Flower Tobacco Company vs Ambar Tobacco Company
2001 Latest Caselaw 773 Del

ORDER

Devinder Gupta. J.

1. This is a second appeal filed under Section 109(5) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as "the Act") seeking to challenge the order passed by learned Single Judge in appeal preferred under sub-section (3) of Section 109 of the Act against the order passed by Deputy Registrar of Trade Marks, New Delhi on 31.12.1981 in opposition proceedings DEL-3009.

2. Facts in brief are that the application bearing No.339005 was filed by the appellant to register a Trade Mark (Label) in Class 34 consisting, inter alia, the a device of coffee pot and the words "Abbul Dalla" in Arabic characters in respect of the specification of goods, which on subsequent amendment reads as "Tobacco for Hooka for export only". This application was under objection on the ground of conflict with some mark on the Register and another application pending consideration before the Trade Mark Registrar. Application was advertised on 16.7.1979 and on 1.8.1979 respondent lodged opposition to the registration of the Trade Mark, inter alia, on the following grounds:-

"(a) that the opponents have been using the trade mark containing the words 'Asli Marka Abudala' the device of a coffee pot with words 'Val Nazam Val Qamar' in respect of 'hooka tobacco and chewing tobacco' in India since 1961;

(b) that they have been exporting their goods to Arab countries since 1976;

(c) that the applicant's mark is deceptively similar for the same goods and is likely be cause confusion and deception; and

(d) the registration of such a mark is prohibited under sub-section (a) of Section 11 of the Act.

3. Evidence in support of the opposition was filed by the respondent and evidence in support of the application was filed by the appellant. Case was posted for hearing on 20.5.1981. Nobody appeared for the opponents on 20.5.1981. Two advocates appeared on behalf of the appellant. After some arguments the case was adjourned to 21.5.1981. On 21.5.1981 Shri K.C.Kareer, Trade Mark Attorney appeared for the opponents and two advocates appeared for the applicant. Copy of the order of Deputy Registrar of Trade Mark reveal that after some discussion at the resumed hearing.Trade mark Attorney of the opponents desired to withdraw the opposition on the appellant's counsel agreeing to waive the costs. The order further reveals that upon this the appellant's counsel agreed to waive the costs. Accordingly the opposition of the respondent was treated as withdrawn with no order as to costs and consequently registration was issued in favor of the appellant.

4. On 5.6.1981 an application dated 2.2.1981 was moved by the respondent seeking to have the order dated 23.5.1981 reviewed inter alia on the ground that the opposition had been filed to the appellant's application claiming user since 1961 and parties had led evidence. Hearing had been fixed for 20.5.1981. Qamar Ahmed Khan, partner of the opponent firm came to Delhi to attend the hearing. He was present in the Trade Mark Registry throughout the hearing but their agent Shri K.C.Kareer was not present. Therefore, the partner of the respondent Qamar Ahmed Khan contacted Shri Kareer during night at about 11 p.m. and inquired about the reason of his absence from the Court. Shri Kareer assured the partner of the respondent that the he will appear before the Trade Mark Registry on the next day. Accordingly, on 21.5.1981 Shri Kareer along with the partner of the respondent went to the Trade Mark Registrars. Shri Kareer asked the partner to wait down stairs assuring him tha he would appear before the Registrar himself and in case of need he would be called. The application further states that the respondent learnt that Shri Kareer filed T.M.-7 on 21.5.1981 and withdrew the opposition. The withdrawal was alleged to be without instructions as the respondent had never instructed Shri Kareer either in writing or verbally to withdraw the opposition. It was alleged that the respondent's user has been since 1961 while the applicant claimed to have used the mark only since 1972. Even the said user was wrong. The Tribunal would have decided the case on merits. The respondent had been trading under the mark and exporting goods of very huge amount of gulf countries.Registration of Trade Mark in favor of the applicant will completely oust the respondent. Accordingly it was stated that the withdrawal was wholly misconceived. Partner of the respondent was present in the Registry but he was not asked to make any statement about the withdrawal. He was not even asked to enter the office of the Registrar. Thus it was alleged that a fraud had been practiced by withdrawing the opposition.

5. This application seeking review was opposed by the appellant, who filed reply stating that Shri Kareer was competent in law to withdraw the opposition and it was within the knowledge of the respondent that Shri Kareer had withdrawn the opposition.

6. The Deputy Registrar, Trade Mark on the basis of the material placed before him, on the basis of the record and on the basis of the evidence recorded, came to the conclusion that in fact it was a sort of compromise under which the opposition was withdrawn by Shri Kareer. Compromise being that the opposition will be withdrawn subject to the condition of appellant agreeing to waive costs. Since the appellant agreed to waive costs, therefore, the opposition was withdrawn. Deputy Registrar Trade Marks observed that as the principles underlying the Code of Civil Procedure are required to be observed by the Trade Mark Registry, therefore, keeping in view the intention of the legislature in amending provisions of Order 23 Rule 3 by Code of Civil Procedure (Amendment) Act, 1976 and the law as in force till date and considering the facts of the case, it was a fit case of come to the conclusion that Shri Kareer withdrew the opposition without the respondent's authorization, therefore, such withdrawal, which will prejudicially affect the opponent's rights can be considered to be a sufficient reason to review the decision dated 23.5.1981. This order was challenged by the appellant by filing appeal under sub-section (5) of Section 109 of the Act before learned Single Judge.

7. While disposing the appeal, learned Single Judge examined three questions; (a) whether the Deputy Registrar is competent of review his own order under Section 97(c) of the Act; (b) whether the withdrawal of the opposition was with the consent of the respondent; and (c) whether it was a valid and prudent act on the part of the Trade Mark Registry to withdraw the opposition.

8. Learned Single Judge held that by virtue of the provisions of Section 97 of the Act, Registrar had all the powers of a Civil Court not only for the purposes of receiving evidence, administering oaths, compelling the discovery and production of documents and issuing commissions for examination of witnesses and also to impose costs and review his own decision on an application made in the prescribed manner. As the Registrar has all power of civil court in certain respects and power of review is envisaged, it would imply that the power of review is akin to the powers under Order 47 Rule 1 CPC. He referred to the affidavit of the respondent's partner that Shri K.C.Kareer was never authorised or instructed to withdraw the opposition and Shri Kareer acted against his instructions especially when he was present in the Trade Mark Registry and he was not even asked to appear before the Registrar and make his statement. Learned Single Judge also held that Shri Kareer though an Advocate had not filed any vakalatnama, but had filed authorization in form TM-48. As no vakalatnama had been filed, it was a case of agency and though there was an implied authority even in Trade Mark Agent to withdraw opposition but further proceeded to hold that since the partner of the respondent was present in the Trade Mark Registry, in ordinary course it was necessary for Shri Kareer to have called the partner inside the office of Deputy Registrar where the case was taken up. It was further held that withdrawal of opposition was neither with the consent nor with the authority of the respondent and neither it was valid nor it can be said to be a prudent act. Having come to this conclusion it was held that the opposition had been withdrawn without authority and it was not within the knowledge of the Deputy Registrar when he recorded withdrawal of opposition. Consequently, he dismissed the appeal.

9. Before us learned counsel for the appellant has relied upon the same facts and the same law as was cited before learned Single Judge and has urged that power of review could not have been exercised by the Deputy Registrar since Trade Mark Agent has an implied authority vested in him to withdraw the opposition. Even if no express consent was taken from the respondent to withdraw the opposition in that case the order of Deputy Registrar Trade Mark would be an erroneous order, which would not be amenable of review. Trade Mark Agent not being an advocate had exercised his discretion in the facts of the case and finding that there was no force in the opposition, rightly withdrew the opposition, which act could not be challenged by the respondent.

10. Learned counsel for the respondent has tried to support both the orders saying that there was no occasion for Mr. Kareer to have withdrawn the opposition. There was no authorization for that. Respondent had vehemently been opposing the registration of the appellant's trade mark. Partner of the respondent had specifically gone to attend the hearing and was present. Even his consent was not obtained by Shri Kareer. Neither any express nor any implied authority was given to Shri Kareer. In the absence of consent having been obtained from the partner, who was radially available, the act of Shri Kareer has to be termed as arbitrary and void. These facts were not within the knowledge of the Deputy Registrar and, therefore, review was rightly allowed by the Deputy Registrar and no interference is called for in the impugned orders.

11. The scope of authority, which can be exercised by Trade Mark Agent on the basis of authorization given by TM-48 was examined in M/s. Gupta Engineering Works v. M/s. Great Electrical Engineering Works and another 1965 (1) DLT 234. On reference made to Section 123 of the Act and relying upon the decision of Punjab High Court in Mst. Bachni wife of Sawan Singh v. Kartar singh and others , it was held that like a counsel engaged to conduct the case, Trade Mark Agent has an implied authority even to compromise or abandon the claims of his client or give an undertaking on his behalf in respect of all matters within the scope of the suit or matter, but not in respect of anything beyond the scope thereof.

12. Learned counsel for the respondent relied upon decision of Full Bench in Chengan Souri Nayakam v. A.N.Menon where distinction is drawn between the authority of an agent or of an Advocate on the basis of the vakalatnama and it was held that the construction of a document appointing an agent is different form the construction of a vakalat appointing a counsel. In the case of an agent, the document would be construed strictly and the agent would have only such powers as are conferred expressly or by necessary implication. In the case of an Advocate the rule is otherwise because in that case was are dealing with a profession where well-known rules have crystallised through usage.

13. On the question posed before us, reference may be made to a decision of the Supreme Court in Smt. Jamilabai Abdul Kadar v. Shankarlal Gulabchand and others . In that case question had cropped up about the implied authority of a pleader of act by way of compromising a case. Reviewing various decisions on the point and even approving the ratio of Full Bench decision in Chengan Souri's case (supra), it was held that the words "implied authority" of a pleader, which is a generic expression including all legal practitiMonday, October 20, 2003oners, as indicated in Section 2(15) of the Civil Procedure Code, to act by way of compromising a case, in which he is engaged, even without specific consent from his client, is undoubtedly subject to two overriding considerations: (a) he must act in good faith and for the benefit of his client, otherwise the power fails and (b) it is prudent and proper to consult his client and take his consent, if there is time and opportunity. In any case, if there is any instruction to the contrary or withdrawal of authority, the implicit power of compromise in the pleader will fall to the ground.

14. Applying the law as laid down in Smt. Jamilbai Abdul Kadar's case (supra) to the facts as found by Deputy Registrar and affirmed by learned Single Judge, we are of the view that no interference is called for in the impugned orders. The Deputy Registrar Trade Marks positively concluded that Shri Kareer withdrew the opposition without respondent's authorization and such a withdrawal prejudicially affected respondent's rights. Learned Single Judge also recorded a positive finding that withdrawal of opposition was neither with the consent nor with authority of respondent and was also not in good faith and also not for the benefit of the respondent. It was also not a prudent and proper act on the part of Shri Kareer since no effort was made to obtain respondent's consent, which could have been obtained then and there since the partner of the respondent was present in the Trade Mark Registry. Both the exceptions as laid down in Jamilbai Abdul Kadar's case (supra) apply with equal force to the facts as found in the instant case and for that reason, we are of the view, that there is hardly and force in the appeal, which is hereby dismissed with costs quantified at Rs.5,000/-.