Tikkam Chand & Anr. vs Dy. Registrar Of Trade Marks & Anr.
1998 Latest Caselaw 579 Del

ORDER

S.N. Kapoor, J.

1. In this petition the petitioner seeks to challenge the issuance of the letter dated 21st October 1997 whereby show cause notice has been given under Section 18(4) and 19 of the Trade and Merchandise Marks Act, 1958 (hereinafter called 'the Act' for short).

2. Briefly stated, the claim of the petitioner is that in the year 1977, son of petitioner No.1 introduced small pouches and given them the name of 'Gutka'. The said pouches were being sold under the mark 'Prince' which were registered under No. 414884B in Class 31. The said trade mark 'Prince' as well as the trade mark 'Gutka' were assigned in favour of the petitioner No.2. The assignments have been accepted. The pan masala under the trade mark 'Prince/Prince Gutka' had achieved a unique popularity. On 5th May 1984 under application No. 421497 in Class 34, application for registration of the trade mark 'Gutka' was filed. On 10th December 1987 the trade mark was published and objections were invited but no objection was filed in time. However, after the Dy. Registrar passed an order on 26th April 1993 on judicial side at the behest of some person, the impugned notice was issued to show cause about the proposal to withdraw the acceptance order under Sec. 18(4) and Sec. 19 of the Act. This notice has been challenged on various grounds.

3. I have heard the learned counsel for the petitioner and gone through the record. It cannot be accepted that Registrar has no power to reconsider after virtual acceptance of an application for registration before actual registration. Sub-section (4) of Section 18 of the Act provides as under:

(4) "Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit."

4. Besides, Section 19 of the Act also provides as under:

19. Withdrawal of acceptance._ Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied.

(a) that the application has been accepted in error; or

(b) that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted; the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted."

5. As such, it is very much evident that the Registrar may, after hearing the applicant, if the applicant so desires, withdraw the acceptance of the trade mark and proceed as if the application had not been accepted.

6. There is yet another aspect. No final order has yet been passed. The present appeal purports to have been filed under sub-section (2) of Section 109 of the Act. Sub-section (2) of Section 109 reads as under:

(2) "Save as otherwise expressly provided in sub-section (1) or in any other provision of this Act, an appeal shall lie to the High Court within the prescribed period from any order or decision of the Registrar under this Act or the rules made thereunder."

7. A question arises whether the impugned letter is just a proposal or an order or "any order or decision" of the Registrar within the meaning of sub-section (2) of Section 109 of the Act. It is apparently not a final order irrespective of whether it is just an interim order to postpone the registration. This court should be very slow in interfering in this kind of order for the petitioner is being afforded an opportunity to put his point of view irrespective of the fact whether this order is covered by the phrase "any order or decision" or not.

8. The question is: "Whether the learned Registrar is acting within the parameters of law or beyond it?" It is apparent that the petitioner is claiming that his son was using the trade mark 'Prince' as well as 'Gutka'. It is also admitted that the 'Gutka' had not yet been registered.

9. In so far as the trade mark 'Gutka' is concerned, it may be a mixture of pan masala as well as tobacco. If it is taken to be a generic word, then it may not be possible to accept the contention of the learned counsel for the petitioner. When 'Gutka' is used with some other words, it acquires a special meaning; otherwise, it is very generic word which cannot be monopolised by anybody.

10. However, since only a notice has been issued and an opportunity is being given to the petitioner to be heard before actually before acceptance is nullified, I feel that it may not be desirable at all to interfere with this matter for the applicant on his appearance before the Registrar will have a chance to put his point of view before arriving at any just conclusion. The idea to stop the proceedings and to delay it further cannot be accepted.

11. In such circumstances, it is desirable that Registrar of Trade Marks should hear the applicant as well as the alleged objectors, decide the question whether the applicant through trade mark 'Gutka' has acquired any reputation in relation to his goods like the term 'Safi' on the basis of evidence which may be produced and in the light of the fact that the word 'Gutka' is not an invented word and it is being sought to be used in isolation and not with any other word. Accordingly, I do not find any further force in this petition and dismiss the same.

12. The petitioner shall appear before the Registrar on 5th August 1998.

13. The matter is disposed of accordingly.