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Madan Mohan Lal Garg Vs. Brijmohanlal Garg - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberSecond Appeal No. 210 of 1972
Judge
Reported in9(1973)DLT397
ActsTrade and Merchandise Marks Act, 1958 - Sections 44(1), 109(2) and 109(5); Code of Civil Procedure (CPC), 1908 - Order 41
AppellantMadan Mohan Lal Garg
RespondentBrijmohanlal Garg
Advocates: P.C. Khanna and; Anoop Singh, Advs
Cases ReferredChadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.
Excerpt:
it was ruled that orders 41 to 43 passed was not applicable to order passed under the trade and merchandise act, 1958 - - the answer is that the rules and forms for this purpose which have to be resorted to must be the rules and forms which have been prescribed for appeals against the order of a single judge to a bench of the high court like an appeal under clause 10 of the letters patent......and their father shanker lal garg. the firm on june 9, 1960 applied to the assistant registrar of trade marks, new delhi, for registration of the trade mark 'shanker' in respect of the goods manufactured by it. the firm was dissolved on november 1, 1961 during the pendency of this application. after dissolution, respondent no. 1 applied to the assistant registrar to amend the application filed by the firm by deleting the names of the appellant and shanker lal garg and entering the name of respondent no. 1 alone in the application for registration of the trade mark. thereupon, the appellant objected to the proposed amendment claiming that respondent no. 1 was not entitled to use the trade mark 'shanker' under the terms of the deed of dissolution. the objection was over-ruled by the.....
Judgment:

S.N. Andley, J.

(1) This is an appeal against the judgment and order dated March 15, 1972 of a learned Single Judge of this Court. A preliminary objection has been raised by the respondent that the appeal has been filed after the time prescribed thereforee.

(2) The firm, Meerut Engineering Works, comprised of three partners, namely, the appellant, respondent No. 1 (appellant's brother) and their father Shanker Lal Garg. The firm on June 9, 1960 applied to the Assistant Registrar of Trade Marks, New Delhi, for registration of the trade mark 'SHANKER' in respect of the goods manufactured by it. The firm was dissolved on November 1, 1961 during the pendency of this application. After dissolution, respondent No. 1 applied to the Assistant Registrar to amend the application filed by the firm by deleting the names of the appellant and Shanker Lal Garg and entering the name of respondent No. 1 alone in the application for registration of the trade mark. Thereupon, the appellant objected to the proposed amendment claiming that respondent No. 1 was not entitled to use the trade mark 'SHANKER' under the terms of the deed of dissolution. The objection was over-ruled by the Assistant Registrar but, on appeal, the Assistant Registrar was directed by V. D. Misra, J. to decide the objections after affording adequate opportunity to the appellant to show cause against the amendment. It was then that the appellant filed an application on November 10, 1971 before the Assistant Registrar purporting to be under sub-section (1) of section 44 of the Trade and Merchandise Marks Act, 1958, hereinafter referred to as 'the Act' praying that the Assistant Registrar should refuse to take action on the deed of dissolution until the rights of the parties had been determined by a competent Court. This application was rejected by the Assistant Registrar by order dated December 14, 1971 on the ground that it was incompetent as section 44 related only to a case of assignment or transmission of a registered trade mark and could not be invoked where a trade mark had not been registered. Against this order of the Assistant Registrar, the appellant filed an appeal in this Court under sub-section (2) of section 109 of the Act which was 'dismissed by Ansari J. on March 15, 1972.

(3) This appeal was filed on April 17, 1972, under sub-section (5) of section 109 of the Act Along with a certified copy of the judgment and order of the learned Single Judge but a certified copy of the order dated December 14, 1971 of the Assistant Registrar of Trade Marks was not filed with it. The memorandum of appeal was returned to the appellant and it was refiled on July 6, 1972 with a certified copy of the order of the Assistant Registrar. Much later, on December 20, 1972 the appellant filed an application for dispensing with the filing of the order of the Assistant Registrar of Trade Marks Along with the memorandum of appeal.

(4) It is contended on behalf of the respondent that the appeal should be taken to have been filed on July 6, 1972 and not on April 17, 1972 and is, thereforee, barred by time.

(5) The Act contains provisions in section 109 for appeals. Sub-section (2) of this section provides an appeal to the High Court from any order or decision of the Registrar under the said Act or rules made there under. Such appeal is to be heard by a Single Judge of the High Court as provided by sub-section (4) of this section. Sub-section (5) of this section provides a further appeal to a Bench of the High Court from the order of a Single Judge. Sub-section (8) of this section applies the provisions of the Code of Civil Procedure, 1908 to appeals to the High Court under the said Act subject to the provisions of the Act and of the rules made there under.

(6) In exercise of powers conferred by section 110 of the Act, the Punjab High Court made rules as to the conduct and procedure of all proceedings under this Act before it and these rules contained in Chapter 7-E of Volume V of the Rules and Orders of the Punjab High Court are admittedly applicable to this Court by reason of section 7 of the Delhi High Court Act, 1966. Rule 3 provides that all applications and appeals under the Act shall be made by petition supported by an affidavit and shall be presented to the Deputy Registrar (Judicial). This rule will cover not only appeals filed under sub-section (2) but also under sub-section (5) of section 109 of the Act. It, thereforee, follows that even the appeal from the order of a Single Judge to a Bench of the High Court under sub-section (5) of section 109 of the Act shall be made by petition supported by an affidavit. Rule 13 provides that in cases not provided for in the Rules, the provisions of the Code of Civil Procedure, 1908 and, the Rules and Forms of the Court, shall apply mutates mutants to the proceedings under the Act.

(7) Before the matter came up before us, there was a controversy between the office of this Court and the appellant as to whether the appeal is to be styled as a second appeal from order or as a Letters Patent appeal under Clause 10 of the Letters Patent. The reason for this controversy was that if the appeal is to be treated as a second appeal from order, the memorandum of appeal should have been accompanied by a certified copy of the judgment of the Court of first instance whereas if it was to be treated as a Letters Patent appeal, the memorandum of appeal could be filed without the certified copy of the judgment either of the learned Single Judge or of the Assistant Registrar of Trade Marks.

(8) Obviously, Order Xliii of the Code of Civil Procedure which deals with appeals from orders cannot apply because appeals under this Order are confined to the orders enumerated in rule I and there can be no doubt that the order of the learned Single Judge is not one of such orders. Nor can Order Xliii be applied even mutates mutants for the same reason. Order Xlii of the Code of Civil Procedure which relates to appeals from appellate decrees also cannot apply even mutates mutants because the decrees contemplated are the decrees of Courts subordinate to the High Court and not to any decree or an order of a Single Judge of this Court. Order Xli of the Code of Civil Procedure also cannot apply as it relates to appeals from original decrees and there again the mutates mutants application of this Order cannot be resorted to.

(9) The exact objection on behalf of the respondent is based upon rule 2 of Order Xlii of the Code of Civil Procedure which has been made by the Punjab High Court and which applies to this Court also. It requires the filing of a certified copy of the judgment of the Court of first instance Along with the memorandum of appeal filed in the High Court from appellate decrees. Since Order Xlii of the Code of Civil Procedure cannot apply even mutates mutants to the order of the learned Single Judge under this Act, rule 2 will also be not applicable. On the other hand it is contended on behalf of the appellant that the present appeal must be treated to be an appeal under Clause 10 of the Letters Patent and such an appeal has been held to be competent by the Supreme Court in National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. 1953 SCR 1928. In this case, the Supreme Court were considering the question whether a Letters Patent appeal lay in the High Court from the appellate decision of a Single Judge in the absence of a provision for such an appeal in section 76 of the Trade Markets Act, 1940. It was held that once the matter comes to the High Court, the question whether any further appeal lies or not is to be decided in accordance with the powers and jurisdiction of the High Court under the Letters Patent and the omission to make provision for the Letters Patent appeal in section 76 of the Trade Marks Act, 1940 would not make a Letters Patent appeal incompetent. Sub-section (5) of section 109 of the Act makes a specific provision for an appeal to a Bench of the High Court from the order of a Single Judge. Such an appeal is authorised by the statute itself and cannot, thereforee, be said to be an appeal under Clause 10 of the Letters Patent which is available only if there is no statutory enactment. (See Clause 37 of the Letters Patent.)

(10) The question, thereforee, is as to the Form in which an appeal under section 109(5) of the Act is to be filed in the High Court. Rule 13 referred above applies the Rules and Forms of the High Court mutates mutants to the proceedings under the Act. If thereforee, an appeal is filed under section 109(5) of the Act from the order of a Single Judge, the enquiry is as to whether there are any Rules and Forms of the High Court prescribed for appeals to a Bench of the High Court from the order of a Single Judge. The answer is that the Rules and Forms for this purpose which have to be resorted to must be the Rules and Forms which have been prescribed for appeals against the order of a Single Judge to a Bench of the High Court like an appeal under Clause 10 of the Letters Patent. These Rules and Forms have to be applied mutates mutants. The relevant rules do not require that a memorandum of appeal against the judgment or order of a Single Judge to a Bench of the High Court should be accompanied by any judgment either of the Single Judge or of the Court below. It would, thereforee, follow that an appeal under sub-section (5) of section 109 of the Act would also not require the filing of a copy of the judgment or order of a Single Judge in an appeal under subsection (2) of section 109.

(11) This conclusion is reinforced by rule 3 which provides that all applications and appeals under the Act shall be made by petition and the only requirement of the rule is that such a petition should be supported by an affidavit. We, thereforee, conclude that appeals under the Act need not be accompanied by certified copies of any judgment. This appeal must, thereforee, be held to have been filed within time. In view of this conclusion C.M. 21-J of 1973 for dispensing with the filing of the certified copy of the order of the Assistant Registrar of Trade Marks is dismissed as redundent and unnecessary.

(12) We notice that this appeal was not filed in the form of a petition as required by rule 3. But no notice may be taken of that defect so far as this appeal is concerned. In future, the office should see that all appeals under the Act be they under sub-section (2) or sub-section (5) of section 109 of the Act are filed in the form of a petition accompanied by an affidavit as required by rule 3.

(13) For the reasons stated above, it is not right to style an appeal under sub-section (2) of section 109 of the Act as a first appeal against order or to style an appeal filed under sub-section (5) of section 109 of the Act as a second appeal against order which seems to be the practice adopted in this Court. The appeal under sub-section (2) of section 109 of the Act should be styled as a Miscellaneous Petition (Main) and an appeal under sub-section (5) of section 109 of the Act should be styled as an Original Civil Jurisdiction appeal as seems to be the practice adopted in the Bombay High Court as appearing from lames Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. : AIR1951Bom147 .

(14) Coming to the merits, the contention on behalf of the appellant is that this application under sub-section (1) of section 44 of the Act was competent even though there was no registered trade mark because a registered trade mark includes a trade mark under registration. Now, sub-section (1) of section 44 of the Act provides,-

'WHEREa 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 title of his satisfaction, register him as the proprietor of the trade mark in respect of the goods in respect 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.'

(15) The proviso to this sub-section gives a discretion to the Registrar to refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court. The object of the substantive part of this section is really to correct the entries in the Register of Trade Marks. Sub-section (1) of section 6 of the Act requires that a record called the Register of Trade Marks shall be kept at the head office of the Trade Marks Registry wherein shall be entered all registered trade marks with the names, addresses and descriptions of the proprietors, notifications of assignments and transmissions, the names, addresses and descriptions of registered users, disclaimers, conditions, limitations and such other matters relating to registered trade marks as may be prescribed. The object of maintaining such a register obviously is to indicate to the public at large the various particulars mentioned in this sub-section with respect to a registered trade mark and it is for this purpose that sub-section (1) of section 44 of the Act provides that any assignment or transmission of a registered trade mark together with its particulars should be entered in the register. The proviso only gives the discretion to the Registrar not to register the assignment or transmission where he feels that the rights of the parties should be determined by a competent Court. It is not possible to accept the contention on behalf of the appellant that on the analogy of section 155 of the Companies Act the Registrar is bound to refuse to register the assignment or transmission until the rights of the parties have been determined by a competent Court. The decision in S. Bhagat Singh and another v. The Piar Bus Service Limited, Amritsar and others: 1959 (LXI) Punjab Law Reporter 227 does not help the appellant because in this case also the Court, in its discretion, directed the parties to get their case adjudicated in a civil Court by instituting a regular suit.

(16) On its very language, thereforee, sub-section (1) of section 44 of the Act cannot apply where there is no registered trade mark and the occasion for applying the proviso to this sub-section would not arise.

(17) The appellant then contended that section 2 of the Act contains definitions of various expressions including 'registered trade mark' unless the context otherwise requires and, thereforee, registered trade mark which means a trade mark which is actually on the register (Section 2(1)(r) must include a trade mark in respect of which an application has been filed for its registration. We do not find anything in the context of section 44 to deviate from the meaning given to the expression 'registered trade mark' as aforesaid. The Assistant Registrar and the learned Single Judge were, thereforee, right in holding that the application made by the appellant under section 44(1) of the Act was not competent.

(18) The learned Single Judge has observed that the more appropriate provision of the Act which would apply to the present case appears to be section 12(2). With respect, this view does not appear to be correct because this section refers to a case where two separate applications have been made by different persons to be registered as proprietors of trade marks which are identical or nearly resembling each other in respect of same goods or description of goods. Such an application was never made by the appellant and, thereforee, section 12(2) of the Act will not apply.

(19) In the result, this appeal is dismissed with costs. Counsel's fee Rs. 150.


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