Poonam Engineering Works vs Bharatbhai Khushalbhai Patel And Anr.

Z.S. Negi, J

The above rectification application is for the removal of trade mark, No. 942022 dated 24.7.2000 in class 12 in the name of Respondent No. 1 from

the Register of Trade Marks or rectification of the Register Under Section 47/57 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

Pending disposal of the rectification application, the Respondent No. 1 filed an Interlocutory petition. M.P. No. 132/2007, seeking rejection of the

application on the ground that the applicant cannot avail the benefit of provisions of Section 125 of the Act as in the present case jurisdiction to

entertain the application is conferred by Rule 92 of the Trade Marks Rules. 2002 (hereinafter referred to as the Rules) only on the Registrar of Trade

Marks and not on this Appellate Board.

It is the case of Respondent No. 1 that an application to the Registrar Under Section 47, 57, 68 or 77 of the Act for making, expunging or varying of

any entry relating to a trade mark or collective trade mark or certification trade mark in the register shall be filed on Form TM-26 or Form TM-43, as

the case may be, accompanied by statement in triplicate setting out fully the nature of applicant's interest, the facts upon which he bases his case and

the relief which he seeks and where the applicant is not the registered proprietor of the trade mark in question, the application and statement aforesaid

shall in triplicate be left at the Trade Marks Registry. The Respondent No. 1 has submitted that in the present application, the provisions of Rule 92 of

the Rules will apply as there was no litigation pending between the parties herein to attract the provisions of Section 125 of the Act. The Petitioner to

the Interlocutory Petition has averred therein that the issue of jurisdiction raised by it should be treated as the preliminary issue and the same may be

decided prior to making any proceedings in the matter.

The applicant, which is the Respondent No. 1 in the Interlocutory Petition, has filed its reply to the said petition refuting the averments/submissions

made in the petition. It has denied that the rectification application has wrongly been filed before the Appellate Board and on the contrary it has

asserted that the application in question has been filed before the right forum. In support of its assertion, the applicant to the rectification application

has submitted that the statute itself provide option Under Sections 47 and 57 of the Act to the person aggrieved to file rectification application either

before the Registrar of Trade Marks or before the Intellectual Property Appellate Board and thus the applicant to the rectification application has

rightly chosen to file such application before the Appellate Board.

The Interlocutory Petition came up before us for hearing on 25th September 2008 wherein Shri R.R. Shah, learned advocate, appeared on behalf of

the applicant/Respondent and Shri Y.J. Trivedi, learned advocate, appeared for the Petitioner/Respondent of the Interlocutory Petition.

Shri Y.J. Trivedi, learned Counsel, contended that this Appellate Board has no jurisdiction to entertain the pending rectification application as at the

time of such filing there was no suit instituted or pending in a court of law and when that is so, the Applicant cannot file such application invoking

Section 125 of the Act. Provisions of Section 125 of the Act is available to a person aggrieved to come before the Appellate Board in certain cases,

such as where a suit for infringement of a registered trade mark, the validity of the registration whereof is questioned or Where in any such suit the

Defendant raises a defence Under Section 30(2)(e) of the Act and the Plaintiff questions the validity of the registration of the Defendant's trade mark,

the issue as to the validity of the registration of the trade mark concerned is to be determined only on an application for the rectification made to the

Appellate Board but in the present case neither the applicant to the rectification application nor the Respondent No. 1 to the rectification application

has either instituted or any suit pending against the either party. He further contended that in view of these facts, the jurisdiction to entertain the

present application lies with the Registrar of Trade Marks and the appropriate provisions applicable are Rules 91 and 92 of the Rules. Rule 91

provides for the forum where the rectification application is to be filed by a person who is not a registered proprietor of the trade mark and Rule 92 of

the Rules provide for the manner of filing of an application by such proprietor to rectify or remove a trade mark from the register. Learned Counsel

urged that the Interlocutory Petition may pleased be allowed with cost in favour of the Petitioner.

Learned senior counsel Shri R.R. Shah, on the other hand vehemently opposed the petition by submitting that it is generally optional for the applicant

seeking rectification of register to file such application either before the Registrar of Trade Marks or before the Intellectual Property Appellate Board

under the Act subject to the rider that where a suit for infringement of a registered trade mark, the validity of registration is questioned, the issue of

validity can be determined only on the application for rectification made to the Appellate Board. The procedure to be followed before the Registrar of

Trade Marks has been prescribed in Rules 92 to 101 of the Rules and procedure before the Appellate Board is prescribed in the Intellectual Property

Appellate Board (Procedure) Rules, 2003. He contended that the contention of the Petitioner that the application on Form TM-26 or Form TM-43

ought to have been filed before the Registrar of Trade Marks is unsustainable under law. The applicant of the rectification application, in exercise of

its option provided in the statute, has rightly chosen to file the rectification application before the Appellate Board. Learned senior counsel further

submitted that the Petitioner by filing this interlocutory petition cannot take away the statutory right of the applicant and if the present petition is

allowed the right of the applicant in rectification application will be highly prejudiced. It was urged that the present interlocutory petition may be

dismissed with costs.

Any person can file an opposition to application for registration but only an aggrieved person can file an application for rectification of a registered

trade mark Under Section 47 or Section 57 of the Act or under both the sections. The relevant portions of Sections 47 and 57 of the Act are extracted

as under:

Removal from register and imposition of limitations on ground on non-use, -

(1) A registered trade mark may be taken off the register in respect of the goods or services in respect of which it is registered on application made in

the prescribed manner to the Registrar or the Appellate Board by any person aggrieved on the ground either -

(a) ****

(b) ****

(2) ****

(3) ****

Power to cancel or vary registration and to rectify the register.--

(1) On application made in the prescribed manner to the Appellate Board or to the Registrar by any person aggrieved, the tribunal may make such

order as it may think fit for cancelling or Varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition

entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register or 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 the Appellate Board or

to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) ****

(4) ****

(5) ****

It is abundantly clear from the above extracted sections of the Act that the person aggrieved can make an application for removal from register and

imposition of limitations on ground of non-use or rectification of register Under Section 47 or Section 57 of the Act. The option is of the applicant to

choose the appropriate forum before which he decides to file such application. The only rider to the above extracted provisions is that no suit for

infringement, in which the validity of registration is questioned, should have been instituted or pending before a civil court and where this condition

exists, the application is required to be filed before the Appellate Board only. In the present case it is averred that suit for infringement, raising an issue

of validity of the registered trade mark, is not instituted, the applicant had option to file the application either before the Registrar of Trade Marks or

before the Appellate Board and the applicant had accordingly chose to file such application before the Appellate Board. We do not see any

jurisdictional issue involved in the application filed before this Appellate Board. As per Section 83 of the Act, this Appellate Board has been

established to exercise the jurisdiction, powers and authority under the Act. Section 83 of the Act is, for the sake of convenience, extracted as under:

Establishment of Appellate Board.--The Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be

known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this Act.

Sections 47 and 57 of the Act confer jurisdiction on the Appellate Board to entertain application thereunder and make such order as the Appellate

Board may think fit. The applicant has in the application for rectification averred that it is the person aggrieved for the reasons given therein. The

applicant has also filed the application for rectification Under Sections 47 and 57 of the Act and only mentioned Section 125 of the Act in the heading

of the application. A mere wrongly referred section of the Act cannot be a ground to throw away the application.

In view of the above, we see no merit in the Interlocutory Petition and the same deserves to be dismissed. Accordingly, the Interlocutory Petition is

dismissed with order as to costs.