REGISTRAR OF TRADE MARKS Vs. RANJAN SEN

JUDGEMENT

(1.) In this case we are concerned with the provisions of the Trade and Merchandise Marks Act, 1958 (Central Act No. 43 of 1958). The facts are shortly as follows: The respondent No. 4, Addisons Paints and Chemicals Private Ltd. of Madras had been using a trade mark containing the letters 'A. P. C.' in a monogram form, since the year 1958. In 1957, the said trade mark was registered. On the 26th of May, 1959 the respondent Nos. 1 to 3, Kumar Ranjan Sen, Tushar Kanti Sen and Mrinal Kanti Sen, parties of the Asiatic Paints and Chemicals, applied for the registration of a trade mark containing the same 'A. P. C.' in a monogram form. On the 25th November, 1958 the new Trade and Merchandise Act, 1958 (hereinafter referred to as the "said act") came into force. This Act repealed the Indian Merchandise Marks Act, 1889 and the Trade Marks Act, 1940. On the 1st December, 1959 the application was advertised in the Trade Marks Journal which was published on that date. On the 29th February, 1960 the respondent No. 1, Addisons Paints and Chemicals Private Ltd., sent a notice of objection or opposition to the application for registration by the applicant. This notice was received in the Office of the Deputy Registrar, Trade Marks, Calcutta, on the 2nd March, 1960. On the 8th March, 1960, the Deputy Registrar, Trade Marks, Calcutta, the appellant No. 2 called upon the respondent No. 4 to show cause why the notice of opposition should not be treated as not admissible as having been filed beyond time and as such barred under Section 21(1) of the said Act read with Rule 51 of the Trade and Merchandise Marks Rules, 1959. On 12th March, 1960 Messrs. Kamath and Kamath, Trade Marks and Patent Attorneys, wrote to the Deputy Registrar, Trade Marks, Calcutta, on behalf of the respondent No. 4 contending that the opposition has been filed in time. On the 20th June, 1960, without any further steps being taken or without complying with the provisions of the said Act as to hearing etc., the application for registration of the trade mark made by the respondents Nos. 1 to 3 was granted by the Registrar of the Trade Marks, Bombay, and a certificate of registration of trade mark, No. 190460 dated 20.6.60 was issued to them. On the 9th June, 1961 the Assistant Examiner of Trade Marks, Calcutta, on behalf of the Deputy Registrar, wrote a letter to the respondents No. 1 to 3 in their firm of Asiatic Paints and Chemicals informing them that a notice of opposition to the application for registration of trade mark had been filed on 2nd March, 1960. The question whether the opposition was filed within time would be considered at a hearing on the 31st July, 1961 and in the event of a decision that a notice of opposition had been duly filed in accordance with law, the registration of the trade mark of the said respondents would be held to have been effected through error and would be liable to cancellation. The letter stated that it should be taken to be a notice to show cause why the said registration should not be cancelled, in exercise of the power conferred by Section 56(4) of the said Act. Thereafter, both the parties, namely, the respondents Nos. 1 to 3 and the respondent No. 4 submitted their respective contentions on the question of the notice of opposition being time barred or not. On the 27th August, 1961 the Deputy Registrar of Trade Mark, Calcutta, held that the notice of opposition was filed within time; but unfortunately the application was granted and the trade mark registered on the 20th June, 1960, at a time when the notice of opposition was pending. It was remarked that under clause (b) of Sub-section (1) of Section 23 an application can be granted and a trade mark registered only when the opposition had been decided in favour of the applicant. In the present case the application was granted and the registration effected through inadvertence, while a notice of opposition was actually pending. It was stated that every tribunal had inherent power to correct its mistake and accordingly, an order was made canceling the registration and directing that notice of opposition which had been filed, would now be considered in accordance with the said Act and the Rules framed thereunder. On or about 29th September 1964, an appeal was filed against this order under Section 109 of the said Act to this High Court by respondents No. 1 to 3. The appeal was heard by Dutta, J., who by his judgment and order dated 18.9.1963 allowed the appeal and set aside the order of the Deputy Registrar, Trade Mark, Calcutta, dated 27th August, 1961. Before the learned Judge, two points were canvassed. The first was as to whether the notice of opposition had been field in time and the second point was as to whether the Deputy Registrar, Trade Mark, Calcutta, had jurisdiction to make an order of cancellation of a registration. On the first point, the learned Judge held that the notice of opposition had been filed in time, upholding the finding of the Deputy Registrar, Trade Marks, Calcutta. Before us, the finding has not been challenged. On the second point, the learned Judge held that the registration had been made in violation of the provisions of the said Act, inasmuch as the opposition was still pending and without deciding the same a registration could not be effected. Although on the merits therefore, the learned Judge was in favour of the cancellation of the registration, he held that the Deputy Registrar, Trade Marks, Calcutta, had no jurisdiction to make an order of cancellation and accordingly his order D/- 27th August, 1961 was not in accordance with the law and was set aside. It is this point which has been canvassed in appeal filed by the Registrar of Trade Marks and the Deputy Registrar of Trade Marks and has to be decided by us.

(2.) In order to decide this point, it will be necessary to consider the provisions of the said Act in some detail. It is an Act to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. The first provision to be considered is Section 2 which is the definition section under clause (h) of sub-section (1) of Section 2, the expression "High Court" has been defined to be the High Court having jurisdiction under Section 3, namely the High Court within the limits of whose Appellate jurisdiction the office of the Trade Marks Registry is situate. Roughly speaking, Trade Marks Registries are situated in the towns of Bombay, Calcutta, Madras and Delhi. The Registrar of Trade Marks, who under Section 4(1) is also known as the 'Controller-General of Patents, Designs and Trade Marks' functions at Bombay, and the Trade Marks Registries including that a Calcutta function under a Deputy Registrar of Trade Marks, clause (o) defines "Register" as meaning the Register of Trade Marks referred to in Section 6. It is provided in Section 6 that for the purposes of the said Act a record called the register of Trade Marks shall be kept at the head-office of the Trade Marks Registry, which happens to be situated at Bombay, wherein shall be entered all registered trade marks with all the particulars necessary and there shall be kept at each branch of the Trade Marks Registry a copy of the said register. Under Clause (t), the word "Registrar" means the Registrar of Trade Marks referred to in Section 4. This Section will have to be considered in greater detail presently. Under clause (x) of Sub-section (2) of Section 2 provides that in the said Act, unless the context otherwise requires, any reference to the Registrar shall be construed as including a reference to any officer when discharging the functions of the Registrar in pursuance of Sub-section (2) of Section 4. The next Section to be considered is Section 4. The relevant provisions whereof are as follows:

(3.) In pursuance of sub-section (2) of Section 1, the Central Government has appointed an officer called the Deputy Registrar of Trade Marks (actually there are several such officers) and the Registrar of Trade Marks, that is to say the Controller-General of Patents, Designs and Trade Marks, has authorised the Deputy Registrar of Trade Marks to hear application for registration, opposition proceedings, rectification and correction of the Registrar, all interlocutory applications and all other matters connected with the above. He has been authorised to pass final orders as to acceptance and refusal of applications for registration of trade marks. The other functions which have been delegated are not necessary to be considered in this case. A copy of the authorization appears at pages 69 to 70 of the paper book. Section 5 deals with the establishment of a Trade Marks Registry and its territorial jurisdiction and Section 12 provides that except as provided therein no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. Section 18 provides as to how applications for registration of trade marks are to be made. When an application for the registration of a trade mark has been accepted, it has to be advertised as provided in Section 20 of the said Act, Section 21 provides that any person may within 3 months from the date of the advertisement or re-advertisement of an application for registration or within such further period as is provided therein, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. The Registrar shall serve a copy of the notice of opposition on the applicant for registration who is at liberty to file a counter-statement in the prescribed manner. Sub-section (5) of Section 21 is important and is set out below:-