M/S. Ashoka Dresses (Regd.) vs M/S. Bonn'S Shirts & Others
1999 Latest Caselaw 1085 Del

ORDER

Dr. M.K. Sharma, J.

1. By this common order I propose to dispose of the aforesaid petitions in which the petitioners have challenged similar orders passed by the Registrar of Trade Marks and as similar and common issues arise for consideration.

2. The petitioners herein have challenged the orders passed on 15.5.1996 by the Registrar of Trade Marks disposing off the interlocutory petitions filed by the opponents.

3. Brief facts leading to filing of the aforesaid petitions are that Shri Hans Raj Thukral, Shri Raj Kumar Thukral and Shri Swaran Thukral trading as Ashoka Dresses applied for registration of trade mark 'LION' with device of head of lion adjacent to the first alphabet 'L' of the word Lion, in respect of ready-made garments included in class-25. The aforesaid application was advertised before acceptance in Trade Mark Journal No. 1092 dated 1.12.1994. Subsequently, thirteen opponents filed their notice of opposition opposing therein the registration of trade mark advertised in the Trade Mark Journal as aforesaid. During the pendency of the aforesaid notice of opposition opposing the registration the respondents herein filed interlocutory applications contending inter alia that the aforesaid advertisement in trade mark journal is a mis-representation and has created confusion and deception in the market and the same is meant for deceiving the public by way of misusing the same by the petitioners. The aforesaid applications were taken up for consideration by the Registrar of Trade Marks and were disposed of by the impugned orders which are the subject matter of challenge in the present petitions.

4. It is an admitted position of the parties that the advertisement of the impugned application in Trade Mark Journal No. 1092 was a defective advertisement for having shown it to be associated with the trade mark No. 425298 under the American Trade Mark 'LION' and by associating the same with the instant application for registration of the mark applied for. The petitioners cannot deny the fact that the association of Trade Mark No. 425298 has been wrongly indicated in the advertisement in question published in the Journal, for the aforesaid trade mark No. 425298 is still in the name of an American Company. It is also an admitted position that the aforesaid application filed by the petitioners has been advertised before acceptance. The Registrar of Trade Marks under the impugned order negatived the contention of the petitioners that the present matter relating to misrepresentation in the advertisement could not be raised at an interlocutory stage. The plea that the Registrar had no power to cancel an advertisement because no such power had been enlisted under Section 97 of the Act, to cancel the aforesaid advertisement because of mis-representation and also pass a consequential order placing the status of the application filed by the petitioner for registration at the stage of Rule 39 i.e. the stage before acceptance of trade mark was also rejected. It was held that the applications filed by the respondents get automatically abated and closed.

5. Counsel for the petitioners submitted that the Registrar of Trade Marks acted illegally and without jurisdiction in putting the applications filed by the petitioners to the stage of Rule 39 of the Rules. He also submitted that even in case there was some mis-representation in the advertisement the Registrar should have cancelled the advertisement and thereafter should have ordered for re-advertisement in correct form inasmuch as issuance of an incorrect advertisement was the act of the Registry of the Trade Marks and the petitioners were in no way concerned with the aforesaid mis-representation. He further submitted that for the mistake of Courts and its officers the litigants should not be allowed to suffer and since an incorrect advertisement was published due to the mistake of the officials of the Trade Mark Registry the Registrar should have ordered for cancellation of the advertisement and thereafter should have ordered for re-advertisement in accordance with law without putting back the clock to the stage of Rule 39 of the Trade and Merchandise Marks Rules. In support of his contention the learned counsel relied upon the decision of the Supreme Court in Jang Singh Vs. Brij Lal and Others reported in (65)1963 PLR page 884.

6. Learned counsel appearing for the respondent however, took up a preliminary objection contending inter alia that the present petition is not maintainable. He submitted that by the impugned order no right of the petitioners is decided and therefore, no appeal as against the said order is maintainable and therefore, the present petitions filed by petitioners under Section 109(2) of the Trade and Merchandise Marks Act should be dismissed as not maintainable. He also submitted that since the application filed by the petitioners was advertised before acceptance, therefore, the Registrar of Trade Marks acted legally and within his jurisdiction in directing that the status of the application filed by the petitioner falls at the stage of Rule 39 i.e. the stage before acceptance of trade mark upon cancellation of the advertisement. In support of his aforesaid submission he relied upon the decision of this court in M/s. Rattan & Co. Vs. P. Narayanan; . He also drew my attention to the various provisions of the Trade and Merchandise Marks Act particularly to the provisions of Sections 18, 19 and 20 of the Trade & Merchandise Marks Act read with Rules 39 to 47 of the Trade and Merchandise Marks Rubles.

7. In the light of the aforesaid submissions of the learned counsel appearing for the parties I propose to dispose of the issues raised before me.

8. The power to file an appeal is provided for under Section 109 of the Trade & Merchandise Marks Act. Sub-section (2) thereof provides that an appeal shall lie to the High Court within the prescribed period from any order or the decision of the Registrar under this Act or the Rules made thereunder. In Rattan & Co. (supra) this Court had an occasion to deal with a similar objection. A Single Bench of this court dealt with the provisions of Section 109 of the said Act and in that context held that the object of the said provision is to give a right of appeal to a party aggrieved by some order which affects his rights or liability inasmuch as the words "from any order or decision of the Registrar under this Act" though very wide do not include interlocutory orders which are merely procedural or processual and do not affect the rights and liabilities of the parties. In the present case the Registrar having found that the advertisement was defective and cancelled the same consequent to which the application of the petitioner was set sown to the stage of Rule 39 i.e. prior to the stage of acceptance. Counsel for the petitioners however, submitted that by reverting back the petitioners to a stage of original position the rights and liabilities of the petitioners have been determined by the Registrar and therefore, the appeal is competent. It is not in dispute that in the advertisement there was mis-representation and therefore, the said advertisement had to be cancelled inasmuch as an advertisement of a trade mark is the notice to the world at large which is intended to provide complete information in respect of the mark which has been applied for registration and is likely to proceed for registration. A defective advertisement could create confusion and uncertainties in the mind of the general public and therefore, such an advertisement was not a fair representation to the public at large. Therefore, no fault could be found with the action of the Registrar in cancelling the advertisement, for it was necessary for him to put the record straight and get an advertisement done legally and in the appropriate form. Having so proceeded in accordance with law he ordered for putting the application to the stage of Rule 39 i.e. prior to the stage of acceptance. Such an action is more in the nature of procedural, for the provisions of Rules 37 to 47 of the Rules provide for procedure and the mode and manner in which an application for registration is to be dealt with by the Registrar. In my considered opinion, what the Registrar has done is a procedural and processual aspect and the same did not at all affect the rights and liabilities of the parties in any manner. I, therefore, hold that the order passed by the Registrar of Trade Marks putting the applications to the stage of Rule 39 is not appealable under Section 109(2) of the Act and accordingly, I uphold the preliminary objection. However, since the parties hereto argued at length on the merits of the dispute also I propose to deal with the said aspect also.

9. Section 18 deals with the procedure for registration, for it provides that any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. Sub-section (4) of Section 18 provides that 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. There is no absolute right under the Act enabling an applicant to get registration of his trade mark. Section 19 of the Act on the other hand empowers the Registrar to withdraw even the acceptance provided the same is done prior to its registration and also, provided he is satisfied that the application has been accepted in error or that in the circumstances of the case the trade mark should not be registered or should be registered subject to the conditions or limitations. Section 20 on the other hand provides that an advertisement of an application can be made either before acceptance or after acceptance as decided by the Registrar. The Registrar may however, cause an application to be advertised before acceptance when the condition as set out under proviso to sub-section (1) of Section 20 is satisfied.

10. Rule 39 relates to objection to acceptance and hearing thereto. It is provided that if on consideration of the application of any evidence of use or of distinctiveness or of any other matter which the applicant may or may be required to furnish, the Registrar has any objection to the acceptance of the application or proposes to accept it subject to such conditions, limitations, amendments etc. The Registrar shall communicate such objection or proposal in writing to the applicant. Rule 44 also provides that even after acceptance of an application but before registration of the trade mark the Registrar has any objection to the acceptance of the application, the Registrar is empowered to communicate such objection in writing to the applicant. Rule 46 prescribes that mode and manner of advertisement of an application. The aforesaid provisions therefore, indicate that before registering a trade mark on the basis of an application an advertisement is to be done of the said trade mark in the Trade Mark Journal bringing to the notice of the general public that a registration is sought for the trade mark in question. Such advertisement could be at two different stages - (1) before acceptance of the application: or (2) after acceptance of the application but before registration. In the instant case the Registrar had ordered for advertisement of the trade mark in the Trade Mark Journal before acceptance. The very purpose of an advertisement in the Trade Mark Journal is to provide for complete information in respect of the trade mark advertised so that the public at large may receive a clear information in respect of the trade mark advertised. If however, an advertisement gives incomplete information in respect of the particulars of the trade mark advertised or gives an incorrect information regarding any material particular a prospective opponent is deprived of the opportunity of getting full information regarding the trade mark and also is deprived of the opportunity of filing an effective opposition. Therefore, an incorrect advertisement which amounted to mis-representation is required to be cancelled which was done in the instant case by the Registrar of Trade Marks for giving incorrect informations and having misrepresented the material facts. While cancelling the aforesaid advertisement the Registrar was satisfied that the status of the application should be put at the stage of Rule 39 i.e. the stage before acceptance of trade mark. In my considered opinion the said order can not be said to have been passed illegally or without jurisdiction.

11. Counsel for the petitioner however, sought to submit that instead of putting the case of the petitioner at the stage of Rule 39 the Registrar should have ordered for only re-advertisement and then should have proceeded from that stage. I, however, cannot accept the aforesaid contention of the counsel appearing for the petitioners, for with the cancellation of the advertisement before acceptance, the application is necessarily to be put to the stage of Rule 39 which is the stage prior to the acceptance. This is the stage when upon hearing the petitioners the Registrar shall take a decision as to whether the application shall be advertised in the Trade Mark Journal either as accepted or before acceptance. In my considered opinion no right of the petitioner is affected and/or violated, for the application of the petitioners is yet to be accepted and therefore, as a natural consequence the Registrar has to place the petition at the stage of Rule 39 i.e. the stage before acceptance of trade mark. The Registrar has thought it fit to give an opportunity of hearing to the applicant/petitioners so as to ascertain to show cause whether the application is to be accepted for registration or not.

12. In view of the above discussion I find no reason to interfere with the impugned order. There is no infirmity in the said order. The petitions have no merit and are dismissed.