Adrema A.G. Zurich vs Adrema Limited

S.R. Das Gupta, J.—In this appeal a preliminary objection has been taken, viz., that this Court has no jurisdiction to hear this appeal. This point is of some importance and there is no decision of this Court upon it. We have heard the Learned Counsel at great length and whatever may be our decision in this matter the point is certainly not free from difficulty.

The appeal is against an order of the Registrar, Trade Marks, registering the word "Adrema" as the trade mark of the Respondent Company. For the purpose of this appeal, it is not necessary to set out the facts in very great detail. It would be sufficient to say that the Respondent Company presented an application for registration of the said trade mark. The application was presented in Calcutta at the branch office of the Registrar of Trade Marks. The application was thereafter sent to Bombay and the Registrar of Trade Marks at Bombay decided that the Applicant was entitled to have the said trade mark registered. It is against that decision that present appeal has been filed.

At the hearing of this appeal the Learned Counsel for the Respondent took the plea that this Court has no jurisdiction to hear this appeal and it is the Bombay High Court which alone has the jurisdiction to hear it. I should at this stage mention that it was not until the Appellant had been heard for about 2 days that this point was taken by Learned Counsel for the Respondent. The point, however, having been taken it became necessary for us to decide it.

This contention of the Learned Counsel for the Respondent, viz., that this Court has no jurisdiction to hear this appeal is based on the construction of Section 76 of the Trade Marks Act, 1940. The relevant portion of the said section reads as follows:

(1) Save as otherwise expressly provided in this Act, an appeal shall lie, within the period prescribed by the Central Government, from any decision of the Registrar under this Act or the rules made thereunder to the High Court having jurisdiction:

Provided that if any suit or other proceeding concerning the trade mark in question is pending before a High Court or a District Court, 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.

Learned Counsel for the Respondent contended before us that the section contemplates that there must be one High Court which would be competent to hear the appeal. That High Court in this case, according to him, would be the High Court at Bombay because the decision in this case was given by the Registrar of Trade Marks at Bombay. He urged that the fact that the application was originally presented at Calcutta would make no difference for the purpose of determining which High Court has got jurisdiction to hear this appeal. In short, his contention was that it is the High Court of the place where the decision has been given which is entitled to hear the appeal as against the said decision.

As against this contention, the Learned Counsel for the Appellant urged before us that the expression "the High Court "having jurisdiction" does not imply that there must be one High Court to hear this appeal. There may be, according to him, a case where two High Courts will be fully entitled to hear the appeal. He further contended that the question of jurisdiction has to be decided by reference to the place where the application for registration is originally made. In this case the application for registration having been made at Calcutta although it was subsequently transferred to Bombay for decision, it is the Calcutta High Court which will have jurisdiction to hear the appeal against the said decision.

We have given most anxious consideration to the contentions of the respective parties before us. As I have indicated before, the point is not free from difficulty and there is no decision of this Court touching this question. What we have to determine is what is meant by the words "the High Court having ''''jurisdiction". The expression used is not at all clear. S.R. Das, J., as he then was, in the case of The India Electric Works Ltd. v. Registrar of Trade Marks (1946) 51 C.W.N. 42, 54, observed that it is not quite intelligible as to what is precisely meant by the expression "High Court having jurisdiction" in Section 76(2) of the Trade Marks Act. His Lordship, however, as it was not necessary for his Lordship to do so, did not decide what the meaning of the said expression "High Court having jurisdiction" used in Section 76(2) of the Trade Marks Act would be. It seems to me that the expression "the High Court having jurisdiction" used in Section 76(2) of the Trade Marks Act, 1940, whatever may be its other connotation, indicates clearly that there must be one High Court which would be competent to hear an appeal against a decision of the Registrar of Trade Marks. I cannot accept the contention of the Learned Counsel for the Appellant that "the High Court having "jurisdiction" may be one or two High Courts, as the case may be, which would be competent to hear an appeal against a decision of the Registrar of Trade Marks. The view which I am taking on this question is supported by the expressions which have been used in Sections 46 and 37 of the said Trade Marks Act, 1940. In Section 7 of the Trade Marks Act, it is inter alia provided that a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application in the prescribed manner by any person aggrieved to "a High "Court" or to the Registrar, on the grounds mentioned in that section. Similarly, in Section 46 of the Trade Marks Act, it is provided that on application in the prescribed manner by any person aggrieved to "a High Court" or to the Registrar, the Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the grounds mentioned therein. The expressions used in those sections, while referring to High Court, stand in sharp contrast with the expression used in Section 76(2) of the said Act. The use of the words "a High Court" in Sections 37 and 46 of the said Act shows that the applications mentioned therein can be made to "any High Court" and not to one particular High Court, which would have jurisdiction to hear the applications referred to therein. But the same thing cannot be said with regard to Section 76(2) of the Trade Marks Act. There the use of the expression "the High Court having jurisdiction" to ray mind indicates that there would be one High Court which would be competent to hear the appeal under the said section.

The question, however, still remains as to the meaning of the expression "the High Court having jurisdiction" and what High Court would have power to hear the appeal in the present case. The difficulty is created by the fact that there is nothing in the said section, except a bare statement to the effect that "the High Court "having jurisdiction" will hear the appeal, to guide us in determining this question. The jurisdiction over what? Is it to be a jurisdiction over the Tribunal which has pronounced its decision or is it to be a jurisdiction over the decision itself? The expression used in that section does not make that position clear. As I have indicated, Learned Counsel for the Appellant strenuously argued before us that the jurisdiction contemplated in that section is the jurisdiction over the Tribunal and not jurisdiction over their decision. He urged that the Registrar of Trade Marks functions both at Bombay and also at Calcutta and therefore both the High Courts at Bombay and at Calcutta have got jurisdiction over the said Tribunal and it does not matter where the decision has been given; the High Court at Bombay on the High Court at Calcutta can exercise jurisdiction over that decision. This contention has undoubtedly considerable force but on a proper consideration of the matter I have come to the conclusion that it is the place where the decision has been giver which will determine the jurisdiction of the High Court to which the appeal would lie. In this case the decision has been given in Bombay, may be by the same Tribunal, viz., the Registrar of Trade Marks, and to my mind the High Court at Bombay would be the High Court which will have jurisdiction to hear appeal against that decision. The view which I am taking in this matter is supported to some extent by two decisions of the Lahore High Court, viz., Abdul Ghani Ahmad v. Registrar of Trade Marks, Government of India AIR (1947) Lah. 171 and Tapton Tea Company v. The Liptons Ltd. and Anr. AIR (1954) P&H 270. In the earlier of those two decisions, Abdur Rahaman, J., has-held that the appeal against a decision which was given in Bombay would lie in the High Court at Bombay and not in the High Court at Lahore although it was within the jurisdiction of the High Court at Lahore that the application for registration was originally presented. It is true that the facts of that case are the some extent distinguishable from the facts of the present case. A Lahore the office of the Registrar of Trade Marks has no brand and no application can be presented there and no matter can be heard at the said branch but in Calcutta the Registrar of Trade Marks has got a branch and in certain cases, as mentioned in Rules 142-145 of the rules made under the Trade Marks Act. matters arising out of an application for registration can be heard and decided at the said branch. But it seems to me that the ratio decidendi of the said decision is helpful for the present purpose. Abdur Rahaman, J., in the course of judgment observed that the order was passed by the Registrar in Bombay and that order alone can be regarded to have given a cause of action to the Appellant as it certainly arose in Bombay. In other, words, it seems to me that the learned Judge was of the opinion that the jurisdiction of the High Court to hear the appeal under that Act would be determined by reference to the place where the decision has been given. His Lordship in the end concludes by saying that the intention of the legislature could not have been to confer jurisdiction on Courts from within whose jurisdiction applications were made but only on the Court where the office of the Registrar giving the decision was located. The view taken by Abdur Rahaman, J., was accepted in the later case of the same High Court to which I have referred, Tapton Tea Company v. The Liptons Ltd. and Anr. (Supra).

Having considered the matter carefully, I have come to the conclusion that in this case the Bombay High Court would be the Court which will have jurisdiction to entertain this appeal. Although not deciding this question by reference to conveniences or inconveniences which would result from the one or other view which may be taken on this matter but strictly according to the interpretation of the section itself, I may just mention that the result of accepting the contention of Learned Counsel for the Appellant would lead to very inconvenient consequences. For instance, in such a case, both the High Courts at Bombay and at Calcutta would have concurrent jurisdiction over matters decided by the Registrar of Trade Marks. Appeals may be filed at the discretion of the aggrieved parties either to the Bombay High Court or to the Calcutta High Court thereby in many cases, causing hardship and inconveniences to the opposite parties. In my opinion, the legislature in enacting that section did not contemplate such a consequence. In my opinion, the legislature in using the words "the High Court having jurisdiction" meant that there should be one High Court to entertain appeals against such decisions of the Registrar of Trade Marks.

Learned Counsel for the Appellant then, contended before us that in any event the Respondent is debarred from raising the plea of jurisdiction in this appeal. He contended that the conduct of the Respondent throughout this appeal has been such that he would be prevented from raising the said plea now. Learned Counsel for the Appellant for this purpose relied on a decision of P.B. Mukherji, J., in the case of Jupiter General Insurance Company Ltd. v. Corporation of Calcutta (1956) 60 C.W.N. 721. In that case the parties proceeded with arbitration and at the stage when the matter came up to this Court one of the parties raised the question of jurisdiction. The learned Judge did not allow that plea to be taken. In my opinion, the position in an arbitration matter stands entirely on a different footing. The jurisdiction of an arbitrator is the creature of an agreement between the parties and even though an arbitrator may not originally possess jurisdiction to decide disputes between the parties, such jurisdiction can be subsequently conferred by agreement between the parties. The conduct of the parties may in an appropriate case lead to the conclusion that such an agreement was arrived at between the parties. That however cannot be the position in a case where the right to hear appeals has been conferred by a statute. Jurisdiction is a creature of the statute and not created by an agreement between the parties. Learned Counsel conceded before us that an agreement cannot give jurisdiction to a Court to hear a matter. That being so, I am clearly of opinion that this contention of Learned Counsel for the Appellant has no substance and should be rejected.

The result, therefore, is that this appeal is disposed of on this preliminary point and is dismissed.

Before concluding my judgment, I should mention that there cannot be any question that the Appellant bona fide prosecuted this appeal to this Court. As I have indicated before, the matter is not at all free from difficulty and there was some justification to act on the view though erroneous that the Calcutta High Court was the proper Court to which this appeal should be preferred. The matter does not rest there. It appears that in certain proceedings pending before the Registrar of Trade Marks between the same parties, the Respondent took the plea that the matter could not be and should not be decided until the present appeal was heard and finally decided by this Court and the Respondent further contended in those proceedings that this High Court had got jurisdiction to entertain this appeal. Having regard to all these circumstances, I am clearly of the opinion that the Appellant bona fide prosecuted this appeal in this Court and with due diligence.

In the result, therefore, the appeal is dismissed. But in view of the fact that this plea as to jurisdiction was not taken until the appeal had proceeded to some extent we are of the opinion that the Appellant should get the costs of two days'' hearing before us but the other costs of the appeal should be borne and paid by each party.

Certified for two Counsel.

In view of the fact that the appeal is disposed of on the preliminary ground, the question of making any order on the application before us does not arise.

Bachawat, J.

Sub-section (1) of Section 76 of the Trade Marks Act is obscurely drafted and is open to several interpretations. I am unable to say that the Sub-section is not capable of the construction suggested by my learned brother.

This is not a case where the proviso to the Sub-section can have any application. It is admitted by Mr. Mukherjee that when the appeal was made to this Court no suit nor any other proceeding concerning the trade mark in question was pending before this Court.

The question whether an appeal lies to this Court must therefore be determined with reference to the first paragraph of Sub-section (1) of Section 76. The paragraph uses the expression "the High "Court having jurisdiction" in contra-distinction to the expression "a High Court" in Section 37 and Section 46 of the Act. The legislature obviously contemplates that in a case governed by the paragraph an appeal will lie to one High Court and one High Court alone. The expression "the High Court having jurisdiction" must take its meaning in the light of this objective. What nexus between the decision of the Registrar and the High Court gives the High Court exclusive jurisdiction to hear the appeal? The Registrar has his office at Bombay and a branch office at Calcutta and therefore may be said to be amenable and subject to the general jurisdiction of both Bombay and Calcutta High Courts. But clearly both courts cannot have concurrent jurisdiction. Residence of parties cannot be decisive for parties may reside in both jurisdictions. The making of the application at Calcutta is again not decisive for by Rule 143 the application has effect as it was made or sent to the Trade Marks Registry at Bombay. The place where the decision of the Registrar is pronounced appear to be the determining factor. The cause of appeal arises there. The decision may be pronounced either at Bombay or under Rule 145(2) at Calcutta if the hearing takes place at Calcutta. In the present case the hearing took place and the decision was pronounced at Bombay. We must, therefore, accept the Respondent''s contention that the Bombay High Court has jurisdiction to hear the appeal and this Court has no jurisdiction in the matter. The appeal is therefore incompetent.

I am totally unable to accept the argument of Mr. Mukherjee that either waiver or consent can confer jurisdiction upon this Court to hear the appeal. The judicial power to hear an appeal is the creature of statute. Such power cannot he conferred either by agreement or by waiver. Entirely different considerations apply to an arbitrator whose authority is conferred by an agreement of the parties.