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IN THE HIGH COURT OF KERALA
S. SAGHIR AHMAD, K.T. THOMAS, JJ.
Whirlpool Corporation - Appellant
v.
Registrar of Trade Marks - Respondent
Decided on : 26-10-1998
WHIRLPOOL - Trade Mark Registration - Trade and Merchandise Marks Act, 1958 - Sections 45, 46, 56(4) - The court discussed the registration and renewal of the Trade Mark 'WHIRLPOOL' under the Trade and Merchandise Marks Act, 1958, as well as the proceedings related to passing off and infringement of the Trade Mark. The key legal provisions interpreted include Sections 45, 46, and 56(4) of the Act, which deal with rectification and removal of entries from the Register, and the issuance of notices for cancellation of registration. The court's decision was influenced by the interpretation of these provisions in determining the jurisdiction of the Registrar and the High Court in issuing notices under Section 56(4) and the nature of the proceedings under the Act.
Fact of the Case:
The appellant, owner of the Trade Mark 'WHIRLPOOL', filed a Suit for passing off in the Delhi High Court against Chinar Trust for using the same Trade Mark. The appellant also applied for renewal of the Trade Mark and sought amendment of the plaint to include the ground of infringement.
Finding of the Court:
The court analyzed the jurisdiction of the Registrar and the High Court in issuing notices for cancellation of registration under Section 56(4) of the Act. The court considered the nature of the proceedings related to passing off and infringement of the Trade Mark in determining the authority to issue the notice.
Issues: Jurisdiction of the Registrar and the High Court in issuing notices under Section 56(4) of the Act, and the nature of the proceedings related to passing off and infringement of the Trade Mark.
Ratio Decidendi: The court held that the nature of the proceedings and the authority to issue notices for cancellation of registration under Section 56(4) depend on the interpretation of the Act and the specific provisions related to rectification, removal of entries, and infringement of Trade Marks.
Final Decision: The court's final decision regarding the jurisdiction and authority to issue notices under Section 56(4) was not explicitly provided in the judgment.
Key Points: - The court considered the jurisdiction of the Registrar and the High Court in issuing notices under Section 56(4) of the Act (!) . - The decision analyzed whether the pendency of a passing-off suit affects the Registrar’s or High Court’s authority to issue a Section 56(4) notice (!) (!) . - The case involved renewal and cancellation issues for the Trade Mark "WHIRLPOOL" and proceedings for rectification/removal of entries under Sections 45 and 46 (!) (!) (!) (!) . - There was a dispute over whether the "proceeding concerned" for Section 56(4) is a suit (in a High Court) or a Registrar-initiated proceeding, depending on the interpretation of the Act (!) (!) . - The appellant sought to include infringement grounds in a civil suit while renewal/cancellation actions were ongoing, affecting the jurisdictional question (!) (!) . - The Registrar issued a Section 56(4) notice triggering a challenge in Bombay High Court, which was part of the appeal (!) . - The judgment discusses whether the nature of the proceedings (suit vs. act-proceeding) determines who can issue the notice, suggesting the authority depends on interpretive views of Sections 45, 46, and 56(4) (!) . - The final decision on jurisdiction/authority to issue notices under Section 56(4) was not explicitly provided in the judgment (!) . - The timeline of registrations, renewals, and subsequent rectification actions forms the factual backdrop to the jurisdictional question (!) (!) (!) (!) . - The counsel for the Registrar argued that proceedings remained under the Act’s purview despite a related suit, while counsel for the appellant argued otherwise (!) (!) .
S.SAGHIR AHMAD, J.
1. WHIRLPOOL, true to their name, have created a WHIRLPOOL of litigation in this country. Based, as they are, in the United States of America, they started the gyrating movement by applying for registration of their Trade Mark “WHIRLPOOL” to the Registrar of the Trade Marks under the Trade Marks Act, 1940, which has since been replaced by the Trade and Merchandise Marks Act, 1958 and which, for the sake of brevity, shall hereinafter be referred to as the “Act”. The Trade Mark was duly registered and a Certificate of Registration was issued on 31st of July, 1957 which was renewed twice, in 1962 for a period of seven years and again for seven years with effect from 22.2.70. Since further renewal was not obtained after 1977, it was removed from the Register but the appellants continued to publicise their Trade Mark “WHIRLPOOL” as also the company name through publications which had wide circulation in this country and thus managed to maintain their reputation among the business circle including prospective customers and buyers.
2. On 6th of August, 1986, Mrs. Sumitra Charat Ram and Mr. N. R. Dongre, as Trustees of Chinar Trust, applied for registration of the Trade Mark “WHIRLPOOL” in Class 7 under Application No. 458134, which has duly advertised by the Registrar in Trade Marks Journal No. 945 on page 845 pursuant to which the appellant filed their Opposition on 6th January, 1989, but their objections were dismissed by the Assistant Registrar by his order dated 12.8.1992. An appeal against this order which was filed in the Delhi High Court on 7.11.1992 has since been admitted on 1.2.1993 and registered as C.M. (Main) No. 414 of 1992.
3. In the meantime, “WHIRLPOOL” was registered as the Trade Mark of the Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was granted to them. A petition for rectification and for removal of this entry from the Register has already been filed by the appellant before the Registrar on 4.8.1993 under Sections 45 and 46 of the Act. It is still pending.
4. Since Chinar Trust had also started using the Trade Mark “WHIRLPOOL” in relation to certain washing-machines, allegedly manufactured by them, the appellant, as owner of the Trade Mark “WHIRLPOOL”, filed a Suit (Suit No. 1705 of 1994) for passing off in the Delhi High Court with an application for temporary injunction under Order 39 Rules 1 and 2 of the Code of Civil Procedure for restraining the defendants, namely, Chinar Trust, etc., from using the Trade Mark WHIRLPOOL in relation to their products. A single Judge of the Delhi High Court granted temporary injunction to the appellant on 31.10.1994 which was upheld by the Division Bench on 21.4.1995. Special Leave Petition filed against this order by the Chinar Trust has already been dismissed by this Court on 30.8.1996.
5. On 28.2.1997, the appellant filed an application in Form TM-12 for renewal of the Trade Mark “WHIRLPOOL” in Class 7 and the Registrar, by his order dated 29th July, 1997, allowed the renewal for three successive periods, namely, 22.2.1977, 22.2.1984 and finally 22.2.1991. Thereafter, on 8th August, 1997, appellant made an application under Order 6 Rule 17 C.P.C. for amendment of the plaint in Suit No. 1705 of 1994, referred to above, so as to include the ground of infringement of the Trade Mark also in the suit but the application is still pending in the Delhi High Court which has already granted time twice to the defendants, namely, Chinar Trust, to file a reply.
6. In the meantime, Chinar Trust, through its attorneys, wrote on 10th September, 1997 to the Registrar to take suo motu action under Section 56(4) for cancellation of the Certificate of Renewal granted to the appellant on 29th July, 1997 and the Registrar, acting on that request, issued a notice to the appellant on 26th September, 1997 requiring it to show cause why the Certificate of Registration be not cancelled. Against this notice, the appellant filed a writ petition
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