Delhi High Court

Costa And Company Pvt Ltd vs Uoi And Ors on 3 August, 2012

Author: Vipin Sanghi

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

                    Judgment reserved on: 26.03.2012

%                   Judgment delivered on: 03.08.2012


+              W.P.(C) 8694/2011 & C.M. No.19662/2011


       COSTA AND COMPANY PVT LTD                ..... Petitioner
                     Through:  Mr. Rahul Beruar and Mr.Subhash
                               Bhutoria, Advocates.

                      versus

       UOI AND ORS                                     ..... Respondent
                           Through:   Mr.    Neeraj  Chaudhari,   CGSC,
                                      Mr.Akshay Chandra and Mr. Ravjyot
                                      Singh for R-1.
                                      Mr. Ajay Gupta, Sr. Adv. with
                                      Mr.Vishwanathan and Mr. Amol Dixit
                                      for R-3.

        CORAM:
        HON'BLE MR. JUSTICE VIPIN SANGHI


                               JUDGMENT

VIPIN SANGHI, J.

1. The petitioner assails the order dated 05.09.2011 passed by

the learned Intellectual Property Appellate Board (the Appellate Board)

in MP No.171/2008 in ORA/105/2007/TM/DEL. By this order, the

Appellate Board has allowed the respondent No.3‟s application to seek

transfer of the rectification application preferred by it under Section 47

of the Trade Marks Act, 1999 (the Act) before the Registrar of Trade

Marks, Mumbai, (the Registrar), to the Appellate Board. Consequently,

the rectification application No.BOM-183681 filed by the respondent

No. 3 before the Registrar has been transferred to the Appellate Board

from the stage at which it then stood. The Appellate Board has further

directed that the two matters, i.e. ORA/105/2007/TM/DEL (rectification

application preferred by the petitioner under Section 57 of the Act

before the Appellate Board), and the transferred rectification

application of the respondent No. 3 shall be listed together at Circuit

Bench sitting at Delhi.

2. The factual background may first be narrated. The petitioner

applied for registration of the mark „Costa‟s‟ in the year 1990, which

was granted in 1997. The same pertained to Class 30. On the other

hand, the respondent No. 3 applied for registration of the trademark

„Costa‟ in respect of the goods under class 30 and 42 in the year 2003,

and the same was granted registration in the year 2006.

3. The respondent No. 3 applied for rectification of the

petitioner‟s trademark „Costa‟s‟ in classes 30 and 42 under section 47

of the Trademarks Act in the year 2004. This application was moved

before the Registrar. The petitioner also applied for rectification of the

respondent No. 3‟s trademark „Costa‟ in the year 2006 by moving an

application before the Appellate Board in the year 2007.

4. While both these proceedings were pending, the respondent

No. 3 moved the aforesaid application being MP No.171/2008 before

the Appellate Board to seek the transfer and consolidation of its

rectification proceedings pending before the Registrar to the Appellate

Board. As aforesaid, by the impugned order, that application has been

allowed.

5. The submission of learned counsel for the petitioner is that

the Appellate Board has no statutory power or jurisdiction to transfer to

itself the rectification application pending before the Registrar. It is

argued that the impugned order denies the right of appeal, which

would otherwise be available to the petitioner, in case the respondent

No. 3 succeeds in its rectification application before the Registrar, as

an appeal lies under Section 91 before the Appellate Board from the

order of the Registrar. On this basis, the present petition has been

preferred.

6. Upon issuance of notice, the respondent no.3 has put in

appearance to contest the petition without filing a reply. The

submission of learned senior counsel for the respondent no.3 is that

under Section 125(2) of the Act, when an application for rectification of

the register is made to the Registrar under Section 47, or Section 57,

the Registrar may, if he thinks fit, refer the application at any stage of

the proceedings to the Appellate Board. He submits that the

respondent No. 3 could, therefore, have moved the Registrar for

referring the respondent‟s application for rectification under Section 47

of the Act to the Appellate Board by resort to Section 125(2) of the Act,

since the petitioner‟s application for rectification under Section 57 is

already pending before the Appellate Board.

7. It is further submitted that Section 96 enables a party to move

an application, and also authorizes the Chairman to suo moto transfer

any case pending before one bench for disposal to any other bench. It

is submitted that the subject matter of both these applications concern

the similar trademark, and the contesting parties are also the same,

and this position is not even disputed by the petitioner.

8. It is also submitted that the Appellate Board is not bound by

the procedure laid down under the CPC, and it is guided by the

principles of natural justice. In this respect, reference is made to

Section 92 of the Act.

9. Learned senior counsel for the respondent No. 3 submits that

various decisions were cited before the Appellate Board at the time of

hearing of the application. These decisions, though taken note of,

have not been cited in the impugned order. He places reliance on the

Supreme Court decision in State Bank of India v. Ranjan

Chemicals Ltd. & Anr., (2007) 1 SCC 97, and the decision of this

Court in S.C. Jain v. Bindeshwari Devi, 67 (1997) DLT 189.

10. The issue raised by the petitioner with regard to the power of

the Appellate Board to transfer to itself the rectification proceedings

pending before the Registrar is an issue of some importance.

11. The rectification proceedings under the Act - both, under

Section 47 and Section 57, can be preferred either before the Registrar

or before the Appellate Board. Both these authorities have concurrent

jurisdiction. Whereas, the petitioner preferred rectification

proceedings in respect of the registered Trade Mark of respondent No.

3 before the Appellate Board under Section 57 of the Act, respondent

No. 3 preferred the rectification proceedings in respect of the

petitioner‟s registered mark under Section 47 of the Act, before the

Registrar. There is no doubt that both these rectification proceedings

are between the same set of parties and that the subject matter of the

two rectification proceedings is overlapping. The evidence in these

proceedings would also be overlapping. In fact, learned counsel for the

petitioner does not dispute this position. The primary grievance of the

petitioner is that the Appellate Board did not have jurisdiction to order

the transfer to itself, of the rectification proceedings pending before

the Registrar at the behest of respondent No. 3.

12. Now, an appeal lies under Section 91 of the Act from the order

that the Registrar may pass in proceedings under Section 47 or Section

57 of the Act before the Appellate Board. Consequently, the Appellate

Board is the appellate authority of the Registrar qua proceedings under

Section 47 or 57 of the Act. Therefore, the Registrar is subordinate to

the Appellate Board qua proceedings under Sections 47 or 57 of the

Act. By virtue of being an appellate authority of the Registrar, the

Appellate Board has certain powers. The Appellate Board, being the

appellate authority, would have the power to stay any proceeding

pending before the Registrar under Section 47 or 57 of the Act; to

remand the matter back for re-consideration to the Registrar in any

proceedings arising under Section 47 or 57 of the Act; to uphold the

order of the Registrar under the said provisions, and; to set aside the

order passed by the Registrar under the said provisions. The Supreme

Court in Tirupati Balaji Developers Pvt. Ltd and others Vs. State

of Bihar, AIR 2004 SCC 2351, was dealing with its own powers qua the

High Courts. However, it made general observations with respect to

the powers of an appellate forum qua the subordinate forum as

follows:-

"9. In a unified hierarchical judicial system which India has accepted under its Constitution, vertically the Supreme Court is placed over the High Courts. The very fact that the Constitution confers an appellate power on the Supreme Court over the High Courts, certain consequences naturally flow and follow. Appeal implies in its natural and ordinary meaning the removal of a cause from any inferior court or tribunal to a superior one for the purpose of testing the soundness of decision and proceedings of the inferior court or tribunal. The superior forum shall have jurisdiction to reverse, confirm, annul or modify the decree or order of the forum appealed against and in the event of a remand the lower forum shall have to rehear the matter and comply with such directions as may accompany the order of remand. The appellate jurisdiction inherently carries with it a power to issue corrective directions binding on the forum below and failure on the part of the latter to carry out such directions or show disrespect to or to question the propriety of such directions would -- it is obvious --be destructive of the hierarchical system in administration of justice. The seekers of justice and the society would lose faith in both.

xx xx xx xx xx xx xx xx xx xx

11. The very conferral of appellate jurisdiction carries with it certain consequences. Conferral of a principal substantive jurisdiction carries with it, as a necessary concomitant of that power, the power to exercise such other incidental and ancillary powers without which the conferral of the principal power shall be rendered redundant. As held by their Lordships of the Privy Council in Nagendra Nath Dey v. Suresh Chandra Dey [ AIR 1932 PC 165 : 59 IA 283] (Sir Dinshaw Mulla speaking for the Bench of five), an appeal is an application by a party to an appellate court asking it to set aside or revise a decision of a subordinate court. The appeal does not cease to be an appeal though irregular or incompetent. Placing on record his opinion, Subramania Ayyar, J. as a member of the Full Bench (of five Judges) in Chappan v. Moidin Kutti [ ILR (1899) 22 Mad 68 : 8 MLJ 231] (at ILR p. 80) stated inter alia that appeal is "the removal of a cause or a suit from an inferior to a superior judge or court for re-examination or

review". According to Wharton's Law Lexicon such removal of a cause or suit is for the purpose of testing the soundness of the decision of the inferior court. In consonance with this particular meaning of appeal, "appellate jurisdiction" means "the power of a superior court to review the decision of an inferior court". "Here the two things which are required to constitute appellate jurisdiction, are the existence of the relation of superior and inferior court and the power on the part of the former to review decisions of the latter. This has been well put by Story: „The essential criterion of appellate jurisdiction is, that it revises and corrects the proceedings in a cause already instituted and does not create that cause. In reference to judicial tribunals an appellate jurisdiction, therefore, necessarily implies that the subject-matter has been already instituted and acted upon, by some other court, whose judgment or proceedings are to be revised,‟ (Section 1761, Commentaries on the Constitution of the United States)."

xx xx xx xx xx xx xx xx xx xx

30. The very existence of appellate jurisdiction obliges the lower jurisdiction to render all of its assistance to the higher jurisdiction to enable the exercise of appellate jurisdiction fully and effectively. The lower forum may be called upon to certify its record of case and proceedings to the superior forum. The superior forum may stand in need of some information which being in the possession or knowledge of the subordinate forum, shall have to be made available only by it. The superior forum may issue a stay order or restraint order or may suspend, expedite or regulate the proceedings in the subordinate forum. During or at the end of exercise of the appellate jurisdiction any direction made by the higher forum shall have to be complied with by the lower forum, otherwise the hierarchy becomes meaningless."

13. The order of the Registrar under these provisions, i.e. Sections

47 or 57, would eventually (in case the same is appealed against) land

up before the Appellate Authority for scrutiny. In the present case, as it

is, one proceeding on the same issue, inter partes, is already pending

before the Appellate Board. Ultimately, it is the view of the Appellate

Board which would be final and binding in proceedings under Section

47 or 57 of the Act on the Registrar, and if the Appellate Board has

already decided one of the matters inter partes concerning the same

or similar set of registered trade marks, the Registrar cannot take a

view to the contrary inter partes on the same issues.

14. In appropriate cases, the Registrar may, if he thinks fit, refer

the application under Section 47 or 57 which may be pending before

him at any stage of the proceedings, to the Appellate Board. (See

Section 125(2)). Therefore, the movement of a pending rectification

application from the jurisdiction of the Registrar to the Appellate Board

is a phenomenon which is recognized and provided for by the Act.

Since the orders passed by the Registrar are appealable before the

Board, an order not to refer the rectification application pending before

it (either under Section 47 or 57 of the Act) to the Appellate Board

would also be appealable. In such an appeal, the Board could come to

the conclusion that the Registrar ought to have referred the pending

rectification application to the Board. Thus, by a quasi-judicial order,

the Appellate Board can direct the Registrar to refer to it the pending

rectification application to the Appellate Board. If the Appellate Board

has the jurisdiction to pass such an order in appeal proceedings, I don‟t

see any reason why it should not be able to pass a similar direction,

otherwise, in quasi judicial proceedings pending before it.

15. A perusal of the Act shows that there is no express provision

vesting supervisory jurisdiction on the Appellate Board over the

Registrar. However, that does not mean that while exercising its

quasi-judicial appellate authority, the Appellate Board cannot take

cognizance of the fact that there are multiple proceedings pending

before the same set of parties, involving the same issues of fact & law,

and, with a view to have consistency of decisions and to save the

parties the botheration of leading the same evidence repeatedly in

different proceedings and pursuing different proceedings

simultaneously, the Appellate Board cannot take measures to preserve

consistency in the decision making process and to save the parties

from harassment and costs of multiplicity of proceedings on the same

subject matter inter partes. The power vested in the Chairman under

Section 96 of the Act to transfer the proceedings pending before one

bench, for disposal, to another bench shows that the intent of the

Parliament was to provide sufficient flexibility to the Chairman in the

matter of case management.

16. The Hon‟ble Supreme Court in State Bank of India (supra)

was dealing with the case where a dispute arose between a debtor and

its bank. Whereas the debtor instituted civil proceedings in a Civil

Court against the bank alleging breach of the conditions on which

loans and facilities were agreed to be granted and, on that account,

claiming certain reliefs, the bank claimed that the debtor had failed to

repay the outstanding loan and, therefore, preferred recovery

proceedings by resort to the Recovery of Debts Due to Bank and

Financial Institutions Act, 1993 before the Debt Recovery Tribunal

(DRT). The bank then moved the Civil Court to transfer the

proceedings pending before it to the DRT for being tried jointly with the

recovery proceedings launched by the bank. The said application was

dismissed by the Trial Court. Revision proceedings before the High

Court also failed. The Hon‟ble Supreme Court while reversing these

decisions held that a joint trial of proceedings pending before different

forums could be ordered if common questions of fact or law in both

proceedings arise, or the right to relief claimed in them is in respect of,

or arise out of, the same transaction or series of transactions, or that

for some other reason it is desirable to make an order for a joint trial.

Where plaintiff in one action is the same person as the defendant in

another action, if one action can be ordered to stand as a counter

claim in the consolidated action, then also the proceedings could be

ordered to be jointly tried. When the Court finds that the ordering of

such a trial would avoid separate overlapping of evidence being taken

in the two causes put in suit, a joint trial could be ordered as it would

be very convenient to try them together in the interest of the parties

and have effective control of the cases. The Hon‟ble Supreme Court

observed that it is not necessary that all the questions or issues that

arise should be common to both actions. If some issues and some

evidences are common, that would be sufficient to order a joint trial,

especially when the two actions arise out of the same

transaction/series of transactions. The Hon‟ble Supreme Court held

that the power to order joint trial cannot be curtailed by introducing

restrictions, to the effect that such an order can be passed only if there

is consent of both the sides. The Court held that the power inherent in

the Court, on well-accepted principles, to order a joint trial does not

depend upon the volition of the parties but it depends upon the

convenience of the trial, saving of time and expenses and avoidance of

duplicating at least a part of the evidence, leading to saving of time

and money. In the present case, all the above considerations are very

much present, as noticed above.

17. I may also take note of Section 98 of the Act, which provides

that the Registrar shall have the right to appear and be heard in a

variety of proceedings before the Appellate Board. The said provision

reads as follows:

"98. Appearance of Registrar in legal proceedings.-

(1) The Registrar shall have the right to appear and be heard-

(a) in any legal proceedings before the Appellate Board in which the relief sought includes alteration or rectification of the register or in which any question relating to the practice of the Trade Marks Registry is raised;

(b) in any appeal to the Board from an order of the Registrar on an application for registration of a trade mark-

(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or

(ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest, and the Registrar shall appear in any case if so directed by the Board.

(2) Unless the Appellate Board otherwise directs, the Registrar may, in lieu of appearing, submit a statement in writing signed by him, giving such particulars as he thinks proper of the proceedings before him relating to the matter in issue or of the grounds of any decision given by him affecting it, or of the practice of the Trade Marks Registry in like cases, or of other matters relevant to the issues and within his knowledge as Registrar, and such statement shall be evidence in the proceeding." (Emphasis supplied)

18. Therefore, even if the proceedings pending before the

Registrar under Section 47 or 57 of the Act are transferred before the

Appellate Board, the Registrar can still play a role by putting across to

the Appellate Board its stand in the matter. It is not that the pending

rectification proceedings get snatched away, so to say, from the hands

of the Registrar. He can still participate in the rectification proceedings

after they are transferred to the Appellate Board.

19. Another aspect to be noted is that the proceedings before the

Appellate Board are deemed to be judicial proceedings, and it is not

bound by the procedure prescribed in the Code of Civil Procedure.

Therefore, no specific procedure is required to be followed by the

Appellate Board, so long as it is fair and complies with the principles of

natural justice.

20. The grievance raised by the petitioner with regard to the

petitioner being denied a right of appeal in case of the transfer of the

proceedings from the Registrar to the Appellate Board, in my view, has

no merit. Firstly, respondent No. 3 is the applicant in the rectification

proceedings under Section 47 of the Act before the Registrar.

Respondent No. 3 had an option to file the said proceedings either

before the Registrar or the Appellate Board as both forums have

concurrent jurisdiction. The respondent No. 3 is the dominus litus. It is

for him to decide whether to pursue his remedy under Section 47 of

the Act before the Registrar, or the Appellate Board. Respondent No. 3

may not have been entitled to seek a transfer of the proceedings

pending before the Registrar to the Appellate Board, but for the fact

that the Appellate Board is already seized of the rectification

proceedings initiated by the petitioner under Section 57 of the Act

against respondent No. 3, and the fact that both the proceedings

involve the same subject matter and evidence. If the petitioner were

so concerned about preserving its right of appeal, it would have

preferred its own rectification proceedings under Section 57 of the Act

before the Registrar, which it did not do. Had respondent No. 3 initially

filed the rectification proceedings under Section 57 of the Act before

the Appellate Board, the petitioner could not have raised a grievance

that his right of appeal is being denied due to such institution and that

the respondent No. 3 should file the rectification proceedings before

the Registrar.

21. This Court in Ranjan Kumar Singh & Another Vs. Angoori

Singh & Others, while deciding I.A. Nos. 3213/2009 and 3240/2009 in

CS(OS) No. 2615/2008 decided on 11.03.2010, held that:

"It is settled law that the plaintiff is a dominus litus i.e. master of or having dominian over the case. He has the right to have a "forum conveniens" by approaching the court where part of cause of action arises. His actions must be directed towards such a forum unless approaching the said forum is opposed to public policy or will be an abuse of the process of law. The plaintiff has every right to choose the forum best suited to him."

22. In the facts of the present case, it cannot be said that the

endeavour of respondent No. 3 in seeking to approach the Registrar in

the first instance, or to seek transfer of the said proceedings to the

Appellate Board is opposed to public policy, or is an abuse of the

process of law. On the contrary, the step taken by respondent No. 3

appears to be well-reasoned and logical, aimed at saving time, costs

and unnecessary inconvenience due to multiplicity of proceedings, and

to avoid conflicting decisions in proceedings inter se the parties,

involving the same subject matter; the same issues and; the same

evidence.

23. At the same time, the absence of a specific provision in the

Act vesting supervisory jurisdiction in the Appellate Board over the