Sri Chamundeeswari Weaving and Trading Co. (Private) Ltd. vs Mysore Spinning and Manufacturing Co. Ltd. and Another

Subrahmanyam, J.—This is a petition under Sections 37 and 46 (2) of the Trade Marks Act (Central Act V of 1940), for the removal of the

trade mark of the first respondent from the Register of Trade Marks.

The petitioner is a private limited company carrying on business in the manufacture and sale of handloom sarees. The first respondent is a

company whose registered office is in Bombay. It owns and conducts a spinning mill in Bangalore. The second respondent is the Registrar of

Trade Marks, Bombay.

On 10-6-1942, the first respondent made Appln. No. B. 1108 for the registration of a trade mark consisting of the word ""Chamundi"" in respect

of coition and artificial silk piece goods of all kinds. On 7-10-1942, the first respondent made two further applications, being applns. Nos. B.

62078 and B.62080 for registration of trade marks each containing a picture of Goddess Chamundi and claiming registration of the marks in

respect of ""tissues (piece goods); bed sheets and table covers; textile articles not included in other classes,"" All the three applications were

accepted and the marks were registered.

The registration was dated 10-6-1942 in the one case and 7-10-1942 in the other cases. The registration of all the three marks has been renewed

for a further period of 15 years, after the expiration of the seven years from the original date of registration under the provisions of Section 18(1) of

the Trade Marks Act of 1940. The Registrar in his statement says that the three trade marks Nos. B. 1108, B.62078 and B.62080 are associated

with one another under the provisions of Section 12 of the Trade Marks Act.

The petitioner applied to the second respondent by application No. 141798 on 30-12-1949 for the registration of the trade mark containing a

picture of Goddess Chamundi, in respect of piece goods. The application was opposed by the first respondent and is pending before the second

respondent. The petitioner files this application under Sections 37 and 46(2) of the Trade Marks Act, praying that the first respondent''s registered

trade marks Nos. B.1108, B.62078 and B.62080 be taken off the register.

The petitioner alleges that, in respect of piece goods, the trade marks were registered without any bona fide intention on the part of the first

respondent, that they should be used in relation to such goods, and that upto a date one month before the date of this petition a continuous period

of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to

those goods by the first respondent.

The first respondent takes a preliminary objection that the High Court of Madras does not have jurisdiction to hear and decide the petition. The

point is whether the petition can he heard and disposed of by this court.

Section 37(1) enacts that a registered trade mark may be taken off the register on an application to a High Court or to the Registrar. The term

High Court"" is thus defined in Section 2(1)(d) of the Act, as amended by the Adaptation of Laws No. 1 Order of 1956 :

High Court means : (a) in relation to any State, the High Court for that State; (b) in relation to the Union territories of Delhi and Himachal Pradesh,

the High Court of Punjab; (c) in relation to the Union territories of Manipur and Tripura, the High Court of Assam; (d) in relation to the Union

territory of the Andaman and Nicobar Islands, the High Court of Calcutta, and (e) in relation to the Union territory of Laccadive, Minicoy and

Amindivi Islands, the High Court of Kerala.

Under Sections 37 and 46 of the Act, this court would have jurisdiction to entertain this petition, if the subject-matter of the petition relates to

this State. The question, therefore, resolves itself into whether the subject-matter of the petition has relation to the State of Madras. There is no

authority directly bearing on the point.

The Act provides for an application to be made either to the High Court or to the Registrar on several matters. Section 72 of the Act enacts :

Where under this Act an applicant has the option of making an application either to a High Court or to the Registrar (a) if any suit or other

proceedings concerning the trade mark in question is pending before a High Court or a District Court, the application 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; (b) if in any other case the application is

made to the Registrar, the Registrar may, if he thinks fit, refer the application at any stage of the proceedings to a High Court.

Section 76(1) enacts :

Save as otherwise expressly provided in this Act, an append 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 the High Court, or as the case may be, to the High Court within whose jurisdiction that District Court is situated.

The expression ""High Court having jurisdiction"" occurring in Section 76(3) of the Act came up for consideration in Abdul Ghani v. Registrar of

Trade Marks, AIR 1947 Lah 171. In that case, certain persons living in the Punjab had applied for registration of their trade marks to the Registrar

of Trade Marks at Bombay. The applications were dismissed. They filed appeals in the High Court of the Punjab. Abdur Rahimin, J. (sitting singly)

held that the High Court of the Punjab did not have jurisdiction to hear the appeals.

The learned Judge took the view that the only High Court which had jurisdiction to hear appeals from the decisions of the Registrar u/s 76(1) was

the High Court in whose territory the office of the Officer who ordered the registry was situate. It is unnecessary for the purposes of this case to

consider, speaking with respect, the correctness of that view. The decision would become directly applicable if the Registrar refused the

petitioner''s application for registration of the trade mark, and the petitioner preferred an appeal to the High Court of this State instead of to the

High Court at Bombay.

The only question for consideration is whether the subject-matter of the petition, namely, the removal of the trademark of the first respondent

from the register of trade marks, relates to the State of Madras. The petitioner contends that any High Court in India would have jurisdiction to

entertain a petition by any citizen of India to have the first respondent''s trade mark struck off the register, because the effect of the registration of

the first respondent''s trade mark extends to the whole of India.

Any such view would be inconsistent with the definition of ""a High Court"" given in the Act. The definition of a High Court is not ""a High Court

which exercises jurisdiction in any part of the territory of India,"" but ""in relation to any State, the High Court for that State"". Every order passed by

a Registrar has effect throughout the territory (apart from Jammu and Kashmir) for the simple reason that the Act extends to the whole of India

(except Jammu and Kashmir).

Therefore, if the expression ""High Court"" occurring in Sections 37 and 46(2) and the other sections of the Act be deemed to be equivalent to any

High Court in the territories to which the Act ex-tends, then, the words ""in relation to any State, the High Court for that State"" are deprived of

significance. The definition clearly shows that, in the opinion of the legislature, the subject-matter of an application may have relation to one or more

States, and not to others. Sections 72 and 76 show that, where a suit or other proceeding is pending in a court, then the subject-matter of the

dispute regarding the trade mark relates to the State in whose territory that court is situate. In this particular case, there is no suit or other

proceeding pending in any court regarding the first respondent''s trade mark.

An order that the trade mark be struck off the Register would affect the first respondent and his business. The first respondent''s head office is

at Bombay and its Mill is in the Mysore State. The subject-matter of the petition, therefore, relates to the States of Bombay and Mysore. If the

trade marks were struck off the register, it would directly affect the business transacted in the States of Bombay and Mysore. The High Court at

Bombay has jurisdiction for the reason that striking off the trade mark relates to the registration done at Bombay.

If goods bearing the first respondent''s trademark were being sold in the State of Madras, then striking off the trade mark from the Register

would affect business done in Madras, and it might be held that, for that reason, the subject-matter of the petition has relation to the State of

Madras, It is not alleged that the first respondent''s goods bearing the trade marks in question are being sold in Madras. The allegation indeed is

that no piece goods bearing the first respondent''s trade marks have ever been sold in Madras.

It is true that the petitioned files the application in order that his own trade mark which, according to him, is in use in the State of Madras may

be registered by the Registrar of Trade Marks, but registry of the petitioner''s trade mark would not follow automatically on the first respondent''s

trade, mark being struck off the register. If that relief be granted, the Registrar would thereafter have to consider whether the petitioner''s trade

mark should be registered.

I am unable to agree with the petitioner''s argument that the subject-matter of the petition, namely the removal of the trade mark registered on

an application by a citizen of Bombay or Mysore has relation to the State of Madras because such registration has effect throughout India

(excluding Jammu and Kashmir), and the State of Madras is a State in India. Any such view would be to deprive the words ""in relation to any

State, the High Court for that State"" occurring in the definition of a High Court of all significance.

I hold that the petition may not be entertained by this court unless the subject-matter of the petition has relation to the State of Madras in a sense in

which the subject-matter does not have relation to every other State in India by reason merely of registration. I find that, while the subject-matter

of this petition has relation to the States of Bombay and Mysore, it does not have relation to the State of Madras and that this court does not have

jurisdiction to entertain the petition u/s 37 or Section 46(2) of the Act.

The petition is returned for presentation to a court having jurisdiction. If the petition be so represented, the costs incurred by the parties in this

court will be provided for by the order to be passed by such other Court. If the petition be not represented, the parties will bear their own costs in

this court.