Delhi High Court
Sony Kabushiki Kaisha vs Sony Plastics on 23 July, 1997
Author: M Shamim
Bench: M Shamim
JUDGMENT
Mohd. Shamim, J.
1. The petitioner through the present petition under Article 227 of the Constitution of India want this Court to cancel the certificate of registration with regard to Trade Mark No. 512252 dated June 21, 1989 issued to the respondent. According to the learned Counsel the said certificate was issued in respect of the aforementioned trade mark despite the notice of opposition filed by the petitioner at the Delhi office of the Trade Mark Registry. On making enquiries the attorneys of the petitioner were advised that the said opposition was pending and had not been disposed of. The above said certificate was issued and the aforesaid trade mark was registered on June 30, 1995 despite there being valid notice of its opposition. The said registration of the trade mark is in contravention of the provisions of the Trade & Merchandise Marks Act, 1958. It has therefore, been prayed that the above said certificate of registration be cancelled and the registration of the application No. 512242 be removed from the Registrar of Trade Marks.
2. Learned Counsel for respondent No. 1 Mr. Aggarwal, on the other hand, has contended that the present petition is not maintainable inasmuch as once a trade mark is registered, as is the case in the instant case, and certificate of registration is issued, as has happened herein, in that eventuality the only course open to the petitioner is either to approach the High Court, or the Registrar under Section 56 of the Trade Merchandise & Marks Act, 1956 which deals with the power to cancel or vary registration and to rectify the registration.
3. Since we are concerned with the construction of Section 56 the provisions of the said Section can be adverted to with profit. It is in the following words :-
"(1) On application made in the prescribed manner to a High Court 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 or observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by 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 a High Court 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) ......
(6) ......
4. Admittedly a trade mark has been registered in the instant case and a certificate to that effect has been issued as it manifest from Annexure A on June 10, 1995. Thus I agree with the learned Counsel for the respondents that the present petition is not maintainable. Since an alternative remedy is available to the petitioner by way of filing a suit for cancellation of the said trade mark registered as trade mark No. 512242 dated June 30, 1995.
5. There is another side of the picture. Learned Counsel for, the petitioner during the course of his arguments has referred to a copy of the notice issued by the Assistant Registrar of Trade Marks to the respondent and to M/s. Indian Trade Marks Co., Delhi, dated August 5, 1996. A perusal of the same reveals that according to the Assistant Registrar of Trade Marks the said trade mark No. 512242 was wrongly registered in contravention of Sections 23(1)(a) and (b) of the Act. The Assistant Registrar has further stated therein that the notice of opposition to the application was filed within the prescribed period of time. However, inadvertently the said notice was not taken into consideration while issuing the certificate of registration. Vide para 3 of the said notice the Assistant Registrar has stated that the entry made in the register in respect of the disputed trade mark i.e. 512242 is without sufficient cause and was made in the register on account of an error. Thus the notice was issued as to why the said trade mark be not removed from the register. Therefore, the Assistant Registrar himself is seized of the matter.
6. In view of the above the present petition has become infructuous. It is thus dismissed as such. The petitioner would however, be free to approach this Court over again in case he feels aggrieved with any order that may be passed by the Assistant Registrar in the proceedings adverted above pending decision before him.
7. Petition dismissed.
