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2012 Supreme(Del) 1778
High Court of Delhi
THE HONOURABLE MR. JUSTICE VIPIN SANGHI
COSTA and Company Pvt. Ltd.
Versus
UOI & Others
W.P.(C) 8694 of 2011 & C.M. No.19662/2011
Decided on : 03-08-2012
For the Petitioner:Rahul Beruar, Subhash Bhutoria, Advocates.
For the Respondents:R1, Neeraj Chaudhari, CGSC, Akshay Chandra, Ravjyot Singh, R3, Ajay Gupta, Sr. Adv. with Vishwanathan, Amol Dixit, Advocates.
Headnote:
Trademark - Transfer of Rectification Application - Trade Marks Act, 1999, Section 47, Section 57, Section 91, Section 125(2), Section 96, Section 98 - The court discussed the jurisdiction of the Appellate Board to transfer rectification proceedings pending before the Registrar to itself, the powers of the Appellate Board as an appellate authority of the Registrar, and the principles of natural justice guiding the Appellate Board. The court also highlighted the role of the Registrar in the transferred proceedings and the absence of specific provisions for supervisory jurisdiction of the Appellate Board over the Registrar.
Fact of the Case:
The petitioner sought to challenge the order allowing the transfer of rectification application from the Registrar to the Appellate Board. The petitioner and respondent No. 3 had filed rectification applications under different sections of the Trade Marks Act, 1999, and the Appellate Board allowed the transfer of respondent No. 3's application to itself.
Finding of the Court:
The court found that the Appellate Board had the jurisdiction to transfer rectification proceedings from the Registrar to itself, especially in cases involving the same parties, subject matter, evidence, and issues. The court also emphasized the role of the Registrar in the transferred proceedings and the absence of specific provisions for supervisory jurisdiction of the Appellate Board over the Registrar.
Issues: The primary issue was the jurisdiction of the Appellate Board to transfer rectification proceedings pending before the Registrar to itself, and the petitioner's contention regarding denial of the right of appeal in case of such transfer.
Ratio Decidendi: The Appellate Board has the power to transfer rectification proceedings from the Registrar to itself in appropriate cases involving the same parties, subject matter, evidence, and issues. The absence of specific provisions for supervisory jurisdiction of the Appellate Board over the Registrar indicates the Parliament's intent to maintain autonomy in the Registrar's functioning.
Final Decision: The writ petition was dismissed, affirming the Appellate Board's jurisdiction to transfer rectification proceedings from the Registrar to itself in suitable cases, and leaving the parties to bear their respective costs.
VIPIN SANGHI, J.
1. The petitioner assails the order dated 05.09.2011 passed by the learned Intellectual Property Appellate Board (the Appellate Board) in MP No.171/2008 in ORA/105/2007/TM/DEL. By this order, the Appellate Board has allowed the respondent No.3’s application to seek transfer of the rectification application preferred by it under Section 47 of the Trade Marks Act, 1999 (the Act) before the Registrar of Trade Marks, Mumbai, (the Registrar), to the Appellate Board. Consequently, the rectification application No.BOM-183681 filed by the respondent No. 3 before the Registrar has been transferred to the Appellate Board from the stage at which it then stood. The Appellate Board has further directed that the two matters, i.e. ORA/105/2007/TM/DEL (rectification application preferred by the petitioner under Section 57 of the Act before the Appellate Board), and the transferred rectification application of the respondent No. 3 shall be listed together at Circuit Bench sitting at Delhi.
2. The factual background may first be narrated. The petitioner applied for registration of the mark ‘Costa’s’ in the year 1990, which was granted in 1997. The same pertained to Class 30. On the other hand, the respondent No. 3 applied for registration of the trademark ‘Costa’ in respect of the goods under class 30 and 42 in the year 2003, and the same was granted registration in the year 2006.
3. The respondent No. 3 applied for rectification of the petitioner’s trademark ‘Costa’s’ in classes 30 and 42 under section 47 of the Trademarks Act in the year 2004. This application was moved before the Registrar. The petitioner also applied for rectification of the respondent No. 3’s trademark „Costa?in the year 2006 by moving an application before the Appellate Board in the year 2007.
4. While both these proceedings were pending, the respondent No. 3 moved the aforesaid application being MP No.171/2008 before the Appellate Board to seek the transfer and consolidation of its rectification proceedings pending before the Registrar to the Appellate Board. As aforesaid, by the impugned order, that application has been allowed.
5. The submission of learned counsel for the petitioner is that the Appellate Board has no statutory power or jurisdiction to transfer to itself the rectification application pending before the Registrar. It is argued that the impugned order denies the right of appeal, which would otherwise be available to the petitioner, in case the respondent No. 3 succeeds in its rectification application before the Registrar, as an appeal lies under Section 91 before the Appellate Board from the order of the Registrar. On this basis, the present petition has been preferred.
6. Upon issuance of notice, the respondent no.3 has put in appearance to contest the petition without filing a reply. The submission of learned senior counsel for the respondent no.3 is that under Section 125(2) of the Act, when an application for rectification of the register is made to the Registrar under Section 47, or Section 57, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to the Appellate Board. He submits that the respondent No. 3 could, therefore, have moved the Registrar for referring the respondent’s application for rectification under Section 47 of the Act to the Appellate Board by resort to Section 125(2) of the Act, since the petitioner’s application for rectification under Section 57 is already pending before the Appellate Board.
7. It is further submitted that Section 96 enables a party to move an application, and also authorizes the Chairman to suo moto transfer any case pending before one bench for disposal to any other bench. It is submitted that the subject matter of both these applications concern the similar trademark, and the contesting parties are also the same, and this position is not even disputed by the petitioner.
1. 8. It is also submitted that the Appellate Board is not bound by the proc
