2016 Supreme(SC) 58

SUPREME COURT OF INDIA
Kurian Joseph, R.F. Nariman, JJ.
JAGATJIT INDUSTRIES LIMITED – APPELLANT
VERSUS
THE INTELLECTUAL PROPERTY APPELLATE BOARD & ORS. – RESPONDENTS
CIVIL APPEAL NO. 430 OF 2016 (Arising out of S.L.P. (Civil) No.14444 of 2009)
Decided On : 20-01-2016

IMPORTANT POINT
Power of Registrar to correct his own mistakes under Section 57(4) of Act is wholly independent of right of a party to make or not to make application for rectification of register.

Headnote:(A) Trade Marks Act, 1999 – Sections 57, 125 and 131 – Infringement of trade mark – Challenge to registration of trade mark alleged to be infringed – Any registration certificate granted prior to 30 days extended period from 6.1.2004 would be violative of Section 23(1) of the Act – Appellate Board and Division Bench are clearly right in declaring that registration certificate, having been issued on 13.1.2004, would be violative of Section 23(1)(a) and register would have to be rectified by deleting trademark therefrom – Power of Registrar to correct his own mistakes under Section 57(4) of Act is wholly independent of right of a party to make or not to make application for rectification of register, referred to in Section 125 – Judgment passed by Division Bench upheld. (Paras 11, 16, 17 and 18)

       (B) Trade Marks Act, 1999 – Sections 124 and 125(1) – Rectification of Register – Application for rectification of register can either be made by defendant who raises a plea in suit that registration of plaintiff’s trademark is invalid, or by plaintiff who questions validity of registration of defendant’s trademark in a situation where defendant raises defence under Section 30(2)(e) – Application for rectification of register referred to in Section 125(1) could only be an application by defendant in suit for infringement – Very issue as to validity of registration of trademark concerned has to be determined in application for rectification of register which would bind only parties to suit and nobody else – Application for rectification not having been made by any of party defendants in suit for infringement and passing off, Section 125(1) would have no application. (Para 24)

       (2000) 10 SCC 383 – Discussed.

       (2005) 4 SCC 480 ; (1984) 3 SCC 46 – Relied.

       (C) Trade Marks Act, 1999 – Sections 57(4) and 125(1) – Rectification of Register – Section 125(1) would only apply to applications for rectification of the register, and not to the exercise of suo motu powers of the Registrar under Section 57(4) – If Registrar is barred from undertaking suo motu exercise under Section 57(4) to maintain purity of register, there could conceivably be cases where defendant, after raising plea of invalidity in a suit for infringement, chooses not to proceed with filing of a rectification petition before Appellate Board – Registrar’s power to maintain purity of register of trademarks would still remain intact even in such cases. (Para 25)

       Facts of Case:

       Suit for infringement of its trademark had been filed by the appellant herein in the District Court of Jalandhar inter alia against the licensee of respondent No.4, namely, Seagram Distilleries Private Limited. On 21.4.2005, Seagram India Private Limited filed a written statement in which it took up a plea that the plaintiff’s registration is under challenge and since rectification proceedings are sub-judice before the Registrar of Trademarks, the suit is liable to be stayed till final disposal of the said rectification proceedings. It further went on to plead that the registration obtained by the plaintiff (i.e. the appellant herein) is void ab initio and confers no right on the plaintiff and, therefore, questioned the very maintainability of the suit for infringement.

       Findings of Court:

       No argument was made in Whirlpool’s case that Section 57(4) would be independent of Section 125(1) for the reasons stated hereinabove. Further, it is clear that one of the parties to the suit for passing off in the said decision applied for rectification, unlike the present factual scenario. For these two reasons also the said judgment would have no application to the facts of the present case. Also, it is not clear from the facts stated in the said judgment as to how Section 107(1) would be attracted. A suit for passing off alone had been filed – an amendment application to add the relief of infringement of trademark was pending. This is perhaps why this Court referred to the said amendment application and said that if it were to be granted it would relate back to the date of the suit itself. The defendant in the said suit obviously could not have filed a written statement taking up a plea of invalidity of the registered trademark before an amendment application of the plaintiff adding the relief of infringement had been allowed. For this reason also we find that the aforesaid judgment cannot be said to have laid down any principle of law touching upon Sections 125 and 57 of the Act.

       Result : Appeal dismissed.