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The Anglo French Drug Co., (Eastern) Private Ltd. Vs. R.D. Tinaikar - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberMisc. Petn. No. 323 of 1956
Judge
Reported inAIR1959Bom21; (1957)59BOMLR1019
ActsCode of Civil Procedure (CPC), 1908 - Order 3, Rule 1 - Order 3, Rules 1 and 2; Trade Marks Act, 1940 - Sections 3, 15(4), 70, 76, 76(1) and 80; Bombay Pleaders Act, 1920 - Sections 2, 2(2) and 9; The Bar Councils Act; Bengal Tenancy Act, 1869 - Sections 188; Government of India Act, 1935 - Sections 102 and 102(2)
AppellantThe Anglo French Drug Co., (Eastern) Private Ltd.
RespondentR.D. Tinaikar
Appellant AdvocateG.N. Vaidya, Adv.
Respondent AdvocateK.S. Savaksha and ;L.B. Desai, Advs.
Excerpt:
trade marks act (v of 1940), section 80 - whether registered trade marks agent entitled to plead before the registrar of trade marks--whether section 9 of bombay pleaders act (bom. xvii of 1920) debars registered trade marks agent from pleading before registrar of trade marks--whether registrar a court under section 9 of bombay pleaders act--whether provisions of section 9 of bombay pleaders act saved by section 3, trade marks act.;a registered trade marks agent is entitled to be heard and to plead before the registrar of trade marks.;the word 'act' in section 80 of the trade marks act, 1940, is wide enough to cover the act of pleading.;aswin shambhuprasad v. national rayon corp. ltd. (1954) 57 bom. l.r. 209 distinguished.;the word 'required' in section 80 of the trade marks act, 1940,.....1. this is an appeal from a decision of the deputy registrar of trade marks under section 76 of the trade marks act, 1940. the appeal raises a very interesting question as regards the right of a registered trade marks agent to plead before the registrar of trade marks.2. the facts giving rise to the appeal, briefly stated, are as under: the respondent to this appeal filed an application under the trade marks act for registering a certain trade mark in respect of certain pharmaceutical preparations. the petitioners opposed the said application. evidence by way of affidavits was filed by both the parties in the case. the case ultimately came up for hearing before the deputy registrar of trade marks, who was discharging the functions of the registrar of trade marks under the said act. at the.....
Judgment:

1. This is an appeal from a decision of the Deputy Registrar of Trade Marks under Section 76 of the Trade Marks Act, 1940. The appeal raises a very interesting question as regards the right of a Registered Trade Marks agent to plead before the Registrar of Trade Marks.

2. The facts giving rise to the appeal, briefly stated, are as under: The respondent to this appeal filed an application under the Trade Marks Act for registering a certain trade mark in respect of certain pharmaceutical preparations. The petitioners opposed the said application. Evidence by way of affidavits was filed by both the parties in the case. The case ultimately came up for hearing before the Deputy Registrar of trade Marks, who was discharging the functions of the Registrar of Trade Marks under the said Act. At the hearing the respondent was represented by Mr. P.S. Pai, a Registered Trade Marks Agent. at the hearing which took place before the Deputy Registrar of Trade marks on 4-11-1955, the advocate for the petitioners objected to Mr. Pai being heard in the matter contending that Mr. Pai had no right of audience before the Deputy Registrar of Trade Marks. The matter being of considerable importance to all Registered Trade Marks Agents, was argued at great length before the Deputy Registrar of Trade Marks. Quite a number of days were spent in canvassing the rival points of view before the Deputy Registrar of Trade Marks. Ultimately on 11-7-1956 the Deputy Registrar of Trade Marks delivered a considered judgment holding that Mr. Pai, who was a registered trade marks agent was entitled to be heard. from that decision the petitioners have come by way of appeal to the High Court.

2a. The main question that arises for consideration is whether a registered trade marks agent is entitled to plead before the Registrar of Trade Marks under the provisions of Section 80 of the Trade Marks under the provisions of Section 80 of the Trade Marks Act. Section 80 of that Act runs as follows:

'Where by or under Act any act other than the making of an affidavit, is required to be done by any person, the act may, subject to prescribed conditions or in special cases with the consent of the Central Government, by done, in lieu of by t hat person himself, by a duly authorised agent, being either a legal practitioner or a person registered in the prescribed manner as a trade marks agent.'

Under Section 84 of the Central Government is empowered to make rules for the purpose of carrying out the purpose of the Act. Section 84 (2) (1) provides that the Central Government may make rules and prescribe the conditions subject to which an agent referred to in Section 80 may act. In exercise of the powers conferred under Section 84 the Central Government has framed diverse rules relating to t he persons who may act a s agents within the meaning of Section 80 of the Act. The relevant rules are Rules 128 to 141 appearing in Part IV of the Rules. Rule 130 relates to the eligibility of persons entitled to be registered as Trade Marks Agents. Rule 138 provides for the removal of persons whose names are entered in the Register of Agents. There are various other rules relating to the enrolment of trade marks agents and the maintenance of a register of such trade marks agents. What is contended is that Section 80 does not empower a person whose name is entered i the register of Registered Trade Marks Agents to plead before the Registrar of Trade Marks. It is contended that the expression 'act' as appearing in Section 80 relates merely to what is technically known as acting as distinguished from pleading before any tribunal. It is urged hat a registered trade marks agent is entitled to act, but not to plead before the Registrar. It is contended that the word 'act' even though used as a noun can only relate to acts done in the course of acting and not in the course of pleading before the Registrar. Strong reliance is placed by Mr. Vaidya, the learned Advocate for the petitioners on a decision reported in Aswin Shambhuprasad v. National Rayon Corporation Ltd. : AIR1955Bom262 (A), where the provisions of Order III, Rule 1 of the Civil Procedure Code came up for consideration before the High Court. Mr. Vaidya urges hat in interpreting Rule 1 of Order III of the Civil Procedure Code which provides that 'any appearance, application or act in or to any Court', required or authorised by law to be made or done by a party in such Court may, except where otherwise expressly provided by any law for the time being in force, by made or done by the party in person, or by his recognized agent, or by a pleader appearing applying or acting, as the case maybe, on his behalf, it has bene held that a constituted attorney has no right of audience in Court as the right of audience or ac tin or to any Court'. He says that the same meaning must be given to the word 'act: as appearing in Section 80 as was given by the Court in its decision reported in : AIR1955Bom262 (A). His objections to the Judgment of the Deputy Registrar are three in umber and they may be summed up in his own words as follows:

'(1) The word 'act' in Section 80 does not confer the power to plead;

(2) pleading before the Registrar is not an act which is required under the Act; and

(3) an agent is debarred from pleading in view of the provisions of Section 9 of the Bombay Pleaders Act read with Section 3 of the Trade Marks Act.'

3. In dealing with the first argument advanced by Mr. Vaidya, one has to observe that in construing an Act one has to bear in mind the scheme of the Act and the purpose for which the Act was passed. It is sometimes dangerous to construe the language of one Act having regard to the construction placed by the Court on the language of another enactment. So far as Section 80 is concerned, it refers to any act, other then the making of an affidavit, which is required to be done by any person. If such act could be done by a party in person, then the same could be done by a duly authorised agent of his, such agent being either a legal practitioner or a person registered in the prescribed manner as a trade marks agent. for the purpose of Section 80, legal practitioners and person registered as trade makes agents are place don the same footing. It may be that legal practitioners may have a higher right by virtue of other enactments. The question before me is whether I should so read Section 80 as to confine the word 'act' appearing in that section as being restricted to such acts as are incidental to 'acting ' as distinguished from 'pleading.' The section in so far as ti furnishes any guidance does so by the sue of the words 'other than the making of an affidavit. ' The making of an affidavit is considered to be an act which , for the purpose of Section 80, is regarded as one which is required to be done by any person. The act of making an affidavit is excluded from the ambit of the things which can be done under the nomenclature 'act'. I have to see whether , from the context in which the word act is used, there is any justification for giving a narrow meaning to the word 'act' as used in that section. I don not find any thin on a plain reading of the section which would induce me to put a narrow meaning on that word. The Trade Marks Act, 1940 is modelled on the basis of the English Trade Marks Act, 1938. It is not disputed that under the a provisions of the English Act it is open to a trade marks Agent who is recognized as such for the purpose of that Act, to plead for any party before the Registrar. But it is stated by Mr. Vaidya that that is so because of the express provisions of Section 65 of the said Act. Section 65 of that Act runs as under:

'65. Where by this Act any act has to be done by or to any person in connection with a trade mark or proposed trade mark or any procedure relating there to, the act may under and in accordance with the rules, or in particular cases by special leave of the Board of Trade be done by or to an agent of that person duly authorised in the prescribed manner.'

Mr. Vaidya says that if any act has to be done by a person in connection with any procedure relating to trade marks, then a recognized agent has a right to do it. He says that there is no similar provision contained in Section 80; that there is no reference to any procedure in Section 80 and that Section 80 cannot be son construed as to empower a registered trade marks agent to plead before the Registrar. No doubt Section 80 is not explication it steams. I have to consider what provisions are required to be done by any person by or under the Trade Marks Act before I come to the conclusion that a trade marks agent has a right to plead before the Registrar. In this connection, it would be useful to examine some of the provisions contained in the Act and the Rules framed thereunder. Section 15(4) of the Act provides as under:

'15(4). If the applicant send such counter-statement, the Registrar shall serve in the prescribed manner a copy thereof on the persons giving notice of opposition, and shall, after hearing the parties, if so required and considering the evidence, decide whether & subject to what conditions or limitation if any, registration is to be permitted.'

Section 70(c) provides as under:

'70(c). The Registrar shall not exercise any power vested in him by this act or the rules made thereunder adversely to any party duly appearing before him without to any party duly appearing before him without (if required in writing within the prescribed time so to do) giving such party an opportunity of being heard.'

Rule 24 provides for a hearing before the Registrar and Rule 25 (1) lays down that the decision of the Registrar at a hearing under Rule 24, or without a hearing if the applicant has duly communicated his observations in writing, and his stated that he does not desire to be heard, shall be communicated to the applicant in writing. Rule 38 provides that upon completion of the evidence the Registrar shall give notice to the parties of a date when he will hear the arguments in the case. All these sections and rules proved that a party is entitled to be heard under the circumstances mentioned in those sections and rules. The right to be heard is a very valuable right. If that right could be exercised by a party, the question is whether having regard to the provisions of Section 80 that right could also be exercised by a duly authorised agent of the party being either a legal practitioner or a person registered as a trade marks agent under the Act. I do not see any reason why such duly authorised agent cannot do that which a party is entitled to do. The act of arguing in support of a party's case is as much an act as any other act, which may be required to be done by a person under the provisions of the Trade Marks Act. I do not see any warrant for equating the expression 'act' in Section 80 with the word' act' when used in connection with another piece of legislation where a narrow construction had to be placed upon the use of that word having regard to the context in which that word has been used.

4. Turning to the decision of the learned Chief Justice in the case reported in : AIR1955Bom262 (A), it has been observed at page 210 Bom LR): (at p. 263 of AIR) as under:

'The right of audience in Court, the right to address the Court, the right to examine and cross-examine witnesses, are all parts of pleading with which Order III does not deal at all; It deals with a restricted class of acts in connection with the litigation in Court and it is with regard to that restricted class of acts that Order III permits recognised agents to be appointed.'

5. Order III, Rule 1 appears in the Code of Civil Procedure- a Code intended to regulate procedure of the Courts of Civil Judicature. There are other enactments relating to the right of audience in Court. The Bar Councils Act and the Bombay Pleaders Act are some such enactments. Having considered the scheme of the Order the conclusion arrived at was that the word 'act appearing there was not such as would include the act of pleading, and w as intended to cover, only such acts as are capable of being done in the act of acting for a litigant. The word 'act' in Order III, Rule 1 is preceded by the words 'appearance and application.' The terms act' there appears to have been used in the technical sense and not in the ordinary sense as being referable to any action by any party. The same cannot be said of t he word 'act' as used in Section 80 of the Trade Marks Act. There is nothing to control the meaning of the word 'act' as use din the said Section 80. It is referable to all kinds of act which any person is required to do by or under the Trade Marks Act. It may be the act of making an application; it may be t he act of filing an affidavit; it may be the act of leading evidence; it may be the act of pleading before the Registrar in support of the application. As the word used there was wide enough to cover all these activities and it was intended to exclude the act of making an affidavit, the words 'other than the making of an affidavit' have been inserted in that section. Under Section 70(b) it is provided that evidence shall be given by affidavit, provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to such evidence by affidavit. As the Legislature intended that legal practitioners and registered trade marks agents should not be the person who should give evidence in support of the case which they may be called upon to argue, the making of an affidavit is excluded from the acts which can be done by duly authorised agent. In my view, the word act' as used in Section 80 is wide enough to cover the act of pleading.

6. The next point that arises for consideration is that even if the act of pleading can be said to be covered by the word 'act', could it be said that the act of pleading is required to be done by or under the Act? Reliance has been placed by Mr. Vaidya upon a decision reported in Pramada Nath v. Ramani Kanta, 35 Ind App 73(B). In that case the Judicial Committee of the Privy Council was considering the provisions of Section 188 of the Bengal Tenancy Act, 1869. That section provided as under:

'Where two or more persons are joint land-lords, anything which the landlord is under this Act required or authorized to do must be done either by both or all those persons acting together, or by an agent authorized to act on behalf of both or all of them.'

In that case, the suit was instituted not by all the joint landlords, but by some of them- others being made party-defendants to the suit. It was argued that as all of them had not been jointed as party-plaintiffs, Section 188 was a bar to the proceedings. In dealing with that argument their Lordships observed at page 78 that the filing of a suit was not a thing which the landlord was, under the Act, required or authorized to do. It was an application to the Court for relief against an alleged grievance, which the plaintiff was entitled to submit not be reason of any provision of the Tenancy Act, but under the general law. That Judgment does not establish the case of the petition on this point. Another judgment relied upon by Mr. Vaidya is the one reported in Issur v. G.I.P. Rly. Co., 34 I .A 115 , Lord Robertson who delivered the Judgment of their Lordships observes as follows:

'If the appellate Court requires'- which plainly mens needs, or finds needful-'any document to be produced or any witness to be examined to enable it to pronounce judgment or for any other substantial reason, the appellate Court may alow such evidence to be produced, or document to be received or witness to be examined.'

This passage in the judgment relied upon by Mr. Vaidya hardly supports the petitioners; if anything it helps the respondent. The Privy Council there has construed the word 'requires' as plainly meaning 'needs' or 'finds needful'. If the word 'required' as appearing in Section 80 is substituted by the word 'needed' or 'found needful', the meaning would become clear beyond doubt. In that event if by or under the Trade Marks Act, 1910, if he act of pleading is needed or found needful to be done by any person, then that act could be done by his fully authorised agent being a legal practitioner or a registered trade marks agent. This would dispose of the second argument advanced in this case.

7. Dealing with the third argument advanced in this case, it is necessary to refer to the provisions of Section 9 of the Bombay Pleaders Act. That section provides as under:

'9. No person shall appear, plead or act for any party in any civil proceeding in any Court unless he is a pleader as defined in this Act and is entitled and duly empowered to appear, plead and act for such p arty in such proceeding:

Provided that nothing in this section shall apply:

(a) to any party appearing pleading or acting on his own behalf or appearing or acting by his recognized agent as defined in Rule 2 Order III of the Code of Civil Procedure, 1908, or

(b) to any advocate of the High Court.' It is urge that the proviso when it refers to a party refers to that party appearing, pleading or acting on his behalf; but when it refers to a recognized agent, it refers to such agent appearing or actin for him. It i s further urged that the language clearly indicates that a recognized agent is not entitled to plead, and that the act of pleading by a recognized agent is not covered by the proviso. Mr. Vaidya is right when the makes that submission. But the fallacy in Mr. Vaidya's argument lies in this that Section 9 of the Bombay Pleaders Act, 1920 refers to 'any civil proceeding in any Court. The question which I have to consider is whether proceedings before the Registrar can in any sense be considered to be civil proceedings in any Court. The Registrar can in no sense be regarded as a Court. Section 70(a) of the Trade Marks Act provides that the Registrar shall have all the powers of a Civil Court for the purposes of receiving evidence, administering oaths, enforcing the attendance of witnesses, compelling the discovery and production of documents and issuing commissions for the examination of witnesses. The Legislature has by that section given to the Registrar powers of a Civil Court for certain purposes. The Registrar is not constituted a Court. He may have some of the trappings of a Court but by reason thereof it cannot be said that he is a Court. If the language used in the Act could furnish any guidance he is referred to as a 'tribunal' Section 2(n) of the Act defines a 'tribunal' to mean the Registrar, or, as the case may be, the Court before which the proceeding concerned is pending.' In this connection, it may be useful to refer to a passage in the judgment of the Judicial Committee of the Privy Council reported in Shell Company of Australia Limited v. Federal Commr. of Taxation, 1931 AC 275 . Lord Sankey L.C., in delivering the judgment of their Lordships observes at page 296 as follows:

'The authorities are clear to show that there are tribunal with many of the trappings of a Court which nevertheless, are not Courts in the strict sense of exercising judicial power.' At page 297 the observations are as under:

'In that connection it may be useful to enumerate some negative propositions on this subject:

1. A tribunal is not necessarily a Court in this strict sense because it gives a final decision.

2. Nor because it hears witnesses on oath.

3. Nor because two or more contending parties appear before it between whom it has to decide.

4. No because it gives decisions which affect the rights of subjects.

5. Nor because there is an appeal to a Court.

6. No because it is a body to which a matter is referred by another body.'

At page 298 it is further observed as under: 'An administrative tribunal may act judicially, but still remain an administrative tribunal as distinguished from a Court strictly so-called.'

My attention has been drawn to a decision reported in re National Carbon Co., Incorporated : AIR1934Cal725 , where the Court held the Controller of Patents is not technically a Court or tribunal exercising judicial functions. In my view, even though in some respects the position of the Registrar of Trade Marks may be analogous to that of a Court, he is not a Court, and the provisions of Section 9 do not apply to any proceedings before him.

8. Mr. Vaidya has urged that the Registrar should be deemed to be a Court for the purpose of the Bombay Pleaders Act, 1920 inasmuch as he says that though the expression 'Court' is not defined in that Act, the expression 'Courts subordinate to the High Court' has been defined by Section 2 (2) of that Act. That expression has been defined to mean 'any court, tribunal, or person whose decree, order decision or award is, or may hereafter be, subject to the appellate or revisional jurisdiction of the High Court.' He says that an appeal is provided by Section 76 of the Trade Marks Act against a decision of the Registrar to the High Court and that the Registrar is a tribunal from whose decision an appeal lies to the High Court, and that that tribunal should be regarded as a Court subordinate to the High Court. In answer to this argument advanced by Mr. Vaidya, it is pointed out by Mr. Shavaksha that the expression, ' the High Court' has been defined by Section 2(1) of the Bombay Pleaders Act to mean 'the High Court of Judicature at Bombay' so that the tribunal within the meaning of Section 2(2) of that Act must be one from whose decision an appeal lies to the High Court of Judicature Bombay. He points out that under the proviso to Section 76(1) of the Trade Marks Act if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Courts, the appeal shall be made to that High Court, or as the case may be,to the High Court within whose jurisdiction that District Court is situated. He says that if any proceedings are pending in any High Court or District Court throughout the length and breadth of India, then an appeal would lie only to that High Court from a decision of the Registrar. He says that an appeal does not necessarily lie to the High Court of Judicature at Bombay. There is considerable force in the argument of Mr. Savaksha. If Mr. Vaidya is right, at the time when the Registrar may have to decided the question whether to permit a recognised agent to plead before him or not, he would have to consider whether any proceedings concerning the trade mark would be pending before a High Court, other than the High Court at Bombay, or a District Court within the jurisdiction of a High Court other than the Bombay High Court at the time when an appeal from his decision may be filed, an event which no one can foresee. His decision may turn out to be right or wrong having regard to a future unpredictable event. There would be endless confusion if such an argument is accepted. I do not think I can infer from the definition of the expression 'Court subordinate to the High Court appearing in Section 2 of the Bombay Pleaders Act, 1920 that the Registrar is constituted a Court within the meaning of that Act.

9. Having regard to the view which I have taken of the provisions of Section 9 of the Bombay Pleaders Act, 1920, it is not necessary for me to consider what would be the effect of Section 3 of the Trade Marks Act, 1940 in a case where the provisions of another enactment conflict with the provisions contained in Section 80. It was urged that in the event of a conflict between section 9 of the Bombay Pleaders Act and Section 80 of the Trade Marks Act, the Bombay Pleaders Act should prevail inasmuch as Section 3 expressly states that the provisions of the Trade Marks Act, 1940, shall be in addition to, and not in derogation of the provisions of any other law for the time being in force. It was urged that even if in by virtue of Section 80 of the Trade Marks Act, a duly authorised agent may have a right to plead before the Registrar, that right has been taken away by virtue of the provisions of Section 9 of the Bombay Pleaders Act. In answer to that plea, it was pointed out that the Bombay Pleaders Act, 1920, is an Act of the Provincial Legislature and that the Trade Marks Act, 1940, is an Act of the Central Legislature. Both these Acts were passed before the Constitution came into force. Item 16 of the Concurrent Legislative List appearing in Schedule VII of the Government of India Act, 1935, deals with legal, medical and other professions so that both the Provincial and the Central Legislature had the right to deal with matters relating thereto. Assuming that the right of audience of an authorised agent falls within item 16 of that List, one would have to consider the effect of Section 102, Sub-section (2) of the Government of India Act, 1935. That section provides that in the event of there being a conflict between an enactment of the Provincial Legislature and the enactment of the Central Legislature, the enactment of the Central Legislature should prevail. In that event, the provisions of Section 80 of the Trade Marks Act, 1940 would prevail over the provisions of Section 9 of the Bombay Pleaders, Act. Mr. Vaidya, however says that would not be the result having regard to the provisions of Section 3 of the Trade Marks Act, 1940. He says that the provisions of Section 80 of the Trade Marks Act were not enacted in derogation of the provisions of Section 9 of the Bombay Pleaders Act. I do not read the provisions of Section 3 in the way in which Mr. Vaidya wants me to read that section. Having regard to the preamble of the Act and the purpose for which the Trade Marks Act was passed it was not the intention of the legislature in enacting Section 3 save the provisions of Section 9 of the Bombay Pleaders Act if they were found to being conflict with the provisions of the Trade Marks Act, 1940. However, as I have already indicated it is not necessary for me to go into this question inasmuch as I hold that the Registrar is not a Court and that the provisions of Section 9 of the Bombay Pleaders Act are of no assistance to the petitioners.

10. There is one more point which I may mention. The respondent in his affidavit in reply has taken the contention that no appeal lies from the decision actually given by the Deputy Registrar of Trade Marks under the provisions of Section 76 of the Trade Marks Act, 1940. That point has, however, not been pressed before me by Mr. Sava ksha.

11. In may view the conclusion to which the Deputy Registrar of Trade Marks has come to is sound. In the result, the appeal is dismissed.

12. Mr. Vaidya for the petitioners has urged before me that in this case costs should not follow the event as the petitioners were litigating the question for the benefit of legal practitioners in general, and that the fair order to make would be that each party should bear its own costs. Mr. Shava ksha presses for costs. I do not think I can accede to the request of the petitioners' Advocate in the is connection. The petitioners have brought this matter before me by way of appeal and they must bear the risk of costs in the event of the appeal not succeeding. I order that the appellants do pay to the respondent the costs of this appeal.

13. Appeal dismissed.


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