virtue of s.12 5 and proceedings could only continue before the Appellate Board - Appellate Board held that when the show cause notice was issued, licencee had not yet filed its counter statement as it was not even served with the suit papers and that since suit had not been filed against respondent no.4 but had only been filed against licencee, s.125 would have no application and therefore Registrar order would have to be set aside - Registrar directed to expeditiously decide the opposition proceedings - Appellant filed writ petition - High Court held that no injustice was done by Appellate Board in directing de novo hearing of the case - Held: s.124(1) refers only to the plaintiff and defendant of a suit for infringement, and s.124(1)(ii) specifically refers to the "party concerned" who will apply to the Appellate Board for rectification of the register - Similarly, s.125 also refers only to the "plaintiff' and the "defendant"" in a suit for infringement of a registered trademark - It is obvious, therefore, that an application for rectification of the register can either be made by the defendant who raises a plea in the suit that the registration of the plaintiff's trademark is invalid, or by the plaintiff who questions the validity of the registration of the defendant's trademark in a situation where the defendant raises a defence u/ s.30(2)(e) - It is clear therefore that the application for rectification of the register referred to in s.125(1) could only be an application (given the facts of the present case) by the defendant in the suit for infringement - The defendant being licencee, it is clear that the Section would have no application - Respondent no. 4 has not been made a party defendant to the said suit - Also, the very issue as to validity of the registration of the trademark concerned has to ·be determined in the application for rectification of the register, which would obviously bind only the parties to the suit and nobody else - For these reasons, the application for rectification, not having been made by any of the party defendants in the said suit for infringement and passing off. s.125(1) would have no application. ss.21(2), 23(1) - Opposition to registration -Application for registration of impugned trade mark published in journal on 7th October 2003 - Respondent no.4 seeking extension of one month's time for filing its notice of opposition on 6.1.2004 ~On 19.1.2004, respondent no.4 filed its notice of opposition - On 16.2.2004, Trade Mark Registry issued a notice to 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 trade mark would be deemed to be abandoned - On 20. 1 .2005. respondent no. 4 came to know that trade mark registration certificate had been issued to appellant on 13.1.2004 itself-Held: Time was extended by Registrar as evidenced by letter dated 16.2.2004 - Therefore, any registration certificate granted prior to 30 days extended period from 6.1.2004 would be violative of s.23(1) - Therefore, registration certificate having been issued on 13.1.2004 would be violative of s.23(l)(a) and register would have to be rectified by deleting the said trademark therefrom.s.57(4) - Territorial jurisdiction -Show cause notice u/s.57(4) issued by Registrar in Bombay - Application for registration of trade mark made in Delhi - Plea that the show cause notice was without jurisdiction - Held: Under s.57(4) of the Act, the suo motu power can only be exercised by the Registrar himself. being the "Tribunal" referred to in sub-sections (1) and (2) of the said Section - Therefore, the power to be exercised u/s.57(4) can only be exercised by the Registrar of Trade Marks himself - There is only one such Registrar and his registered office is in Bombay - The Assistant Registrars in the other parts of the country including Delhi all act under the superintendence and directions of the Registrar, Bombay, as is clear from s. 3 (2) of the Act - Therefore, plea that show cause notice issued by Registrar in Bombay was without jurisdiction was without substance.
Judge	Hon'ble Mr. Justice R.F. Nariman
Neutral Citation	2016 INSC 74
Petitioner	Jagatjit Industries Limited
Respondent	The Intellectual Property Appellace Board & Ors.
SCR	[2016] 1 S.C.R. 808
Judgement Date	2016-01-20
Case Number	430

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