1998 Supreme(SC) 1085

1998(8) Supreme 176
Supreme Court of India
(From Bombay High Court)
S. Saghir Ahmad & K.T. Thomas, JJ.
Whirlpool Corporation —Appellant
versus
Registrar of Trade Marks, Mumbai & Ors. —Respondents
Civil Appeal No. 5201 of 1998
(Arising from S.L.P. (Civil) No. 748 of 1998)
Decided on 26-10-1998
Counsel for the Parties :
For the Appellant : Iqbal Chagla, P. Chidambaram, Sr. Advocates, A.R. Lall, S.S. Rana, Ms. Anuradha Salhotra, Vikrant Rana, Advocates.
For the Respondents : R.N. Trivedi, Additional Solicitor General, S.C. Agrawal, Sr. Advocate, N.K. Anand, R.K. Sanghi, Ms. Binu Tamta, D.S. Mehra, Narender Mohan Sharma, Ms. Ritu Singh and R.P. Singh, Advo­cates.

Important Points
1. Power under Article 226 can be exercised not only for enforcement of fundamental rights but also for any other purpose; alternative remedy would not operate as absolute bar.
2. High Court and Registrar of Trade Mark, on their own are not Tribu­nal within meaning of Section 2(1)(x) of Trade and Mercandise Act; they become tribunal if ‘the proceeding concerned’ comes to be pending before either of them.
3. Jurisdiction conferred by Section 56 of Trade and Mercandise Act to Registrar is curtailed by Section 107 and jurisdiction of Registrar is totally excluded in those cases covered by Section 107; if proceedings are pending before High Court Registrar cannot have jurisdiction to issue show cause notice u/s 56(4). Where suit for passing of is pend­ing before High Court, Registrar cannot legally issue any suo motu notice u/s 56(4) of Trade and Mercandise Act.

Headnote:(i) Constitution of India—Article 226—Writ jurisdiction—Scope of—Power of Court plenary in nature—Not limited by any other provisions of Constitution — Power can be exercised not only for enforcement of fundamental rights but also for any other purpose — Alternative remedy would not operate as an absolute bar.

       Held : The power to issue prerogative writs under Article 226 of the Constitution is plenary in nature and is not limited by any other provision of the Constitution. This power can be exercised by the High Court not only for issuing writs in the nature of Habeas Corpus, Mandamus, Prohibition, Quo Warranto and Certiorari for the enforcement of any of the Fundamental Rights contained in Part III of the Consti­tution but also for “any other purpose”. Under Article 226 of the Constitution, the High Court, having regard to the facts of the case, has a discretion to entertain or not to entertain a Writ Petition. But the High Court has imposed upon itself certain restrictions one of which is that if an effective and efficacious remedy is available, the High Court would not normally exercise its jurisdiction. But the alternative remedy has been con­sistently held by this Court not to operate as a bar in at least three contingencies, namely, where the Writ Petition has been filed for the enforcement of any of the Fundamental Rights or where there has been a violation of the principle of natural justice or where the order or proceedings are wholly without jurisdiction or the vires of an Act is challenged. The jurisdiction of the High Court is entertaining a Writ Petition under Article 226 of the Constitution, in spite of the alternative statutory remedies, is not affected, specially in a case where the authority against whom the Writ is filed is shown to have had no jurisdiction or had purported to usurp jurisdiction without any legal foundation. (Paras 13, 14 & 19)

       (ii) Interpretation of Statute—Statutory definition—Interpretation of—All statutory definitions have to be read subject to the qualifi­cation variously expressed in the definition clauses which created them—Court has not only to look at the words but also to look at the context, collocation and object of such words.

       Held : The principle is that all statutory definitions have to be read subject to the qualification variously expressed in the definition clauses which created them and it may be that even where the definition is exhaustive inasmuch as the word defined is said to mean a certain thing, it is possible for the word to have a somewhat different meaning in different sections of the Act depending upon the subject or context. That is why all definitions in statutes generally begin with the qualifying words, similar to the words used in the present case, namely ‘unless there is anything repugnant in the sub­ject or context’. Thus there may be sections in the Act where the meaning may have to be departed from on account of the subject or context in which the word had been used and that will be giving effect to the opening sentence in the definition section, namely ‘unless there is anything repugnant in the subject or context’. In view of this qualification, the Court has not only to look at the words but also to look at the context, the collocation and the object of such words relating to such matter and interpret the meaning intended to be conveyed by the use of the words under those circumstances.” (Para 25)

       (iii) Trade and Mercandise Act, 1958—Section 2(1)(x)—Tribunal—Meaning of—High Court and Registrar of Trade Mark on their own are not Tribu­nal—They become Tribunal if ‘the proceeding concerned’ comes to be pending before either of them.

       (iv) Words and phrases—Tri­bunal as occuring in Section 2(1)(x) of Trade and Mercandise Act.

       Held : Before considering the contextual aspect of the definition of “TRIBUNAL”, we may first consider its ordinary and simple meaning. A bare look at the definition indicates that High Court and the Regis­trar, on their own, are not “TRIBUNAL”. They become “TRIBUNAL” if “the proceeding concerned” comes to be pending before either of them. In other words, if “the proceeding concerned” is pending before the High Court, it will be treated as “TRIBUNAL”. If, on the contrary, “the proceeding concerned” is pending before the Registrar, the latter will be treated as “TRIBUNAL”. Since “TRIBUNAL” is defined in Section 2 which, in its opening part, uses the phrase “Unless the context otherwise requires”, the definition, obviously, cannot be read in isolation. The phrase “Unless the context otherwise requires” is meant to prevent a person from falling into the whirlpool of “definitions” and not to look to other provisions of the Act which, necessarily, has to be done as the mean­ing ascribed to a “definition” can be adopted only if the context does not otherwise require. (Paras 26 & 27)

       Learned counsel for the respondent—Chinar Trust, at this stage, invoked the Rule of Punctuation in English Grammar and contended that the definition of “TRIBUNAL” is amply clear and requires no interpre­tative exercise as there is a distinction between the “Registrar” and the “High Court” inasmuch as the Registrar will have jurisdiction irrespective of the pendency of any proceeding, the High Court will have jurisdiction only when “proceeding concerned” is pending before it. This he tried to show by pointing out that the words “as the case may be” are placed between two commas, one at the beginning immediately after the word “Registrar” and the other at the end, with the result that the words “Tribunal means the Registrar” stand out distinctly, while the words “High Court before which the proceeding concerned is pending” stand out separately as an independent phrase. It is contended that the words “before which the proceeding concerned is pending” will not be applicable to the Registrar and, therefore, the Registrar can exercise the jurisdiction under Section 56 irrespective of pendency of any “proceeding”. The argument is fallacious. Learned counsel for the Chinar Trust is trying to give a measure of importance to the punctuation mark “comma”, more than it deserves. If “comma” were that important, there, incidentally, is another “comma” before and after the word “High Court”. This “comma” obviously separates the phrase “before which the proceeding concerned is pend­ing” from the word “High Court” with the result that this phrase becomes applicable both to “High Court” and the “Registrar”. The word “concerned” in this phrase is also of significance inasmuch as the word “TRIBUNAL” has been used in different sections in relation to different proceedings. At some places in the Act, all the three words, namely, “Registrar”, “High Court” and “Tribunal” have been used which indicate that if the proceeding under the particular provision is pending before the “Registrar” then on account of that proceeding, the Registrar becomes the “TRIBUNAL”. So also, if the proceeding is pend­ing before the High Court then that proceeding makes the High Court a “TRIBUNAL”. It is in that sense that the word “proceeding concerned” has to be understood. (Paras 60 & 61)

       The respondent invoked another rule of English grammar relating to the use of pronouns “which” and “whom” and contended that if the phrase “before which the proceeding concerned is pending” were meant to apply to the “Registrar”, the Legislature would have used the pronoun “whom” instead of “which” and the phrase would have read “before whom the proceeding concerned is pending”. The High Court, it is contended, is an inanimate object and, therefore, the pronoun “which” has been used. “Pronoun” means “for-a-noun”. It is defined as a word used “in­stead of a noun”. The Pronoun with which we are concerned in this case is the relative pronoun, namely, the pronoun “WHICH”, which, incidentally, can be used in many other forms, namely, as an interrog­ative pronoun, an interrogative adjective, or as a relative adjective. Its use is not limited to inanimate objects or animals but it can also be used for “people” as explained in A Practical English Grammar (A.J. Thomson and A.V. Martinet - Fourth Edition). The two Nouns, namely the “Regis­trar” and the “High Court”, used in the definition of “TRIBUNAL” are followed by the relative pronoun “which” and, therefore, the phrase “before which the proceeding concerned is pending’ would relate to both the Nouns, namely, the “Registrar” and the “High Court”. This rule of Grammar which was sought to be pressed into aid by the learned counsel for the respondent is, therefore, of no use to him. Moreover, in a situation of this nature, mere rule of Grammar would not lead to correct interpretation of the definition which has to be analysed, as we have already done, in the background of those provi­sions in which the word “TRIBUNAL” has been used together with the purpose for which it has been used keeping in mind the over­all scheme of the Act. (Paras 62 to 64)

       (v) Trade and Mercandise Act, 1958—Section 56(4) read with Sec­tion 107—Can or vary registration —Power to—Extent of jurisdiction of Registrar vis-a-vis High Court—Jurisdiction of Registrar and High Court though apparently concurrent is mutually exclusive — Extent of jurisdiction conferred by Section 56 to Registrar is curtailed by Section 107—In situation contemplated u/s 107 validity of registra­tion of trade mark can be determined only by High Court—Jurisdiction of Registrar in those cases covered by Section 107 is totally exclud­ed—If proceedings are pending before High Court Registrar will have to keep his hands off and cannot touch those or any other proceedings which may relate to those proceedings.

       Appellant original register­ed owner of trade mark ‘whirl­pool’ did not obtain renewal after 1977. In 1986 the respondent applied for regis­tration of trade mark whirl­pool in their favour. Registrar rejected objections filed by the appellant. Appeal thereagainst was filed before the High Court and still pending. In the meanwhile ‘whirl­pool’ was registered in 1992 in favour of the respondent. The appel­lant filed petition for rectification and removal of entry, under Sections 45 and 46 which was still pending. When the respondent started using the trade mark appellant filed suit for passing off and obtained ad interim injunction. While so the appellant filed application for renewal which was gran­ted. Thereafter the appellant filed amendment of plaint to include infringement of trade mark. At this juncture, the respondent moved Registrar to take suo motu action for cancellation of renewal of registration. The Registrar issued show cause notice u/s 56(4) to the appellant. The appellant filed writ petition to quash the show cause notice contending that the Registrar had no jurisdiction to issue the notice since suit filed by the appellant was pending before the High Court which alone could take action. The writ petition was dismissed.

       Held :The functions and extent of jurisdiction of the Registrar and that of the High Court which, incidentally, has also been constituted as the Appellate Authority of the Registrar, have been distinctly set out in different provisions of the Act. There are, however, certain mat­ters for which jurisdiction has been given to the “TRIBUNAL” which, by its definition, includes the “High Court” and the “Registrar” and, therefore, the question is “can both be said to have “concurrent” jurisdiction over matters as are set out, for example, in Sections 9, 10, 26, 45, 46, 47 and 56". If the proceeding is cognisable both by the Registrar and the High Court, which of the two will have jurisdiction to entertain such pro­ceeding to the exclusion of the other or the jurisdiction being concur­rent, can the proceeding go on simultaneously before the High Court and the Registrar, resulting, may be, in conflicting decisions at the end, is a question which seems to be answered by the words “before which the proceeding concerned is pending” occurring in the definition of “TRIBU­NAL” in Section 2(1)(x) of the Act. Let us test whether the answer is correct. (Paras 49 & 50)

       Section 56 contemplates proceedings of varying nature. The pro­ceedings contemplated by sub-section (1) relate to the cancellation of Trade Mark or varying the registration of Trade Mark, on the ground that the condition on which the registration was granted, was either violated or there was failure in observing the condition of registration. These proceedings may be entertained either by the High Court or the Registrar on the application, and, at the instance, of the “person aggrieved”. The proceedings contemplated by sub-section (2) of Section 56 relate to the absence or omission of an entry in the Register or an entry having been made without sufficient cause or an entry wrongly remaining on the Register or there being any error or defect in an entry in the Register. Such proceedings may also be entertained either by the Registrar or the High Court on an application made in the prescribed manner by a “person aggrieved”. The High Court or the Registrar may, in these proceedings, pass an order either for making an entry, or expunging or varying the entry. In these proceedings which may be pending either before the High Court or the Registrar, it would be open to either of them to decide any further question which may be necessary or expedient to decide in connection with the recti­fication of the Register. Obviously, this gives very wide jurisdiction to the High Court or the Registrar working as a TRIBUNAL as the jurisdiction is not limited to the proceedings pending under sub-section (1) or sub-section (2) but extends also to decide, in the same proceedings, any other question which may legitimately arise in con­nection with the rectification proceedings. The jurisdiction conferred on the High Court or the Registrar under sub-section (1) or sub-section (2) can also be exercised suo motu subject to the condition that a notice is issued to the parties concerned and an opportunity of hearing is given to them before pass­ing any order contemplated by sub-section (1) or sub-section (2). The Registrar and the High Court have also been given the juris­diction under this Section to order that a Trade Mark registered in Part A shall be shifted to Part B of the Register. (Paras 51 to 54)

       The extent of jurisdiction conferred by Section 56 on the Regis­trar to rectify the Register, is, however, curtailed by Section 107 which provides that an application for rectification shall, in certain situations, be made only to the High Court. These situations are mentioned in sub-section (1) of Section 107, namely, where in a suit for infringement of the registered Trade Mark, the validity of the registration is questioned by the defendant or the defendant, in that suit, raises the defence contemplated by Section 30(1)(d) in which the acts which do not constitute an infringement, have been specified, and the plaintiff in reply to this defence questions the validity of the defendant’s Trade Mark. In these situations, the validity of the registration of the Trade Mark can be determined only by the High Court and not by the Registrar. Section 107 thus impels the proceedings to be instituted only in the High Court. The jurisdiction of the Registrar in those cases which are covered by Section 107 is totally excluded. Significantly, Section 107(2) provides that if an application for rectification is made to the Registrar under Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks fit, refer that application, at any stage of the proceeding, to the High Court. Similarly, under Section 111 of the Act, in a pending suit relat­ing to infringement of a Trade Mark, if it is brought to the notice of the Court that any rectification proceedings relating to plaintiff’s or defendant’s Trade Mark are pending either before the Registrar or the High Court, the proceedings in the suit shall be stayed pending final decision of the High Court or the Registrar. Even if such pro­ceedings are not pending either before the Registrar or the High Court, the trial Court, if prima facie satisfied that the plea regard­ing invalidity of plaintiff’s or defendant’s Trade Mark is tenable, may frame an issue and adjourn the case for three months to enable the party concerned to apply to the High Court for rectification of the Register. If within three months, the party concerned does not ap­proach the High Court, the plea regarding invalidity of Trade Mark would be treated as abandoned but if such an application has been given hearing, the suit would be stayed awaiting final decision of the High Court. The finding of the High Court would bind the parties and the issue relating to the invalidity of Trade Mark would be decided in terms of those findings. In this background, the phrase “before which the proceeding con­cerned is pending” stands out prominently to convey the idea that if the proceeding is pending before the “Regis­trar”, it becomes the “TRIBU­NAL”. Similarly, if the proceeding is pending before the “High Court”, then the High Court has to be treated as “TRIBUNAL”. Thus, the jurisdiction of the Registrar and the High Court, though apparently concurrent in certain matters, is mutually exclusive. That is to say, if a particular proceeding is pending before the Registrar, any other proceeding, which may, in any way, relate to the pending proceeding, will have to be initiated before and taken up by the Registrar and the High Court will act as the Appellate Authority of the Registrar under Section 109. It is obvious that if the proceedings are pending before the High Court, the Registrar will keep his hands off and not touch those or any other proceedings which may, in any way, relate to those proceedings, as the High Court, which has to be the High Court having jurisdiction as set out in Section 3, besides being the Appellate Authority of the Registrar has primacy over the Registrar in all matters under the Act. Any other interpretation of the definition of “TRIBUNAL” would not be in consonance with the scheme of the Act or the contextual background set out therein and may lead to conflicting decision on the same question by the Registrar and the High Court besides generating multiplicity of proceedings. (Paras 56 to 59)

       In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellant’s opposi­tion to the registration of respondent’s Trade Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court, which was admitted on 01.02.1993 and has since been registered as C.M. (Main) 414 of 1992 thereafter on 04.08.1993 the appellant filed a rectifica­tion petition under Sections 45 and 46 of the Act for removing the entry relating to the Trade Mark for which Registration Certificate was granted to the respondents on 30.11.1992. The appellant has also filed a suit for passing-off (Suit No. 1705 of 1994) in the Delhi High Court against the respondents in which an order of temporary injunc­tion has been granted in favour of the appellant which has been upheld by the Division Bench of the High Court as also by this Court. In that suit, an amendment application has also been filed so as to include the ground of infringement of the appellant’s Trade Mark but that application has not yet been disposed of. It is, however, obvious that if the application is allowed, the amendments will relate back to the date of the application, if not to the date of plaint. In view of the pendency of these proceedings in the High Court and specially in view of Section 107 of the Act, the Registrar could not legally issue any suo motu notice to the appellant under Section 56(4) of the Act for cancellation of the Certificate of Registration/Renewal already granted. The appeal is consequently allowed and the show-cause notice issued. (Paras 68 & 69)