Umaid Mohonot vs Union Of India
2023 Latest Caselaw 7935 Mad

                                                                W.A.Nos.1458, 1455 & 1454 of 2023


                                    IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                                 DATED:   10.07.2023

                                                      CORAM


                             THE HON'BLE MR.SANJAY V.GANGAPURWALA, CHIEF JUSTICE
                                                          AND
                                     THE HON'BLE MR.JUSTICE P.D.AUDIKESAVALU


                                        W.A.Nos.1458, 1454 & 1455 of 2023

                     Umaid Mohonot                                             Appellants in
                     Bijay Singh Mohonot                                 ..    WA No.1458/23

                     Umaid Mohonot
                     Nikky Mohonot
                     Rep. By Power of Attorney                                 Appellants in
                     Bijay Singh Mohonot                                 ..    WA No.1454/23

                     Umaid Mohonot
                     Rep. By Constituted Attorney                              Appellant in
                     Bijay Singh Mohonot                                 ..    WA No.1455/23

                                                          Vs.
                     1. Union of India
                        Through Secretary
                        Ministry of Industries
                        Udyog Bhavan
                        New Delhi.

                     2. Assistant Registrar of Trade Marks & GI
                        Trade Marks Registry
                        IP Building, GST Road, Guindy
                        Chennai 600 032.

                     Page 1 of 12


https://www.mhc.tn.gov.in/judis
                                                                W.A.Nos.1458, 1455 & 1454 of 2023




                     3. The Controller General of Patents
                        Designs & Trade Marks
                        Intellectual Property Bhavan
                        Near Antop Hill Head Post Office
                        S.M.Road, Antop Hill                                   Respondents in
                        Mumbai 400 037.                                  ..    all W.As.

                     Prayer: Appeals filed under Clause 15 of the Letters Patent against the
                     orders dated 10.03.2023 made in W.P.No.17349 of 2009,
                     W.P.No.17351 of 2009 and W.P.No.17350 of 2009 respectively.


                                      For the Appellants      : Mr.Arun C.Mohan

                                      For the Respondents     : Mr.Rajesh Vivekanandan
                                                                Deputy Solicitor General of
                                                                India

                                                        JUDGMENT

(Delivered by the Hon'ble Chief Justice)

Heard Mr.Arun C.Mohan, learned counsel for the appellants

and Mr.Rajesh Vivekanandan, Deputy Solicitor General of India for

the respondents.

2. The appellants assail the order passed by the learned

Single Judge thereby dismissing the writ petitions. The appellants

had assailed the show cause notice issued to them by the Registrar

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of Trade Marks.

3. The appellants have adopted the trade mark “Arrow” in the

year 1994 for the manufacture and sale of Plastic Tag Pins and

Plastic Tag Guns extensively. The same “Arrow” trade mark was

further extended to manufacture and sale of “Textile Cleaning Spray

Guns” in the year 1997. The trade mark of the appellants is

registered under the provisions of the Trade Marks Act, 1999. The

appellants are issued with a show cause notice stating that the

registration of trade marks or device is preferable under the Central

Government directions being the property of the Government of

India. The learned Single Judge did not entertain the writ petitions

on the ground that the appellants have been issued with a show

cause notice and that the High Court would not adjudicate the

disputed questions of fact under Article 226 of the Constitution.

4. Learned counsel for the appellant strenuously contends that

the show cause notice can be assailed before this Court in exercise

of its extraordinary jurisdiction under Article 226 of the

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Constitution, more particularly when the same has been issued

without authority and or jurisdiction.

5. Learned counsel, relying upon the judgment of the Apex

Court in the case of Whirlpool Corporation v. Registrar of Trade

Marks [(1998) 8 SCC 1], submits that if a particular proceeding is

pending before the Registrar, any other proceeding, which may, in

any way relate to the pending proceedings, will have to be initiated

before and taken up by the Registrar and the High Court will act as

the appellate authority of the Registrar under Section 109. It is

obvious that if the proceedings are pending before the High Court,

the Registrar will keep his hands off and not touch those or any

other proceedings, which may, in any way, relate to those

proceedings, as the High Court, which has to be the High Court

having jurisdiction as set out in Section 3, besides being the

appellate authority of the Registrar, has primacy over the Registrar

in all matters under the Act.

6. Learned counsel for the appellants submits that at the

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relevant time, the matter was pending before the Delhi High Court

in C.S.No.523 of 2009. It was filed by the appellants herein against

Praveen Rai and others and the Chinese Company with regard to

the same trade mark “Arrow”. The matter was sub judice before the

High Court of Delhi and the Delhi High Court, being the appellate

authority, the Registrar ought to have not issued the show cause

notice.

7. It is further submitted by learned counsel for the appellants

that the matter was also pending before the Intellectual Property

Appellate Board. The same was filed by the Chinese Company

against the appellants under Sections 47, 57 and 125 of the Trade

Marks Act relating to the same trade mark. In view of the judgment

of the Apex Court in Whirlpool (supra), the Registrar could not have

issued the impugned show cause notice.

8. Learned counsel also submits that the trade mark “Arrow”

is not a prohibited trade mark under the list of trade marks as per

the list detailed under the Trade Marks Act. The appellants could not

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have produced a negative evidence when the trade mark “Arrow” is

not a prohibited trade mark and the dispute with regard to the said

trade mark is already sub judice before this Court and the Appellate

Authority, the Registrar ought not to have issued the show cause

notice and this Court ought not to have exercised its extraordinary

jurisdiction under Article 226 of the Constitution.

9. We have considered the submissions canvassed by learned

counsel for the appellants, so also perused the order passed by the

learned Single Judge.

10. The appellants are issued with the show cause notice on

27.07.2009 on the ground that the registration of trade mark or

device is preferable under the Central Government directions being

the property of Government of India. Therefore, the Entry relating

to the aforesaid registered Trade mark has been made wrongly and

remains with the registration of trade mark without sufficient cause.

In view of that, show cause notice was issued referring to Section

57(4) of the Trade Marks Act, 1999.

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11. The jurisdiction of this Court to entertain a writ petition

challenging the show cause notice is in a narrow compass. This

Court would exercise its powers of judicial review under Article 226

of the Constitution in challenge to the show cause notice only if it is

shown that the show cause notice has been issued by an authority

without jurisdiction. Inter alia, by a person or authority coram non

judice. It is not disputed that the Registrar who issued notice had

necessary jurisdiction. The bone of contention is that as the dispute

was already pending before the the Delhi High Court and the

Intellectual Property Appellate Board, the Registrar could not have

exercised its jurisdiction.

12. It needs to be considered that the civil suit before the

Delhi High Court was filed by the appellants against the private

parties seeking injunction restraining the defendants therein from

dealing with their products in whatsoever manner under the trade

mark “Arrow”. So also, damages were claimed from the private

parties. The dispute before the Intellectual Property Appellate Board

was also between the private parties, that is the Chinese company

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and the present appellant.

13. Much reliance has been placed by learned counsel for the

appellants on the judgment of the Apex Court in the case of

Whirlpool (supra). Paragraph 62 of the said judgment reads thus:

“62. In this background, the phrase “before which the proceeding concerned is pending” stands out prominently to convey the idea that if the proceeding is pending before the “Registrar”, it becomes the “Tribunal”. Similarly, if the proceeding is pending before the “High Court', then the High Court has to be treated as the “Tribunal”. Thus, the jurisdiction of the Registrar and the High Court, though apparently concurrent in certain matters, is mutually exclusive. That is to say, if a particular proceeding is pending before the Registrar, any other proceeding, which may, in any way, relate to the pending proceeding, will have to be initiated before and taken up by the Registrar and the High Court will act as the appellate authority of the Registrar under Section 109. It is obvious that if the proceedings are pending before the High Court, the Registrar will keep his hands off and not touch those or any other proceedings which may, in any way, relate to those proceedings, as the High Court, which has to be the High Court having jurisdiction as

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set out in Section 3, besides being the appellate authority of the Registrar, has primacy over the Registrar in all matters under the Act. Any other interpretation of the definition of “Tribunal” would not be in consonance with the scheme of the Act or the contextual background set out therein and may lead to conflicting decisions on the same question by the Registrar and the High Court besides generating a multiplicity of proceedings.”

14. The Apex Court has held that if the proceedings are

pending before the High Court, the Registrar will keep his hands off

and not touch those or any other proceedings, which may, in any

way, relate to those proceedings as the High Court, which has to be

the High Court having jurisdiction as set out in Section 3, besides

being the appellate authority of the Registrar, has primacy over the

Registrar in all matters under the Act.

15. In the present case, the premise on which the show cause

notice was issued is completely distinct from the inter se dispute

between the appellants and the private parties. The contour of the

contentions to be considered by the Registrar would be completely

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different. The show cause notice is based on facts alone. The

dispute between the appellants and the private parties is pending

before the Delhi High Court in civil suit and also pending before the

Intellectual Property Appellate Board. The contents of the show

cause notice and the dispute pending before the Intellectual

Property Appellate Board and Delhi High Court would, in no manner,

be considered the same or similar so as to divest the Registrar of

his powers under Section 57(4) of the Trade Marks Act, 1999.

16. So far as the contention of learned counsel for the

appellants that the trade mark “Arrow” is not shown in the

prohibited list of the trade marks under the Act is concerned, it is a

matter to be considered, on merits, by the Registrar. The appellants

would always have liberty to put forth their stand before the

Registrar, which stand, certainly the Registrar would consider on

merits. It appears that the appellants have already submitted their

stand to the show cause notice long back to the Registrar. We

permit the appellants to submit additional stand if they choose,

within 15 days, which shall also be considered by the Registrar on

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its own merits.

17. The appeals stand disposed of. There will be no order as

to costs. Consequently, C.M.P.Nos.14100, 14079 and 14084 of 2023

are closed.

                                                             (S.V.G., CJ.)             (P.D.A., J.)
                                                                             10.07.2023

                     Index            : Yes/No
                     Neutral Citation : Yes/No

                     kpl

                     To

                     1. The Secretary
                        Ministry of Industries
                        Udyog Bhavan
                        New Delhi.

2. Assistant Registrar of Trade Marks & GI Trade Marks Registry IP Building, GST Road, Guindy Chennai 600 032.

3. The Controller General of Patents Designs & Trade Marks Intellectual Property Bhavan Near Antop Hill Head Post Office S.M.Road, Antop Hill Mumbai 400 037.

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THE HON'BLE CHIEF JUSTICE AND P.D.AUDIKESAVALU, J.

(kpl)

W.A.Nos.1458, 1455 & 1454 of 2023

10.07.2023

https://www.mhc.tn.gov.in/judis