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Judgment
S. Usha, Technical Member
The appeal has been filed against the order of the Deputy Registrar of Trade Marks, Chennai dated 16.08.2007 that the first respondent has
committed an offence by making false representation of trade mark as registered under Section 107(1)(a) of the Trade Marks Act, 1999 (in short the
Act). The appellant has also filed a miscellaneous petition No. 139/2007 to grant stay of the operation and effect of the order dated 16.08.2007
The first respondent herein filed a complaint before the Registrar of Trade Marks to take cognizance of the misrepresentation of the appellant by
falsely representing his trade mark as registered. The Registrar issued notice of hearing to the said complainant on 17.07.2006. The first respondent
did not file any reply. The matter was taken up for hearing on that day and after hearing the counsel orders were passed by the Deputy Registrar on
16.08.2007 stating that the first respondent had committed an offence under Section 107(1)(a) of the Act.
3 Aggrieved by the above order, the appellant is before this Board on appeal against the said order.
The appeal has been filed on the grounds that the impugned order suffers from serious error apparent on the face of record; that the Registrar
erred in holding that the complaint was proper; that the Registrar has failed to give any finding in the impugned order; the Registrar has only
considered the first respondent's submissions and not the appellant; that the Registrar has not applied her mind while passing the order; the Registrar
failed to note that the complaint has been filed without any basis; that the Registrar failed to appreciate that the appellant has not misrepresented but
had only mentioned the registration number above the Plus 2 label; the Registrar failed to appreciate that the appellant is the registered proprietor of
the trade mark; the Registrar ought to have held that there is no false representation under Section 107(1)(a) of the Act and that the Registrar ought
not to have entertained the complaint.
The first respondent filed his counter statement denying all the averments and stated that the impugned order was correct and there was no
infirmity in the order. The first respondent stated that they had been using the label mark PULS 5 with an artistic work and had obtained registration
as of 25.09.2003. The appellant had been initiating various litigations against the first respondent at various fora. During the proceedings the first
respondent became aware of the three labels with the mentioning that the marks were registered whereas only one label was registered and filed a
complaint before the Registrar of Trade Marks. The appellant had also filed a rectification application before this Board for cancellation of the first
respondent's trade mark and the same was dismissed. The appellant had not filed any reply to the complaint. The appellant made oral submissions
before the Registrar wherein the appellant's counsel mainly submitted that various litigations that were pending before various fora. In fact the
appellant has admitted his use of the registered number in other labels which are pending registration in the grounds of appeal wherefor no submission
has been made as to why the number was mentioned nor any apology pleaded before the Registrar. The first respondent further stated that it is
immaterial whether the registration number is mentioned within or above the border, any false representation amounts to an offence.
The matter was taken up for hearing on 1.8.2008. Learned Counsel Shri A.A. Mohan appeared on behalf of the appellant and learned Counsel Shri
T.D. Selvan Babu appeared on behalf of the first respondent.
Learned Counsel for the appellant mainly contended that the impugned order has been passed without any finding and has got to be remanded back
to the Trade Marks Registry for giving a detailed order. The impugned order is arbitrary and no reasoning has been given by the Registrar.
Learned Counsel for the appellant relied on three judgments in support of his submissions that the Registrar ought to have given a reasoned order, if
not it is to be remanded back for the same.
i) Surjit Matharu v. Jagdish Matharu 2001 PTC 352 (Delhi);
ii) Hindustan Lever Limited v. PFIZER Ltd. and
iii) Travancore Rayons Ltd. v. The Union of India.
The counsel also relied on the judgment reported in Prabha Singh Jaswanth Singh v. B. Mohammed Yousuff and submitted that there the findings in
the order were given in a complaint but were not gone into by the appellate authority.
Learned Counsel for the first respondent vehemently opposed the contentions of the appellant. The counsel submitted that the appeal itself is not
maintainable. The appellant had in fact not filed any reply to the complaint whereas made oral submissions only with regard to the litigation pending in
various fora. The counsel pointed out to sub-para 'c' and 'd' of para 5 of the appeal and submitted that the appellant has not filed any reply to the
complaint before the Registrar and thus the contentions made therein are false.
Learned Counsel for the first respondent relied on the judgment reported in Ratan and Company v. Assistant Registrar of Trade Marks PTC
(Suppl) (1) 635 Delhi and submitted that the above order is not appealable and the appellant had to seek his remedy in some other way.
In rejoinder to the first respondent's arguments, learned Counsel for the appellant submitted that not only their rights were affected but their liberty
was at a stake.
We have carefully considered the rival submissions of both the counsel and have gone through the documents filed by both the parties.
The only issue that is to be considered and decided is whether the order of the Deputy Registrar is to be set aside or not. We have perused the
complaint and the documents annexed thereto and the grounds of appeal and the documents annexed thereto. On perusal of the memo of grounds of
appeal at para (g) it is an admitted fact that the registration number 440971 has been mentioned only above the Plus 2 and the contention of the
appellant is that it is not a false representation. There has been no explanation as to why the registration number has been mentioned in a label which
is not registered. We have also perused the labels filed along with the appeal where the registration number has been mentioned in the label which is
not registered which amounts to an offence under the provisions of Section 107 of the Act.
Apart from that, the appellant has mentioned in the reply statement about the suit before the High Court, Bombay, Aurangabad Bench which we
are unable to take note of for the reason except for the copy of the order, no copy of the plaint is filed. Moreover, copy of the order is not filed
properly as the pages are missing and dates are not clear. We find different dates i.e. 20.08.04, 20.10.04, 26.10.04 and 04.05.05. The party's name i.e.
the first respondent's name is not clear.
The judgment relied on by the appellant squarely applies to the instant case on hand - 2006 (33) PTC 216 IPAB (supra).
When once the complaint is filed before the Judicial Magistrate, it is open to the appellant to take appropriate defence. Under the Trade Marks Act, a
false representation with regard to the unregistered trade marks as that of a registered one is an offence. With respect to false evidence in a court of
law, the IPC and the Cr.PC prescribe certain procedures to be followed to initiate proceedings against the person who gave false evidence. That is a
separate proceeding and when two different enactments make the commissions as distinct crime, each has to be considered separately and both
cannot be combined together.
In the instant case, on perusal of the documents, we are of the view that the appellant's action attracts the provisions of Section 107(1)(a) of the
Act. When the Registrar files a complaint as empowered under Section 115 of the Act, it is definitely open to the appellant to raise his defence before
the Magistrate. We do not agree with the submissions of the appellant that by this order not only his rights are affected but his liberty at stake,. We
are of the view that the appellant can defend his rights before the magistrate. We, therefore, find no reason to go into the impugned order as the
documents and submissions of the appellant are clear to say that the appellant has made false representation and that the registration number has been
mentioned in the unregistered label but no reasons given for the same.
Accordingly, the appeal is dismissed. As the appeal itself has been dismissed the miscellaneous petition No. 139/2007 does not survive However,
there shall be no order as to costs.