Dcw Home Products Ltd. vs Registrar Of Trade Marks And Anr.
2002 Latest Caselaw 744 Bom

JUDGMENT

1. This petition under Section 109 of the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the "Act", is against an order dated 10-2-1998 by which the Deputy Registrar of Trade Marks has cancelled certificate of registration of the label mark "CAPTAIN COOK" dated 15-7-1996.

2. The facts are as follows :--

The petitioner DCW Home Products Ltd. assigned the trade mark to International Best Foods Ltd. on 29-1-1998. International Best Foods Ltd. merged with Hindustan Lever Ltd. by an order dated 26-9-2001 and applied for registration of their trade mark CAPTAIN COOK in class 35 in respect of goods which reads as iodised salt.

3. On 15-7-1996 the Deputy Registrar of Trade Marks issued a certificate of registration of the Trade Marks to the petitioner. Thereafter, on 22-12-1995 the respondent No. 2 Vishal Salt Industries through their Advocate issued a notice to the Deputy Registrar objecting to registration of the trade mark on the ground that they had lodged a notice of opposition on 22-12-1995. Therefore, the certificate could not have been granted without deciding their notice of opposition.

4. The Deputy Registrar of Trade Marks made an inquiry into the matter and came to the conclusion that there was a notice of opposition as claimed by the respondent No. 2 and that the certificate of registration was, therefore, liable to be cancelled. It is that order which is impugned before this Court.

5. The only question, therefore, is whether the Deputy Registrar of Trade Marks has acted in accordance with law in issuing the certificate of registration and, thereafter, in cancelling it.

6. Initially, the learned counsel for the petitioner, contended that the main reason given by the Deputy Registrar for cancelling the registration of the trade mark, viz., that registration was granted even though notice of opposition was lodged by the respondent No. 2 was completely baseless. The contention was not only that the Deputy Registrar had not served any notice of opposition on the respondent No. 2, but in fact there was no such notice of opposition lodged by the respondent No. 2. Therefore, this Court directed the Deputy Registrar to produce the relevant record.

7. Having heard the learned counsel for the respective parties at length, including the counsel for the respondent No. 1, the following facts clearly emerge :--

On 22-12-1995 an opposition was lodged by the respondent No. 2. I have examined the original Register of Valuables and the relevant entry of that date.

That entry is at sr. No. 1, the details of which are: It is registered as No. 8581. The date of receipt is 22-12-1995. The amount paid by way of fee is Rs. 5007-and it is received from Shri Nainar Dayakar in cash. It is in respect of Trade Mark Nos. 59461, 536489 and 539654.

8. It is clear that TM-5 referred to in the entry is the statutory form prescribed for lodging notice of opposition and that one of the Trade Marks in respect of which opposition was lodged is No. 539654 i.e. the mark in question. It may, therefore, be safely inferred that the notice of opposition was lodged in respect of the trade mark in question i.e. No. 539654.

9. The Deputy Registrar of Trade Marks in his affidavit filed today has stated that though the notice of opposition was filed, it was not sent to the Tribunal section and is not traceable. This would normally have been viewed with suspicion, but for the fact that the original register maintained in the regular course of business clearly shows the entry in form TM-5 which is the statutory form of notice of opposition is in respect of trade mark in question i.e. 539654. Moreover, Mr. Dayakar, learned counsel for respondent No. 2, has referred to the affidavit of respondent No. 2 which shows receipt No. 59461 showing receipt of Rs. 500/- as fees by the trade mark registry.

10. It is equally indisputable, and in fairness to Mr. Shah, learned counsel for the Deputy Registrar, it must be stated that he did not make any attempt to assert the contrary that the notice of opposition was served on the petitioner. Indeed, if it was not traceable, it would not have been served on the petitioner.

11. The relevant portion of Section 23 of the Act reads as follows :--

"23. Registration. -- (1) Subject to the provisions of Section 19, when an application for registration of a trade mark in Part A or Part B of the register has been accepted and either --

(a)     the application has not been opposed and the time for notice of opposition has expired; or
 

(b)    the application has been opposed and the opposition has been decided in favour of the applicant: 
 

the Registrar shall, unless the Central Government otherwise, directs, register the said trade mark in Part A or Part B of the register, as the case may be, and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of Section 131, be deemed to be the date of registration."

The section provides that the Registrar shall register the trade mark, inter alia, if:--

(a)     the application for registration has not been opposed and the time of opposition has expired, or
 

(b)    the   application   for  registration   has   been   opposed   and   the opposition has been decided in favour of the applicant. 
 

12. A reading of the section makes it clear that the provisions are mandatory in nature and must be complied with. The present case falls Clause (b) above, but in a peculiar way. The application for registration had, in fact, been opposed, but the opposition had not been decided in the applicant's favour. In fact, the opposition has not been decided at all. As noticed earlier, the opposition was received by the Deputy Registrar who did not serve the notice of opposition on the petitioner as required by Section 21 of the Act. Section 21 of the Act reads as follows :--

"21. Opposition to registration. -- (1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application , and if he does not do so he shall be deemed to have abandoned his application.

(3) If the applicant sends such counter-statement the Registrar shall serve a copy thereof on the person giving notice of opposition.

(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard if they so desire.

(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.

(6) Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the cost of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned."

There is no doubt that Sub-section (2) makes it mandatory on the Registrar to serve a copy of the notice on the applicant. The question is what is the consequence of not performing this mandatory act. It would be obvious from Section 21 that the requirement of serving a copy of notice of opposition on the applicant is not a mere formality. It is intended to enable the applicant to file a counter statement by serving a notice on the person giving notice of opposition and thereupon the parties are entitled to lead evidence and hear the matter before the application is decided. It is, therefore, clear that non-compliance with the mandatory provisions for any reason whatsoever must be taken to vitiate the proceedings.

13. In this regard, Mr. Shah, learned counsel for the petitioner, relied on a judgment of the Supreme Court in Khub Chand and Ors. v. State of Rajasthan and others, , where Section 4(2) of the Rajasthan Land Acquisition Act, 1894 was construed. Section 4(1) of that Act required that the Collector shall cause public notice of the substance of such notification to be given at convenient places in the said locality. While construing this provision, their Lordships observed that the issuance of such a notification is a necessary condition for the exercise of the power of entry. At page 125 of the report, the Supreme Court made the following observations:--

"It is a necessary condition for the exercise of the power of entry. The non-compliance with the said condition makes the entry of the officer or his servants unlawful. On the express terms of Sub-section (2), the officer or his servants can enter the land to be acquired only if that conditions is complied with. If it is not complied with, he or his servants cannot exercise the power of entry under Section 4(2), with the result that if the expression "shall" is construed as "may", the object of the sub-section itself will be defeated. The statutory intention is, therefore clear, namely, that the giving of public notice is mandatory. If so, the notification issued under Section 4 without complying with the said mandatory direction would be void and the land acquisition proceedings taken pursuant thereto would be equally void."

Applying the decision, I am of view that both Section 21(2) and Section 23 are mandatory.

14. A very peculiar situation has arisen in this case. The Deputy Registrar was bound to issue notice of the opposition to the petitioner, who had applied for registration. This is required by Section 21(2) of the Act. The registration could not have been granted without deciding the nature of opposition as required by Section 23 of the Act. However, the respondent No. 2's opposition was not decided, though lodged, since it was misplaced and no notice thereof was given to the petitioner. The certificate of registration was thus issued to the petitioner without considering the notice of opposition. This, as observed earlier, could not have been done either. Therefore, the Deputy Registrar has on an objection raised by the respondent No. 2 cancelled the petitioner's registration on the ground that a notice of opposition had been lodged, without taking into account the fact that the notice of opposition was not served on the petitioner at all.

15. The petitioner is right in contending that though notice of opposition may have been lodged, it was of no consequence to the petitioner since no notice thereof was given to the petitioner as mandatorily required by Section 21(2). The respondent No. 2 is equally right in contending that since it had lodged a notice of opposition, the Deputy Registrar could not have granted a certificate of registration to the petitioner without deciding his notice of opposition.

16. Thus, what emerges is that the registration was granted to the petitioner in contravention of Section 23 whereunder the Registrar of Trade Marks could not have granted registration to the petitioner unless the opposition was decided in its favour. However, it is equally clear that the Deputy Registrar was not entitled to cancel registration on the sole ground that the respondent No. 2 had lodged a notice of opposition without taking into account the fact that the Deputy Registrar had himself not issued the notice of opposition to the petitioner, which was mandatory. Moreover, it appears from the order that the petitioner was not heard by the Deputy Registrar before passing an order since they had applied for an adjournment which was rejected. The order shows that none appeared on behalf of the petitioner. The order is thus passed without hearing the petitioner.

17. I find it difficult to describe the arbitrariness with which the Deputy Registrar has acted. By not following the law, he has caused a legal injury to both the parties. Chronologically, he first caused injury to the respondent No. 2 by accepting his opposition and ignoring it. Further in granting the certificate of registration to the petitioner without deciding the objection. The Deputy Registrar thus caused injury to the petitioner on the mere ground that opposition was lodged by ignoring the fact the notice of opposition was not served on the petitioner. In the result, the Deputy Registrar has granted and cancelled the registration certificate in contravention of law.

18. In the peculiar facts of this case, therefore, I am of view that the following order would meet the ends of justice.

The impugned order dated 10-2-1998 cancelling the certificate is set aside. The Deputy Registrar shall be at liberty to exercise such powers as are available to him under the Act for rectification etc. of entry No. 539654 either suo motu or upon an application made to him within a period of three months from today. The petition is disposed of in accordance with the above order. The learned counsel for the Registrar makes a statement that both the parties to the dispute would be entitled to take inspection, in accordance with law.

19. The costs of the petitioner and the respondent No. 2 shall be borne by the Registrar.

20. Certified copy expedited.

21. P. S. to give ordinary copy of this order to the parties concerned.