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Radha Kishan Khandelwal Vs. Assistant Registrar of Trade Marks and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberF.A. Os. (T and M) Nos. 186 and 187 of 1968
Judge
Reported inAIR1969Delhi324; ILR1969Delhi1227
ActsTrade and Merchandise Marks Act, 1958 - Sections 2, 11, 24(2), 25, 32, 44, 44(1), 56, 56(2), 57(1), 109 and 109(2); Trade and Merchandise Marks Rules, 1959 - Rules 71 to 81, 99 and 121; Constitution of India - Article 226; Metropolis Local Amendment Act, 1855
AppellantRadha Kishan Khandelwal
RespondentAssistant Registrar of Trade Marks and ors.
Appellant Advocate P.C. Khanna and; S.K. Bhatia, Advs
Respondent Advocate B.N. Kirpal and ; N.K. Anand, Advs.
Cases ReferredState Bank of India v. Rajendra Kumar Singh.
Excerpt:
.....any decided case from another high court i should like to express my views on the nature of the proceedings held by the registrar when dealing with applications for alteration in the names of the registered proprietors. 25. that is precisely the reason why such elaborate procedure has been laid down in the act and the rules framed there under and so much care and circumspection is exercised before an application for registration of a trade mark is finally accepted by the registrar and the name of the applicant is entered in the register as proprietor of the mark. the principle is clearly stated in the leading case of cooper v. 31. i should however like to make it clear that any opinion expressed by me in the course of this order, on the merits of the appellant's claim should in no way,..........a. o. (t & m) 187 of 1968 both of which are directed against the orders made by the registrar of trade marks and are between the same parties. the appellant shri radha kishan khandelwal claims to be a joint proprietor along with shri jai madho avasthi and shri rama shanker avasthi, who have been imp leaded as respondents 3 and 4 respectively, of a registered trade mark 'usha' in respect of 'fountain pens' under clause 16 of the trade and merchandise marks rules, 1959. according to the appellant, an application for registration of the trade mark, signed by kama shanker avasthi (respondent no. 4) was filed on 11-9-1958. the application was advertised on 1-9-1960 and thereafter the trade mark 'usha' was duly registered in the names of the appellant and respondents 3 and 4 trading as asia.....
Judgment:

1. This order will dispose of two appeals viz F. A. O. (T & M) 186 of 1968) and F. A. O. (T & M) 187 of 1968 both of which are directed against the orders made by the Registrar of Trade Marks and are between the same parties. The appellant Shri Radha Kishan Khandelwal claims to be a joint proprietor along with Shri Jai Madho Avasthi and Shri Rama Shanker Avasthi, who have been imp leaded as respondents 3 and 4 respectively, of a registered trade mark 'USHA' in respect of 'fountain pens' under Clause 16 of the Trade and Merchandise Marks Rules, 1959. According to the appellant, an application for registration of the trade mark, signed by Kama Shanker Avasthi (respondent No. 4) was filed on 11-9-1958. The application was advertised on 1-9-1960 and thereafter the trade mark 'USHA' was duly registered in the names of the appellant and respondents 3 and 4 trading as Asia Pen Co., under registration No. 186834. A copy of the certificate of registration has been filed along with the Memorandum of Appeal and its correctness has nto been disputed by the respondents.

2. Under Section 2(q)' of the 21958 (hereinafter referred to as the Act) a registered proprietor in relation to a trade mark means a person for the time being entered in the register as proprietor of the trade mark. Under Section 24(2) of the Act where more than one person are registered as joint proprietors of the trade mark they are to be treated to be a single person. Under Section 25 the registration of a trade mark ensures for a period of seven years but it may be renewed from time to time on the application made by the registered proprietor of a trade mark subject to payment of prescribed fee.

3. The appellant claims that before the expiry of the period of seven years an application under the signature of Rama Shanker Avasthi (respondent No. 4} was made by the appellant and respondents 3 and 4 for the renewal of the trade mark 'USHA' which they had been using continuously since its registration and the same was renewed for a further period of seven years with effect from 11-9-1965. The renewal was also made in the names of the. appellant and respondents 3 and 4 after necessary advertisement in the Trade Marks Journal on 1-8-1965.

4. On 21-10-1967 respondents 3 and 4 made two applications through their counsel Shri N. K, Anand on Forms T. M, 24 and T. M. 16 of the Rules framed under the Act that the names of the registered proprietors be corrected by substituting the following names in place of the existing ones:--

(i) Shri Jai Madho Avasthi (respondent No. 3).

(ii) Shri Anand Modho Avasthi (respondent No. 5).

(iii) Shrimati Shakuntla Devi (respondent No. 6),

(iv) Shrimati Manorma Devi (respondent No. 7).

5. Respondent No. 6 is stated to be the wife of respondent No. 4 while Shrimati Manorama Devi (respondent No. 7) is the wife of a son of respondent No. 3. Respondent No. 5 is the brother of respondent No. 3 and is stated to be living in a village in Unnao District (U, P.) where he is engaged in agriculture.

6. On 24-10-1967 the Registrar of Trade Marks made the alteration prayed for in the application filed on Form T. M. 16. Simultaneously on the same day another order was made on the application on Form T. M. 24 whereby the names of respondents 6 and 7 were removed from the certificate and in their place the names of respondents 4 and 8 were included on the ground that a new partnership had been created. Respondent No. 8 is stated to be another daughter-in-law of respondent No. 3, being the wife of his son Ravi Shanker Avasthi.

7. The appellant contends that the removal of his name from the certificate of registration as one of the joint proprietors of the trade mark is the result of a conspiracy among the various respondents with the object of depriving him of his rights in the trade mark and that the impugned orders have been made by respondents 1 and 2 on 24-10-1967 without any notice or information to him and are thereforee, illegal, void and without jurisdiction. Hence the present appeals under Section 109 of the Act.

8. It may be mentioned here that there is some confusion about the date on which the impugned orders were passed. Whereas in the application for stay of operation of the impugned orders filed by the appellant the date of the orders is mentioned as 24-10-1967, in the Memorandum of Appeal the date is given as 16-4-1968. The confusion is apparently due to the fact that the appellant has nto been supplied with copies of the orders passed by respondents 1 and 2 on the ground that no such copies could be supplied according to law. The appellant has thereforee, been groping in the dark, or it may also be because of the apprehension entertained by the appellant that his appeals which were apparently filed in about the middle of October 1968 would seem to be hopelessly barred by time if it is found that the same were directed against orders that were passed as far back as 24-10-1967. He might, thereforee, have been anxious to make the gap between the date of the orders and the date of the appeal appear as small as possible. But the appeals would in any event be barred by time whether the same are directed against the orders made on 24-10-1967 or on 16-4-1968 because under R. 121 of the Rules an appeal from the decision of the Registrar under the Act or the Rules, has gto to be filed in the High Court within three months from the date of such decision or within such further time as High Court may allow.

9. In the circumstances, the appeals can only be entertained if time is allowed to the appellant and nto otherwise.

10. On behalf of the respondents two preliminary objections have been raised by Mr. B. N. Kirpal who appears for the Registrar and Assistant Registrar of Trade Marks and by Mr. N. K. Anand who appears for respondents 3 to 8. The first objection raised by the learned counsel is that the appeals are barred by limitation while the second objection relates to the competency of the appeals as such.

11. As regards the first objection, there can be no doubt about the appeals being prima facie barred by time. The appellant's Explanationn however is that the impugned orders having been passed in his absence and without any notice to him he came to know about the existence of such orders for the first time in the last week of May 1968 when he was shown a copy of the certificate of trade mark of respondent No. 4. The appellant thereupon rushed to Bombay to make inquiries from the office of the Registrar of Trade Marks and learnt that the impugned orders had been made on two applications presented by respondents on Forms T. M. 16 and T. M. 24 respectively. The appellant applied for certified copies of the orders made by the Registrar but his request was declined under the Registrar's letter dated 31-8-1968 on the ground that the orders passed were administrative orders and there was no provision in the Act or the Rules for granting certified copies of administrative orders passed by way of administrative notes which were regarded as privileged documents.

12. The appellant further submits that while he was waiting for certified copies Of the orders, Rama Shanker Avasthi (respondent No. 4) filed on 12-7-1968 a complaint against him under Ss. 78/79 oJ the Act in the Court of a Magistrate at Kanpur upon which his premises were searched on 13-7-1968 and goods bearing the trade mark 'USHA' were seized from his possession,

13. These facts have nto been disputed by the respondents. On the other hand it is contended on their behalf that there is no provision in the Act or the Rules for supply of copies of such orders and that in any event the appeals ultimately filed by the appellant were nto accompanied by those copies. The appellant was, thereforee, nto entitled to extension of time on the eround that the delay in filing the appeal was due to time taken in obtaining copies of the orders.

14. I do nto find any merit in the objection raised by the respondents. condensation of delay for filing the appeals is being sought by the appellant nto on the ground that the time reauisite for obtaining copies of the orders should be added to the time prescribed for filing appeals. What the appellant submits is that he! was unaware of any orders having been passed by respondents 1 and 2 in removing his name from the certificate of registration as action for doing so was taken without any notice to him and that it was in the last week of May 1968 that he came to know for the first time that his name had been excluded. The information received by him being quite unexpected, he was naturally keen to acauaint himself with the reasons thereforee but respondents 1 and 2 declined to state the reasons and also to give him copies of the orders. I arn thereforee satisfied that this is a fit ease in which the appeals should be entertained even though the time fixed fto filing the same under Rule 121 expired several months ago.

15. The next objection raised by the respondents relates to the competency of the appeals. It is contended that the alteration in the certificate of registration has been made in this case under S. 57 of the Act which provides for correction of errors or for alteration or cancellation of entries in the register of Trade Marks. Such an order, it is contended, is nto appeal able under Section 109 of the Act. The argument appears to me to run counter to the plain language of Sub-section (2) of Section 109 which reads as under:--

'Save as otherwise expressly provided in Sub-section (1) or in any other provision of this Act, an appeal shall lie to the High Court within the prescribed from any order or decision of the Registrar under this Act or the rules made there under.'

It is nto the case of the respondents that the alteration made in the certificate oi registration in the present case could be made by an authority other than the Registrar or Assistant Registrar or without taking a decision on the question as to whether the alteration was called for under the Act or the Rules. It is also nto contended that the alteration is merely in the nature of correction of a typoeraphical error or mistake in the recording of entry. The alteration consists in removing the name of the appellant from the certificate as one of the proprietors of the trade mark and thereforee, seriously affects the proprietary rights of the appellant An order involving such serious consequences certainly comes within the ambit of Sub-section (2) of Section 109 and an appeal lies against the same to the High Court. This objection must also thereforee, fail.

16. I now turn to the merits of the appellant's claim. It is common ground that at least one of the impugned orders was made by respondents 1 and 2 in exercise of their powers under Section 57(1) of the Act on an application made by respondents 3 and 4 on Form T. M. 16. The procedure prescribed for dealing with such an application is laid down in R. 99 which makes it obligatory on the person making the application to serve a copy thereof on the registered user or users of the trade mark and on any other person who appears from the register to have an Interest in the trade mark. It is also provided in Form T. M. 16 that the applicant should make an averment in the application that a copy of the request has been served on the registered proprietors of the mark. According to the entries in the register, the name of the appellant was admittedly shown as one of the registered proprietors and as such he was a person who had an interest in the trade mark. It was, thereforee, incumbent upon respondents 3 and 4 to have served a copy of the application on him. Since the impugned order was made by the Registrar in contravention of the provisions of Rule 99 the order cannto be sustained. Even otherwise the appellant having a vested right in his name being continued to be shown in the register an order re moving his name could nto be passed without complying with the elementary requirement of rules of natural justice.

17. This takes me to the other order which purports to have been made on the application presented on Form T, M. 24. Mr. Kirpal, learned counsel for respondents 1 and 2 strenuously argues that although it may be nto possible to make an order on an application presented on Form T. M. 16 without serving a copy of the application on the party which is likely to be affected by the change, an order can be passed on an application presented on Form T. M. 24. Mr. Kirpal relies for this argument on the language of Rule 99 which expressly mentions applications made on Forms T. M. 16, T. M. 33, T. M. 34, T M. 35. T. M. 36. T. M. 37 and T. M. 50 but does nto mention an application made on Form T. M. 24. Mr. Kirpal submits that if the necessity of a notice on an application of this type is insisted upon, it would tremendously increase the volume of work to be done in the office of the Registrar. He also submits that the Rules have deliberately made no provision of notice on such applications because the aggrieved party has an equally efficacious alternative remedy under Sub-section (2) of Section 56 which reads as under:--

'Any person aggrieved by the absence or omission from the register of any entry or by any entry made in the register without sufficient cause or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.'

I am nto at all impreised by this argument. Form T. M. 24 relates to an application for registration of assignments and transmissions for which a provision has been made in Section 44 of the Act, Sub-section (1) of Section 44 and its proviso which is material for the purpose of this argument reads as under:--

'Where a person becomes entitled by assignment or transmission to a registered trade mark, he shall apply in the prescribed manner to the Registrar to register his title, and the Registrar shall, on receipt of the application and on proof of the title to his satisfaction, register him as the proprietor of the trade mark in respect of the goods of which the assignment or transmission has effect, and shall cause particulars of the assignment or transmission to be entered on the register.

Provided that where the validity of an assignment or transmission is in dispute between the parties, the Registrar may refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court.'

The relevant rules for dealing with such applications are contained in Chapter Iv (Rules 71 to 81). Under R. 71 an application to register the title of a person who becomes entitled by assignments or transmissions to a registered trade mark has to be made on Forms TM-24 or TM-23 according as it is made by such person alone or conjointly with the registered proprietor. Form T. M. 23 provides for a joint request by a registered proprietor and transferee to register the transferee as subsequent proprietor of the trade mark upon the same devolution of title. Form T. M. 24 relates to a request to register a subsequent proprietor of a trade mark or trade marks upon the same devolution of title. Under Rule 72 the application has to Rive particulars of the instru- ment, if any, under which the applicant or in the case of a joint application, the person other than the registered proprietor claims to be entitled to the trade mark. It the application for registration of title is nto supported by any document or instrument which is capable in itself of furnishing proof of title, Rule 73 provides for an alternative mode of proof. Rule 74 empowers the Registrar to call upon any person who applies to be registered as the proprietor of a registered trade mark to furnish such proof or additional proof of title as he may require for his satisfaction. Then follow certain other rules with which we are nto concerned in the present case.

18. It appears to me to be implicit In these rules that when an application for registration of assignment or transmission is made by some persons in respect of a trade mark in which the names of certain other persons are shown as registered proprietors, before any action is taken on that application, the persons whose names are already on the register must have a notice of that application. If the requirement of Section 44 is that the applicant should prove his title to the trade mark and the title set up by him is pitched against the title of someone else whose name is already borne on the register the inquiry must be conducted in the presence of both the parties.

19. That the Registrar himself took this very view of the requirement of the Section is apparent from his letter dated 22-1-1968 addressed to Acme Co. Delhi who were representing respondents 3 and 4 as their trade mark attorneys. By means of that letter information was specifically sought as to how the names of Shri Jai Madho Avasthi, Shri Radha Kishan Khandelwal and Rama Shanker Avasthi had been entered in the register as the registered proprietors of the trade mark when according to the partnership deed dated 26-2-1958 Jai Madho Avasthi, Anand Madho Avasthi, Shmt. Shakuntla Devi and Shmt. Manorma Devi alone were shown to be the partners of Asia Pen Co, By a subsequent letter dated 5-2-1968 the aforesaid attorneys were called upon to file affidavits of Shri Radha Kishen Khandelwal and Shri Rama Shanker Avasthi that they never had been partners in the firm Asia Pen Co. before their request on T. M. 24 could be considered. As a matter of fact it was specifically stated in the letter that unless that evidence was filed the request on T. M. 24 could nto be considered at all.

20. It however appears that later on, there was softening of attitude on the part of the Registrar and the necessary alteration was made nto only in the absence of any affidavit from the appellant but also even without any notice to him.

21. Section 32 makes the registration of the trade mark to be conclusive from the point of view of validity of the trade mark after the expiration of seven years from the date of such registration unless it is proved that the trade mark was registered in contravention of the provisions of Section 11 or that it offended against the provisions of that Section on the date of commencement of proceedings or that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor. The registration of the trade mark in the present case with the name of the appellant as one of its proprietors has been there for over ten years. Normally his name could nto be removed even on an application under Section 56 of the Act unless there was evidence to show that the original registration was obtained by fraud or there was some other good cause. All these proceedings could nto have, thereforee, been taken without proper notice to the appellant or without affording him an opportunity to show cause against the proposed action.

22. As the question that has arisen in these appeals has come up before this Court for the first time and the learned counsel for the parties have also nto drawn my attention to any decided case from another High Court I should like to express my views on the nature of the proceedings held by the Registrar when dealing with applications for alteration in the names of the registered proprietors.

23. To start with I must say, that I have found it a little difficult to appreciate the reason given by the Registrar for declining to supply the copies of his orders to the appellant. The Registrar seems to be of the view that an alteration made in the certificate of registration by removing the name of the person who is entered as a proprietor therein and substituting in his place the name of another person either by way of assignment or transmission or for any other reason is an administrative function. I cannto agree. In my judgment the registration of a trade mark confers on the person in whose favor the mark is registered some very valuable rights. To mention only one such right, one may turn to Sub-section (1) of Section 27 which in terms provides that no person shall be entitled to institute any proceedings to prevent or to recover damages for, the infringement of an unregistered trade mark.

24. It is true that the only result of prohibiting an action for infringement in the case of an unregistered trade mark is that the action which can be brought will no longer be called an action for infringement and the plaintiff will have to prove that the defendant's conduct is calculated to deceive and for that purpose, he can- nto claim, that the user of the mark is itself sufficient to entitle him to sue. In practice however, want of registration entails serious consequences, as the Courts are usually most reluctant and generally decline to grant an injunction restraining the opposite party absolutely from using a mark unless the plaintiff can claim that it is an infringement of the statutory right conferred by his registration of a trade mark.

25. That is precisely the reason why such elaborate procedure has been laid down in the Act and the Rules framed there under and so much care and circumspection is exercised before an application for registration of a trade mark is finally accepted by the Registrar and the name of the applicant is entered in the register as proprietor of the mark. It is axiomatic that a consummation achieved by a person after such long and patient striving cannto be set at naught by the simple device of some one filing an application before the Registrar for removal of that name from the register and for substitution of his own name in place of the original proprietor and by the Registrar's acceding to that request on the basis of ex parte proof.

26. I am firmly of the view that a proceeding for making an alteration of this nature in the Register of trade marks can by no means be regarded as a purely administrative proceeding and that the Registrar while discharging his duties in that behalf performs quasi judicial functions whereby he decides, prima facie at least, the rights of the parties. It is, thereforee, of the essence of the procedure 'required for performing that duty that the party whose rights are going to be adversely affected by the decision taken by the Registrar should have a notice of those proceedings and the decision should also be supported by reasons. The necessity for reasons in support of the decision arises also from the fact that the Registrar's decision is open to an appeal before the High Court.

27. Assuming I am wrong there and it is held that the function performed by the Registrar is of an administrative character the necessity for a notice and some kind of inquiry will still be there and since the order made by the Registrar is open to appeal before the High Court, the party aggrieved by his decision will obviously be entitled to a copy of the order being supplied to him on payment of usual charges.

28. It is true that the rules do nto expressly require a notice to be issued or a hearing to be given to the party adversely affected by the order when an application on Form T. M. 24 is made before the Registrar, but there is in the eye of law a necessary implication that the party adversely affected should be heard before an order for the removal of his name can be made against him. The principle is clearly stated in the leading case of Cooper v. Wands worth Board of Works (1863) 14 Cbns 180. In that case Section 76 of the Metropolis Local Amendment Act, 1855 authorised the District Board to demolish the building if it had been constructed by the owner without giving notice to the Board of his intention to build. The statute laid down no procedure for the exercise of the power of demolition, and, thereforee, the Board demolished the house in exercise of the above power without issuing a notice to the owner of the house. It was held by the Court of Common Pleas that the Board was liable in damages for nto having given notice of their order before they proceeded to execute it. Erle C. J. held that the power was subject to a qualification repeatedly recognised that no man is to be deprived of his property without his having an opportunity of being heard and that this had been applied to 'many exercises of power which in common understanding would nto be at all a more judicial proceeding than would be the act of the district board in ordering a house to be pulled down.' Willes J. said that the rule was 'of universal application and founded upon the plainest principles of justice' and Byles J. said that 'although there are no positive words in a statute requiring that the party shall be heard, yet the justice of the common law will supply the omission of the legislature.

29. The above decision has been cited with approval in a recent judgment of the Supreme Court in Criminal Appeal No. 32 of 1965, D/-25-9-1968 = : 1969CriLJ659 State Bank of India v. Rajendra Kumar Singh.

30. Mr. P. C. Khanna, learned Counsel for the appellant, raised one other contention also with regard to the nature of alteration in the register of trade marks which according to him is the only kind of correction or alteration envisaged under Section 57 of the Act. He argued that the only alteration contemplated by the Section was in respect of an order correcting the name, address or description. The removal of the name of one of the registered proprietors was nto within the contemplation of the Section at all. As I have already come to the conclusion that the Registrar's orders in this case have gto to be set aside on the short ground that the appellant has nto been afforded opportunity to show cause against the action, I do nto consider it necessary to express any opinion on the last contention urged by Mr. Khanna.

31. I should however like to make it clear that any opinion expressed by me in the course of this order, on the merits of the appellant's claim should in no way, influence the decision of the Registrar who will be fully entitled to come to his own independent decision, unhampered by any observation made by me in this order, if and when he is moved to do so by the parties concerned.

32. The result of the foregoing discussion is that both the appeals are allowed and the orders removing the name of the appellant from the Register of trade marks are set aside; but in the circumstances of this case I do nto propose to make any order at to costs.

33. Appeals allowed.


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