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Judgment
Z.S. Negi, J
The above clarificatory application is filed by M/s. Medical Technologies Ltd. -the applicant-seeking clarification of order No. 91/2009 dated
29.5.2009 passed by this Appellate Board whereby the Original Rectification Application, being ORA/46/2006/TM/MUM of the applicant for removal
of the Trade Mark 'ROFOL' under No. 583227 in class 05, registered in the name of M/s. Neon Laboratories Private Limited-the Respondent No. 1-,
from the register of trade marks or rectification of the register under Section 47/57/125 of the Trade Marks Act, 1999 (hereinafter referred to as the
Act), was dismissed.
The applicant's case is that on perusal of the aforesaid order dated 29.5.2009, it realised that some of the submissions advanced by the counsel for
the applicant during the course of arguments have not been considered nor mentioned nor even decided by the Appellate Board. According to the
applicant, it has obtained an injunction on passing off against the Respondent No. 1 restraining the use of trade mark ROFOL and the said injunction
order has been confirmed with two concurrent findings of the City Civil Court and the High Court of Gujarat. According to the applicant it, through its
counsel, had vehemently argued that the use of the mark by the Respondent No. 1 has been held to amount of passing off and consequently the
provisions of Section 11(3) (a) of the Act is a bar to registration of the impugned mark ROFOL and though copies of the orders passed by the
aforesaid two Courts were on record but the Appellate Board has completely bypassed this vital issue and has not even considered nor adverted to
nor even decided the said issue. It is alleged that it was argued that in view of the injunctive relief granted in favour of the applicant, the Respondent
No. 1 is not the true and rightful proprietor of the said trade mark and registration thereof is prohibitive of Section 18 of the Act but this issue too has
not been considered nor mentioned nor even decided by the Appellate Board. It is stated that it was further argued that the use of the impugned mark,
which is similar to the applicant's prior used mark for similar description of the goods, is likely to cause deception or confusion and consequently
registration of such mark is prohibitive of provisions of Sections 9(2) and 11(1) of the Act. It is also stated that the use of the impugned mark without
due cause would take an unfair advantage of and be detrimental to the distinctive character and repute of the applicant's mark and as such the
impugned registration is hit by Section 11(2) of the Act.
Ms. Archna Goyal, Constituted Attorney of the Respondent No. 1 at the outset of her affidavit reply dated 11.11.2009 submitted that this Appellate
Board has no jurisdiction to try, entertain and dispose of the instant clarificatory application as the order passed by the Appellate Board does not
require any clarification. She submitted that the present application is an abuse of process of law and made solely with mala fide and dishonest
intention to delay the pending suit proceedings between the parties before the civil courts and to mislead this Appellate Board. It is claimed that the
Appellate Board has considered the rectification application and all the pleadings and evidence placed before it and adjudicated upon the issues and
there is, therefore no case for clarification of the said order. It is submitted that the rectification application was filed on the false and frivolous ground
of non-user and the applicant miserably failed to prove the allegation and have now come up with this frivolous clarificatory application-which is
beyond the scope of the rectification application. The applicant is not entitled to rely on the order passed by the Court at the interim stage and to seek
rectification of trade mark of the Respondent No. 1. Further, the Appellate Board ought not to grant any relief as sought for in the instant application
on the grounds for rectification raised under Sections 9 and 11 of the Act. It is denied that the Appellate Board has completely bypassed the alleged
crucial issue and has not considered, adverted to and not even decided and on the contrary it is reiterated by the Respondent No. 1 that the Appellate
Board has considered all the materials and arguments and rightly passed the order which requires no clarification as sought for by the applicant. While
denying, that the registration does not confer any rights on the registered proprietor and that the common law rights are superior to the statutory rights,
as alleged by the applicant, it is submitted that the interpretation of Sections 27 and 28 of the Act provided in the application by the applicant is
misleading and wrong in law.
Learned Counsel for the applicant, at the outset of the hearing, submitted that some of the submissions advanced by the counsel for the applicant at
the time of hearing of the rectification application have not been considered nor mentioned nor decided by the Appellate Board and as has been
observed by the Supreme Court, in Daman Singh and others, etc. v. State of Punjab and others, etc. AIR 1985 SC 973, that if indeed any ground
which was argued was not considered it should be open to the party aggrieved to draw the attention of the Court making the order to it by filing a
proper application for the review or clarification, accordingly, the applicant has filed the present clarificatory application. In that case, the Hon'ble
Supreme Court observed thus: "" The final submission of Shri Ramamurthi was that several other questions were raised in the writ petition before the
High Court but they were not considered. We attach no significance to this submission. It is not unusual for parties and counsel to raise innumerable
grounds in the petitions and memoranda of appeal etc., but, later, confining themselves, in the course of argument to a few only of those grounds,
obviously because he rest of the grounds are considered even by them to be untenable. No party or counsel is thereafter entitled to make a grievance
that the grounds not argued were not considered. If indeed any ground which was argued was not considered it should be open to the other party
aggrieved to draw the attention of the Court making the order to it by filing a proper application for review or clarification. The time of superior courts
is not to be, wasted in enquiring into the question whether a certain ground to which no reference is found, in, the judgment of the subordinate court
was argued before that court or not?"" He further submitted that more or less similar observations were made by the Supreme Court in Mohd. Akram
Ansari v. Chief Election Officer and Ors. and Naved Yar Khan v. Haroon Yusuf and Anr. 2008 (1) ALT 51 (SC) and Shankar K. Mandal and Ors.
v. State of Bihar and Ors. AIR 2003 SC 4043. By referring to paragraphs K and N of the clarificatory application, learned Counsel submitted that the
Appellate Board has completely bypassed the argument of the applicant's counsel that the use of the impugned mark by the Respondent No. 1 has
been held to amount to passing off and consequently the provisions of Section 11(3)(a) of the Act is a bar to the registration of the impugned mark;
though the copies of the orders of the City Civil Court and the High Court were placed on record but the Appellate Board did not consider this crucial
argument. He submitted that this issue is required to be considered and decided. He submitted that the Appellate Board has jurisdiction to decide the
issues raised in the application and as such the application on hand is maintainable. Relying on the judgment of Full Bench of Punjab High Court in
Jagir Singh Sobha Singh and Anr. v. Settlement Commissioner, Pepsu and others AIR 1959 P&H 457 (V 46 C 156), learned Counsel submitted that
every tribunal has inherent power to correct its own error, provided, of course, the circumstances are such that the correction of that error is
necessary in the interest of justice and such inherent power is necessarily implied in the setting up of any authority on whom the responsibility of
deciding any matter rests and to deny such power to any tribunal would render that tribunal incapable of properly deciding the matters entrusted to it.
In that case after a scheme of consolidation had been framed and confirmed by the Revenue Minister visited the village and heard some complaints
against the scheme and, on considering them on the spot, he directed on 13.2.1953 a repartition of the entire village to be done afresh. On 23.7.1953,
the Under Secretary to Government issued an order stating that it has been decided that Ex-Revenue Minister's order dated 13.2.1953, legally without
jurisdiction and ultra vires, be ignored and no repartition need be done de novo. In a writ petition it was contended the second order is invalid because
the State Government having once exercised its power through Revenue Minister, the same State Government could not subsequently reverse the
order or recall it. The Court, while considering the question whether an order made by the Revenue Minister acting as the State Government could be
subsequently cancelled by the State Government?, observed that ""Every tribunal has inherent power to correct its own error, provided, of course, the
circumstances are such that the correction of that error is necessary in the interest of justice. Such inherent power is necessarily implied in the setting
up of any authority on whom the responsibility of deciding any matter rests. This inherent power, which must vest in all tribunals, has to be exercised
sparingly and only in circumstances which compel its exercise. If a tribunal, and for that matter any other legal authority, decides to recall an order on
the grounds that it is invalid, the act of recall cannot be quashed merely on the ground that no such recall is permitted by any express provision of a
statute. The question has to be decided in view of all the circumstances attending to recall."" Learned Counsel for the applicant while placing reliance
on the judgment of this Appellate Board in Safari Bikes Limited v. Safari Cycles Pvt. Ltd. and Ors. 2008 (36) PTC 650 (IPAB), wherein the judgment
of Supreme Court in Narshi Thakershi v. Pradyumansinghji, was referred to, submitted to say that when a review is sought due to a procedural defect,
the inadvertent error committed by the Tribunal must be corrected ex debito justitiae to prevent the abuse of its process, and such powers inheres in
every Court or Tribunal.
Learned Counsel for the Respondent No. 1, on the other hand, urged that the order passed by this Appellate Board requires no clarification and the
instant application be dismissed with compensatory cost in favour of the Respondent No. 1. Learned Counsel for the Respondent No. 1 vehemently
argued that the Appellate Board has considered the original rectification application and all the pleadings and evidence placed before it and has
adjudicated upon the issues which arose in view of such application. It was argued that the applicant has strongly relied upon the interim injunction
order passed by the City Civil Court but forgot that the same is under challenge by way of SLP before the Supreme Court of India and the Hon'ble
Supreme Court while granting the Special Leave made it clear that so far as the parties are concerned, whatever rights they have in law may be urged
in proceedings pending before the other Courts and as such the applicant is not entitled to rely on the orders passed by the City Civil Court at the
interim stage and also the Appellate Board could not have decided any issue which was not subject-matter of the rectification application. Further, the
civil suit No. 3419 of 2005 against the applicant filed by the Respondent No. 1 is pending before the High Court of Bombay. It was also submitted that
this Appellate Board ought not to grant any relief, as sought for in the present application, to the applicant on the basis of allegations made by it as
grounds for rectification under Sections 9 and 11 of the Act. It was submitted that the decisions of the Supreme Court as cited by the applicant are not
applicable in particular to the facts and circumstances of the present case and apart from this, the Appellate Board has no jurisdiction to try, entertain
and dispose of the present application. Learned Counsel for the Respondent No. 1, relying on the decision in Godrej Sara Lee Ltd. v. Reckitt
Benckiser (India) Ltd., submitted that in that case the foremost question for consideration of the Appellate Board was whether the Appellate Board
has the jurisdiction to review its own decisions or order and the Appellate Board observed as under:
Shri Ajay K. Gupta relied upon the judgment in Om Prakash Gupta v. Praveen Kumar 2000 PTC 326, more particularly to the passage extracted
therein from the judgment of the Supreme Court in Indian Bank v. Satyam Fibres (India): JT 1996 (7) SC 135, which was a case for review of
judgment of the National Consumer Disputes Redressal Commission, whereby it had passed a money decree. Review was sought on the ground that
the judgment was obtained on the basis of a letter which was forged. The Commission did not take notice of this plea. Supreme Court observed that:
This plea could not have been legally ignored by the Commission which needs to be remitted that the authorities, be that constitutional, statutory or
administrative (and particularly those who have to decide a lis) possesses the power to recall their judgments or orders if they are obtained by fraud as
fraud and justice never dwell together (Fraus et jus nunquam cohabitant)."" Reading the scope of the inherent power of the Court and Tribunal in such
matters it was observed as under (para 22 and 23 at page 216):
The judiciary in India also possess inherent power, specially under Section 151 CPC, to recall its judgment or order if it is obtained by fraud on
court. In the case of the fraud on a party to the suit or proceedings, the Court may direct the affected party to file a separate suit for setting aside the
decree obtained by fraud. Inherent power are powers which are resident in all Courts, especially of superior jurisdiction. These powers spring not
from legislation but from its nature and the constitution of the Tribunals or Courts themselves so as to enable them to maintain their dignity, secure
obedience to its process and rules, protects its officers from indignity and wrong and to punish unseemly behaviour. This power is necessary for the
orderly administration of the Court's business.
Since fraud affects the solemnity, regularity and orderliness of the proceedings of the Court and also amounts to an abuse of the process of Court,
the Courts have been held to have inherent power to set aside an order obtained by fraud practiced upon that Court. Similarly, when the Court is
misled by a party or the court itself commits a mistake which prejudices a party, the Court has the inherent power to recall its order....
The judgment relied upon by the learned senior counsel Shri Ajay K. Gupta was a case dealing with inherent jurisdiction to set aside an order obtained
by fraud practiced upon the court or tribunal. That decision, in our respectful view, is of no assistance to decide the question under consideration. No
question of fraud arises in the case on hand.
In Grinlays Bank v. Central Government, the Court was required to consider, inter alia whether the Labour Tribunal had any jurisdiction to set aside
the ex-parte award particularly when it was based on evidence. The objection as to the jurisdiction of the tribunal, raised before the Court was in the
following terms:
It is contended that neither the Act nor the rules framed thereunder confer any powers upon the Tribunal to set aside an ex parte award.
It is argued that the award although ex parte, was an adjudication on merits as it was based on evidence led by the Appellant, and, therefore, the
application made by the Respondent No. 3 was in reality an application for review and not a mere application for setting aside an ex parte award. The
Supreme Court held as follows:
It is true that there is no express provision in the Act or the rules framed thereunder giving the tribunal jurisdiction to do so. But it is a well known rule
of statutory construction that a tribunal or body should be considered to be endowed with such ancillary or incidental powers as are necessary to
discharge its functions effectively for the purpose of doing justice between the parties. In a case of this nature, we are of the view that the tribunal
should be considered as invested with such incidental or ancillary powers unless there is any indication in the statute to the contrary. We do not find
any such statutory prohibition.' Learned Counsel for the Respondent No. 1 submitted that the Appellate Board has consistently held in Pullambath
Hameed, trading as Sagar Travels v. Naranath Chalil Mahamood, trading as Sagar Travels and Business Corporation and the Registrar of Trade
Marks, Societe Des Produits Nestle S.A v. The Controller General of Patents, Designs and Trade Marks and the Assistant Controller of Patents and
Designs, and Toshiba Appliances Co. v. Kabushiki Kaisha Toshiba trading as Toshiba Corporation and the Registrar of Trade Marks, the Appellate
Board has, upon relying the decisions in the Grindlays Bank's case (supra) and Narshi Thakershi's case (supra) has observed that the Appellate Board
has no jurisdiction to review its own orders on merits except procedural defects. Learned Counsel for the Respondent No. 1 by drawing our attention
to paragraph 15 of the Statement of Case submitted that it does not lie in the mouth of the applicant that the Appellate Board has decided the issue
under Section 47(1)(b) and 47(1)(a) of the Act, which were not even argued at the time of hearing and it has also not considered the ratio of the
judgments on behalf of the applicant in support of its arguments. The order passed by the Appellate Board is testimony as to which party has relied
upon the judgment in Hardie Trading Ltd. and Anr. v. Addisons Paint & Chemicals Ltd. (2003) 11 S.C.C 92.
We have heard both the parties carefully. We find that there is no substance in the contention of the applicant that the Appellate board has
completely bypassed the vital issue that in view of the injunctive relief granted in favour of the applicant holding that the use of the mark by the
Respondent No. 1 amounts to passing off, and that the Respondent No. 1 is not the true and rightful proprietor of the said trade mark and registration
thereof is prohibitive of Section 18 of the Act as the Board has not considered nor mentioned nor even decided this issue. There is no doubt that the
applicant has obtained the injunctive relief from the Courts but it is to be remembered that the same was an interim injunction at an interim stage and
he same is under challenge before the Apex Court. Apart from this, the Hon'ble Supreme Court has made it clear at the time of granting Special
Leave that whatever rights the parties have in law may be urged in the proceedings pending before the other Courts. There is a suit between the
parties pending before the High Court of Bombay. As such the issue of injunctive relief obtained by the applicant is at an interim stage and at the
same time it is subjudice and commenting thereon or attempting to decide that issue is beyond the jurisdiction of the Appellate Board. From the reading
of the order of this Appellate Board shows that it is absolutely wrong to say that that the Appellate Board has even not mentioned about the injunctive
relief. This Appellate Board has decided the issue of registration having obtained without bona fide intention that the mark be issued in respect of
goods for which registration is obtained. It is also wrong to state that this Appellate Board has decided the issue under Section 47 of the Act, even
though it was not argued. If that be so, then question arise as to what for the Respondent No. 1 has relied upon the Hardie Trading Ltd.'s case and
whether has the applicant not sought relief under Section 47 of the Act? In Colombia Gramophone Co. Ltd.'s TM (1932) 49 RPC 621 (CA), it was
held that if there is a bona fide use of the mark within 5 years, however small, the mark cannot be removed. In respect of the other Grounds taken by
the applicant for clarification , we are of the view that the applicant has in the garb of clarification come up for rehearing of the entire case. The
specific grounds by mentioning the specific sections such as 9(2), 11(1),11(2) ,11(3)(a) of the Act sought to be raised at this stage is beyond the scope
of the review as these issues cannot be decided without elaborate arguments. However, records do not show that these specific sections of the Act
were raised at the time of hearing the rectification application. We are not inclined to deal with the cited judgment in the Cycle Corporation of India
Ltd. v. T.I. Raleigh Industries Pvt. Ltd., and Ors. (1996) 9 SCC 430, as the same was not relied upon by the applicant at the time of hearing the
rectification application. There is no procedural or inadvertent error committed on the part of the Appellate Board. We have already stated that the
issues raised by the applicant in the instant application cannot be decided without elaborate arguments, which is certainly not the objective of review.
Even this Appellate Board has in many cases observed that this Appellate Board has no jurisdiction to or power to review its own orders or decisions
except due to procedural defect or inadvertent error which may require correction ex debito justitiae. The applicant has failed to show any error which
can be said to be due to procedural defect or inadvertent error which may require correction ex debito justitiae. We are of the opinion that the
applicant, even knowing that this Appellate Board has no power to review its own orders on merits has deliberately filed this clarificatory application,
which is nothing but an abuse of process of law. We are of the considered view that the present application is devoid of any substance and it must fail.
In view of the above, the present miscellaneous petition is dismissed. However, there shall be no order as to costs.