The judgment established the principle that the jurisdiction of the Registrar and the primacy of the High Court in matters under the Trade Marks Act, 1999 are to be interpreted in a manner that avoids conflicting decisions and ensures the effective exercise of powers by the respective authorities.

JUDGMENT :

Prayer: Appeals filed under Clause 15 of the Letters Patent against the orders dated 10.03.2023 made in W.P.No.17349 of 2009, W.P.No.17351 of 2009 and W.P.No.17350 of 2009 respectively.

Heard Mr.Arun C.Mohan, learned counsel for the appellants and Mr.Rajesh Vivekanandan, Deputy Solicitor General of India for the respondents.

2. The appellants assail the order passed by the learned Single Judge thereby dismissing the writ petitions. The appellants had assailed the show cause notice issued to them by the Registrar of Trade Marks.

3. The appellants have adopted the trade mark “Arrow” in the year 1994 for the manufacture and sale of Plastic Tag Pins and Plastic Tag Guns extensively. The same “Arrow” trade mark was further extended to manufacture and sale of “Textile Cleaning Spray Guns” in the year 1997. The trade mark of the appellants is registered under the provisions of the Trade Marks Act, 1999. The appellants are issued with a show cause notice stating that the registration of trade marks or device is preferable under the Central Government directions being the property of the Government of India. The learned Single Judge did not entertain the writ petitions on the ground that the appellants have been issued with a show cause notice and that the High Court would not adjudicate the disputed questions of fact under Article 226 of the Constitution.

4. Learned counsel for the appellant strenuously contends that the show cause notice can be assailed before this Court in exercise of its extraordinary jurisdiction under Article 226 of the Constitution, more particularly when the same has been issued without authority and or jurisdiction.

5. Learned counsel, relying upon the judgment of the Apex Court in the case of Whirlpool Corporation v. Registrar of Trade Marks [(1998) 8 SCC 1], submits that if a particular proceeding is pending before the Registrar, any other proceeding, which may, in any way relate to the pending proceedings, 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.

6. Learned counsel for the appellants submits that at the relevant time, the matter was pending before the Delhi High Court in C.S.No.523 of 2009. It was filed by the appellants herein against Praveen Rai and others and the Chinese Company with regard to the same trade mark “Arrow”. The matter was sub judice before the High Court of Delhi and the Delhi High Court, being the appellate authority, the Registrar ought to have not issued the show cause notice.

7. It is further submitted by learned counsel for the appellants that the matter was also pending before the Intellectual Property Appellate Board. The same was filed by the Chinese Company against the appellants under Sections 47, 57 and 125 of the Trade Marks Act relating to the same trade mark. In view of the judgment of the Apex Court in Whirlpool (supra), the Registrar could not have issued the impugned show cause notice.

8. Learned counsel also submits that the trade mark “Arrow” is not a prohibited trade mark under the list of trade marks as per the list detailed under the Trade Marks Act. The appellants could not have produced a negative evidence when the trade mark “Arrow” is not a prohibited trade mark and the dispute with regard to the said trade mark is already sub judice before this Court and the Appellate Authority, the Registrar ought not to have issued the show cause notice and this Court ought not to have exercised its extraordinary jurisdiction under Article 226 of the C