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Habeeb Ahmad Vs. Registrar of Trade Marks, Madras and anr. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtAndhra Pradesh High Court
Decided On
Case NumberO.P. Nos. 2 and 3 of 1963 and Appln. No. 322 of 1963
Judge
Reported inAIR1966AP102
ActsTrade and Merchandise Marks Act, 1958 - Sections 2(1), 3 and 5
AppellantHabeeb Ahmad
RespondentRegistrar of Trade Marks, Madras and anr.
Appellant AdvocateJaleel Ahmed and ;Hasan Abid Ali, Advs.
Respondent AdvocateG. Venkatrama Sastry and ;A.R. Krishnaswamy, Advs.
Excerpt:
intellectual property rights - jurisdiction - sections 2 (1) (h), 3 and 5 of trade and merchandise marks act, 1958 - petitioner filed petition for rectification and cancellation of trade name - respondent objected on ground that this high court has no jurisdiction to entertain petition - office of jurisdiction of area of his principle place of business should be approached for registration - court having appellate jurisdiction is court which has jurisdiction for rectification - andhra pradesh court has no jurisdiction for registration of mark or its rectification. - .....was got registered by the 2nd respondent as trade mark no. 203382 in the office of the trade mark registry at madras. the petitioner was manufacturing beedies in the name of 'rafiq jadi bidi' and filed an application for registration of this trade mark on 12-6-1963. but the registration was opposed by the 2nd respondent. the 2nd respondent further filed a criminal case no. 5127 of 1963 on the file of the 8th city magistrate, hyderabad against the petitioner under sections 78 and 79 of the trade and merchandise marks act, 1958 (hereinafter called 'the act') read with sections 482, 486 and 488 of the indian penal code, for infringement of the trade mark. in these proceedings, the petitioner pleaded invalidity of the registration and also filed this o. p. on 27-7-1963. he further.....
Judgment:
ORDER

Jaganmohan Reddy, J.

1. O. P. No. 2/63 was filed by Habeeb Ahmed, under Sections 46, 47, 56 read with 107 and 108 of the Trade and Merchandise Marks Act, 195S for rectification, cancellation etc., of the trade name 'Rafiq Jadi Beedi', he having taken the trade name of 'Rafiq Judi Bidi'.

2. It may be stated that 'Rafiq Jadi Beedi' was got registered by the 2nd respondent as Trade Mark No. 203382 in the Office of the Trade Mark Registry at Madras. The petitioner was manufacturing beedies in the name of 'Rafiq Jadi Bidi' and filed an application for registration of this Trade Mark on 12-6-1963. But the registration was opposed by the 2nd respondent. The 2nd respondent further filed a criminal case No. 5127 of 1963 on the file of the 8th City Magistrate, Hyderabad against the petitioner under Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 (hereinafter called 'the Act') read with Sections 482, 486 and 488 of the Indian Penal Code, for infringement of the trade mark. In these proceedings, the petitioner pleaded invalidity of the registration and also filed this O. P. on 27-7-1963. He further applied for slay of the criminal case by way of an application No. 229/63, which was granted. Subsequently the 2nd respondent filed applications 332 and 333/63 to dismiss the O. P. on the ground that this court has no jurisdiction to entertain tin's petition.

3. The question of jurisdiction is not only raised in this O. P. but also in another O. P. which is connected with it, viz, O. P. No. 3/63.

4. Notice was given to the learned Advocate-General to assist the Court.

5. I have heard the arguments of the learned Advocate-General, Mr. Jali Aluned for the Petitioner and Mr. G. Venkatrama Sastri, for the 2nd respondent. It appears to me clear that this Court has no jurisdiction under the Scheme of the Trade and Merchandise Marks Act, 1958, the Central Government is authorised to create Trade Marks Registries for such places as they deem fit, and accordingly, under S. O. Nos. 2601 dated 25-11-1959 as amended by S. O. 1626 dated 28-6-1960, which were made under Section 5 of the Act, four places of Trade Mark Registries were specified, (1) at Bombay, the territorial limits of which comprise the State of Maharashtra, Gujarat and Madhya Pradesh; (2) at Calcutta, comprising the States of Assam, Bihar. Orissa and West Bengal and the Union Territories of Andaman and Nicobar, Manipur and Tripura; (3) at Delhi, comprising Status of Jammu and Kashmir. Punjab, Rajasthan and U. P. and the Union Territories of Delhi and Himachal Pradesh; and (4) at Madras, comprising the territorial limits of the States of Andhra Pradesh, Kerala, Madras, Mysore, and the Union Territories of Laccadive, Minicoy and Amindivi Islands. In order to determine, which High Court has jurisdiction for any of these States, it is necessary to refer to Sections 2(1)(h), 3 and 5. They are as follows:

'Section 2(1)(h). 'High Courts' means the High Court having jurisdiction under Section 3;'

Section 3: --'The High Court having jurisdiction under this Act shall be the High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the following cases is situate, namely: --

(a) in relation to a trade mark on the Register of Trade Marks at the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor of the trade mark as entered in the register at such commencement is situate;

(b) in relation to a trade mark for which an application for registration is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal plane of business in India of the applicant as disclosed in his application is situate;

(c) in relation to a trade mark registered in the names of joint proprietors before, the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor whose name is entered first in the register at such commencement as having such place of business is situate;

(d) in relation to a trade mark for which an application for registration in the names of joint proprietors is pending at or is made on or after the commencement of this Act, the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the proprietor whose name is first mentioned in the said application as having such place of business is situate;

(e) where the registered proprietor or the applicant for registration as aforesaid has no place of business in India or where none of the jointly registered proprietors or none of the joint applicants as aforesaid has any place of business in India, the office of the Trade Marks Registry within whose territorial limits--

(i) in relation to a trade mark on the Register of Trade Marks at the commencement of this Act, the place mentioned in the address for service in India as entered in the register at such commencement;

(ii) in relation to a trade mark for which an application for registration is pending at or is made on or after such commencement, the place mentioned in the address for service in India as specified in the application; is situate'.

Section 5(1): 'for the purpose of this Act there shall be established a Registry which shall be known as the Trade Marks Registry.

2. The head office of the Trade Marks Registry shall be at such place as the Central Government may specify, and for the purpose of facilitating the registration of trademarks, there may be established at such places as the Central Government may think fit branch offices of the Trade Marks Registry.

3. The Central Government may, by notification in the Official Gazette, define the territorial limits within which an office of the Trade Marks Registry may exercise its functions.

4. There shall be a seal of the Trade Marks Registry,'

A reading of the definition of High Court given in Section 2(1)(h) with Section 3(b), would make it clear that the Court having the appellate jurisdiction over the Registry is the Court which has got jurisdiction to entertain application for rectification etc. The scheme of the Act is to have offices of the Trade Marks Registry in various parts of India. Each office has been given territorial jurisdiction. Apart from the territorial jurisdiction of each office, it has jurisdiction over persons whose principal place of business in India lies within that territorial area. In the case of foreigners, the jurisdiction of a particular office is dependent upon the service in India given by such foreigner. Where there are joint proprietors of trade marks, the jurisdiction is fixed by reference to the principal place of business of the person whose name is first mentioned in the application for registration.

The result is that if a person wishes to apply for the registration of a mark he should go to the office which has jurisdiction over the area in which he has his principal place of business. Rectification proceedings can be taken only in the High Court having jurisdiction, that is to say, if a trader has registered his trade mark in Bombay, than rectification proceedings will lake place only in the office at Bombay or in the High Court at Bombay :is the case may be. As already stated, only four High Courts would have jurisdiction for rectification, namely the High Courts at Bombay, Calcutta, Madras and Punjab. The court having appellate jurisdiction is the court which has jurisdiction for rectification etc. The High Courts of the places where the Registry is situate air the appellate courts against the orders passed by that Registry, so that for the four Registry Offices, the four High Courts are the four appellate Courts having appellate jurisdiction. In the circumstances, this Court has no jurisdiction.

I am fortified in this view, by a decision of the Madras High Court in Chunulal v. G. S. Muthiah and Bros., : AIR1959Mad359 , Rajamanner, C. J. observed that as the office of the Registrar of Trade Marks is situated in Bombay, the register of Trade Marks is kept at Bombay and the rectification is made in that register, it must be held that the High Court having jurisdiction in the matter is the High Court at Bombay and not the High Court at Madras. The previous decisions in Abdul Ghani v. Registrar of Trade Marks, AIR 1947 Lab 171, Tapton Tea Co. v. Liptons Ltd., and Satyadeo v. Amrit Dhara Pharmacy, : AIR1958All823 were referred as authorities for this proposition. Even under the old Act, the position was the same, though in respect of certain matters, namely pending matters, the court where the pending matter arose did have jurisdiction. But that section has now been abolished.

6. The result is that the objection raisedby the 2nd respondent in O. P. 2/63 as also thesole respondent in O. P. 3/63, to the maintainability of the O. Ps. in this High Court is valid.Consequently, these O. Ps, will be returned forpresentation to the proper court. The 2nd respondent in O. P. 2/63 will get half costs fromthe petitioner. Appln. 322/63 filed by the 2ndrespondent is allowed, No costs. There will beno costs in O. P. 3/63.


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