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.
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