India: When The Going Gets Tough

Last Updated: 25 April 2016
Article by R. K Dewan & Co

The Trademark Act, 1999 is quite clear on the substantive rights of the parties however, the procedural aspect is often ambiguous particularly regarding the jurisdiction of the Trademark registrar, the IPAB and the Courts. In the case of Jagajit Industries Limited v IPAB, the Appellant (Jagatjit) had applied for registration of the mark 'BLENDER's PRIDE' and the same was advertised in October, 2003. The registration of this mark was opposed by Austin Nichols (Respondent 2) which operates in India through its licensee Seagram's India (Respondent 1). Respondent 2 filed TM-44, one day before expiry of 3 month statutory period for filing opposition, seeking an extension of one month to file its opposition. Respondent No. 2 was not intimated if their request under TM-44 was accepted by the Registrar; nevertheless, their opposition was served upon the Appellant in February, 2004. In January, 2005 Respondent No. 2 learnt that despite the opposition the Appellant's mark had been registered. Simultaneously, in 2005 the Appellant filed a trademark infringement suit against Respondent 1 before District Court in Jalandhar.

Respondent 2 informed trademark registry about the error in registering Appellant's mark despite pending opposition proceeding, contrary to S. 23 of the Trademark Act. In February, 2005 the Registrar of Trademark issued a show cause notice, under Section 54(7), to Appellant admitting that the registration had been granted erroneously and the same ought to be cancelled. Respondent 2 had filed a writ petition before the Delhi High Court and the court directed that the matter should be heard and disposed off by the Registrar. In the proceedings before the Registrar, the Appellant contended that the show cause notice was not maintainable, on account of conflict of jurisdiction, since it had been issued by Registrar of Bombay not Delhi. It was further contented that opposition was filed by Respondent 2 after expiry of 3 months statutory period. After perusing the response of the Appellant, the Registrar directed the Appellant to return the registration certificate. The Appellant filed a writ petition before Delhi High Court to obtain a stay against this order of the Registrar. The Court passed an interim order of stay and directed the Registrar to dispose off the proceeding. The Registrar recalled the show cause notice and ruled that the matter ought to be heard by the IPAB and not him as the matter would fall under S. 125 since an infringement proceeding had already been instituted (Jalandhar court) and after that a rectification application had been filed. The IPAB ruled that the TM 44 of Respondent 2 had been taken on record, this was implied from the fact that the same was served upon the Appellant, therefore, registration before completion of opposition proceedings would be invalid. Furthermore, the infringement suit had been filed against Seagram's whereas, the rectification Application was filed by Austin Nichols therefore, the Registrar was directed to hear the proceedings and set aside the Registrar's order.

The Appellant filed an appeal against IPAB's order before Delhi High Court and the IPAB's order was set aside. This was followed by an appeal before the Division bench which in turn set aside the Single judge's order. Finally, the matter was appealed before the Supreme Court. The apex Court ruled that the registration of Appellant's mark was an error. Furthermore, the contention of the Appellant that Registrar of Bombay did not have the jurisdiction to hear the matter was held to be incorrect since, the Trademark Registry is located in Mumbai and the Assistant Registrars aided the Registrar in Mumbai therefore, there was no conflict of jurisdiction. Finally the Appellant's contentions relating to S. 125 were rejected on the grounds that for applying S. 125 it was necessary to show that the parties to the infringement suit and rectification application were the same. In the present case the infringement suit was against Seagram's whereas, rectification application had been filed by Austin Nichols. It was concluded that S.125 was only concerned with rectification application and not concerned with the suo-motu powers of the Registrar. The decision of the Division Bench and IPAB was upheld.

This decision gives much needed clarity on the jurisdiction of Registrar and IPAB as well as the powers of the Registrar to issue suo-motu show cause notice.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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