S. Usha, J
1. Appeal arising out of the order passed by the Assistant Registrar of Trade Marks, Chennai dated 10.1.2006 removing the registered trade marks
under Nos. 479020 and 492090 in Class 5 under the Trade Marks Act, 1999 (hereinafter referred to as the 'Act').
Facts of the case:
2 . The appellants herein had been carrying on business in respect of Ayurvedic medicine. They had adopted the trade mark ""ENERGIC-31"" on 15th
October, 1980. The appellant had adopted and used the said trade mark since 1980 for a value of more than Rs. 18 crores and had spent a substantial
amount of several lacs of rupees in advertising the said product throughout the country. By virtue of such use and sales the trade mark ""ENERGIC-
31"" was solely associated with the appellant and had thus acquired a distinctive character in favour of the appellant.
3. On 20.2.1984, the appellant filed an application for registration of the trade mark ""ENERGIC-31"" in Class 5 under No. 417986 claiming user since
1980. The said application was advertised in the Trade Marks Journal No. 952 dated 1.2.1989 at page 1230. The mark was opposed by one M/s.
Shakti Vikas Sansthan, Aligarh on the ground that the acceptance of the trade mark ""ENERGIC 31"" was violative of the provisions of Section 9 of the
Trade and Merchandise Marks Act, 1958.
4 . The appellant also filed a subsequent application for the identical trade mark ""ENERGIC-31"" claiming a longer user. This application was filed on
25.9.1987 in Class 5 under No. 479020. Meanwhile, the earlier application under No. 417986 was heard by the Deputy Registrar who held that the
said trade mark, namely, ""ENERGIC-31"" was not capable of being distinguished and was descriptive in nature and hit by Section 9 of the Act. The
Deputy Registrar had also held that the evidence placed on record was defective as the verification clause was absent. The appellants herein
challenged the above order before the Hon'ble High Court of Delhi which was later transferred to this Board for adjudication but the appellant had not
pursued the matter as the appellant had already filed a fresh application under No. 479020 before the Registrar of Trade Marks.
5. The application under No. 479020 in Class 5 filed on 25.9.1987 was advertised in the Trade Marks Journal No. 1067 dated 16.11.1993 at page 875.
The said application was opposed by M/s. Shakti Vikas Sansthan under opposition No. DEL 8354. The said opposition came up for disposal on
27.1.2004. The learned Deputy Registrar found that the combination of two marks ""ENERGIC"" and ""31"" as distinctive on the basis of the documents
produced by the appellant. The Registrar had also noted the fact of the earlier registered mark No. 492090 of the appellant for the mark ""ENERGIC-
37"" passed on 5.11.1998 where a disclaimer condition for the word ""ENERGIC"" and numeral ""37"" was imposed. The opponent therein, namely, M/s.
Shakti Vikas Sansthan, had not objected to the disclaimer condition if the appellant was granted a statutory right in the combination of the words.
6 . The appellant had also filed an application bearing No. 492090 in Class 5 on 1.6.1988. This application was advertised in Trade Marks Journal No.
1099 dated 16.3.1995 at page 1633. It was also opposed by the same M/s. Shakti Vikas Sansthan under opposition No. DEL-9559 in which an order
was passed on 5.11.1998 imposing disclaimer condition for the word ""ENERGIC"" and number ""37"" separately. It is also pertinent to mention here that
no appeals were preferred against the said order, namely, 5.11.1998 and 27.1.2004. Since 25.9.1987 the appellant was enjoying all rights as registered
proprietor of the trade mark ""ENERGIC-31"" and since 1.6.1988 as regards trade mark ""ENERGIC-37"". The mark was registered. The date of filing in
respect of the aforementioned certificates are 13.7.2005 in respect of ""ENERGIC-31"" and 13.3.2001 in respect of ""ENERGIC-37"" respectively.
7. On 28.9.2005 a notice under Section 57(4) of the Act was issued to the appellant under the signature of the Controller General of Patents, Designs
and Trade Marks calling upon the appellant to show cause as to why the aforesaid two registered trade marks, namely, ""ENERGIC-31"" under No.
479020 and trade mark ""ENERGIC-37"" under No. 492090 registered since the year 1987 and 1988 respectively be not removed from the register as
they were in violation of Section 9 of the Act.
8. On 25.10.2005, the appellants herein appeared before the Registrar of Trade Marks and the same was adjourned with the direction that a fresh
notice would be served on them for the hearing. A subsequent notice dated 7.12.2005 for a hearing on 13. 12.2005 was issued to the appellant. On
13.12.2005 the appellant appeared and filed a reply along with the documentary evidence and argued the matter before the Assistant Registrar of
Trade Marks, Chennai who was specially deputed to hear the matter despite the fact that the other Registrar permanently posted in Delhi was
available on the date of hearing.
9. The appellant at the time of hearing raised several grounds, namely, the fact that the notice issued under Section 57(4) of the Act was violative of
the provision and such notice cannot be issued where a matter had been decided on a contest between the parties and the said Section is only limited
to registration granted on unopposed applications and by way of an administrative action and which has not been tested in a judicial proceeding before
the learned Registrar of Trade Marks. The appellant also pointed out that the learned Assistant Registrar, Chennai was specially deputed to hear the
matters when permanently posted Assistant Registrars were available to hear the said matter. It was also argued that in the fitness of things it was
improper of the learned Assistant Registrar to hear the matter which was also decided by the Deputy Registrar who was a senior officer. On
18.1.2006, the impugned order dated 10.1.2006 was received expunging both the registered trade marks where none of the arguments were
considered and the impugned order was passed in a mechanical manner without taking into consideration the proceedings which were held earlier.
Being aggrieved by this impugned order, the appellant have filed the appeals on the ground that -
(a) the impugned order is wrong both on facts and law and is liable to be set aside;
(b) the learned Registrar failed to appreciate the fact that even if the trade mark is registered under sub-section (1) of Section 9 cannot be declared
invalid if in consequence of the use which has been made of it;
(c) the Registrar has also failed to take note of the fact that sufficient evidence are being provided before the Registrar for use and also to prove their
case by which the said mark had acquired distinctive character. The Registrar had also completely ignored the provisions of Section 32 of the Act.
(d) The Assistant Registrar failed to refer to the opposition proceeding of the judgment reported in 1981 PTC 137 nor was the same distinguished
despite the fact the same was mentioned in the reply dated 22.10.2005.
(e) The Registrar further fell in error in coming to the conclusion that the trade mark ""ENERGIC-31"", ""ENERGIC-37"" had any kind of a direct
reference to the character and quality of the goods and was highly descriptive in respect of the goods.
(f) The learned Registrar also failed to note that the provisions of Section 57(4) should apply only in cases where the registration had gone on record
unopposed under an administrative order and not in matters where an opposition had been judicially decided by the Registrar.
(g) The learned Registrar also failed to appreciate the fact that judicial propriety demanded that an officer senior in rank to the officer who passed the
order which is sought to be recalled should have heard the matter specially when two senior officers were available in the said Registry.
(h) The third ground raised by the appellant were on the merits of the application for registration. The appellant also submitted that grave injustice
would be caused to the appellant if removed, for the mark had been on the register for more than 18 years.
(i) The appellant therefore prays that the impugned order be set aside with a direction to the Registrar to restore the trade marks registered under No.
479020 and No. 492090B in Class 5 on the register of Trade Marks.
10. We heard Ms. Gurkamal Hora Arora, the Counsel for the appellant on 10.1.2012. The Counsel reiterated the facts of the case as given in the
grounds of appeal.
1 1 . We have heard and considered the appellant's arguments. There was no representation on behalf of the respondents. As the issues involved in
both the appeals are one and the same a common argument was advanced and therefore a common order is being passed.
1 2 . The main issue that would arise for consideration in these appeals is that whether the order passed by the Assistant Registrar cancelling the trade
marks under the provisions of Section 57(4) of the Act is done following the procedure as per the law.
1 3 . The appellant applied for registration of the trade marks ""Energic-31"" and ""Energic-37"" on 25.9.1987 under No. 479020 in Class 5 and on
1.6.1988 under No. 492090 in Class 5 respectively. The user was claimed since 1980 in both the applications. Both the applications were opposed.
After contest the applications were disposed by an order dated 29.1.2004 and 5.11.1998 respectively granting registration with a condition that the
applicants/appellants cannot claim exclusively right to use the words ""ENERGIC"" and the numerals separately. We shall now quote Section 57 of the
Act -
57. Power to cancel or vary registration and to rectify the register.-(1) On application made in the prescribed manner to the Appellate Board or to the
Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on
the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or
by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the
Appellate Board or to the Registrar and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
(3) xxxx
(4) The tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of
being heard, make any order referred to in sub-section (1) or sub-section
(2) .
(5) xxxx
Section 57(4) gives the suo motu power not to the Registrar but to ""the Tribunal"". This cannot be ignored. The word ""tribunal"" has been defined in
Section 2(ze) of the Act. It means ""Registrar or, as the case may be the Appellate Board, before which the proceeding concerned is pending"". So for
exercise of this power, proceedings must be pending. In the present case the opposition proceeding had long ended. It is also relevant that the word
used is ""concerned proceedings"" which can only mean proceedings under Section 57 of the Act. If such proceedings are pending before the Registrar,
then the Registrar is the tribunal for invoking Section 57(4), if such proceedings are pending before the Board/or the High Court, previously then that
forum is the Tribunal. Dehors pending such proceedings invocation of Section 57(4) would lead to anarchy. The Supreme Court in AIR 1999 SC 22-
Whirlpool Corporation, Appellant v. Registrar of Trade Marks, Mumbai and others, Respondents held â€
54. Section 56 contemplates proceedings of varying nature. The proceedings contemplated by sub-section (1) relate to the cancellation of Trade Mark
or varying the registration of Trade mark, on the ground that the condition on which the registration was granted, was either violated or there was
failure in observing the condition of registration. These proceedings may be entertained either by the High Court or the Registrar on the application,
and, at the instance, of the ""person aggrieved"".
55. The proceedings contemplated by sub-section(2) of Section 56 relate to the absence or omission of an entry in the Register or an entry having
been made without sufficient cause or an entry wrongly remaining on the Register or there being any error or defect in an entry in the Register. Such
proceedings may also be entertained either by the Registrar or the High Court on the application made in the prescribed manner by a ""person
aggrieved"". The High Court of the Registrar may, in these proceedings, pass an order either for making an entry, or expunging or varying the entry. In
these proceedings which may be pending either before the High Court or the Registrar, it would be open to either of them to decide any further
question which may be necessary or expedient to decide in connection with the rectification of the Registrar. Obviously, this gives very wide
jurisdiction to the High Court or the Registrar working as a ""TRIBUNAL"" as the jurisdiction is not limited to the proceedings pending under sub-
section (1) or sub-section (2) but extends also to decide, in the same proceedings, any other question which may legitimately arise in connection with
the rectification proceedings.
56. The jurisdiction conferred on the High Court or the Registrar under sub-section (1) or sub-section (2) can also be exercised suo motu subject to
the condition that a notice is issued to the parties concerned and an opportunity of hearing is given to them before passing any order contemplated by
sub-section (1) or sub-section (2).
57. xxx
58. xxx
59. xxx
60. xxx
61. xxx
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 ""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 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 decision on the same question by the Registrar and the High Court besides generating multiplicity of
proceedings.
63. Learned Counsel for the respondent-Chinar Trust, at this stage, invoked the Rule of Punctuation in English Grammar and contended that the
definition of ""TRIBUNAL"" is amply clear and requires no interpretative exercise as there is a distinction between the ""Registrar"" and the ""High Court
in as much as the Registrar will have jurisdiction irrespective of the pendency of any proceeding, the High Court will have jurisdiction only when
proceeding concerned"" is pending before it. This he tried to show by pointing out that words ""as the case may be"" are placed between two commas,
one at the beginning immediately after the word ""Registrar"" and the other at the end, with the result that the words ""Tribunal means the Registrar
stand out distinctly, while the words ""High Court before which the proceeding concerned is pending"" stand out separately as an independent phrase. It
is contended that the words ""before which the proceeding concerned is pending"" will not be applicable to the Registrar and, therefore, the Registrar
can exercise the jurisdiction under Section 56 irrespective of pendency of any ""proceeding"".
14. In this case, the two orders had been passed by two different Deputy Registrars after contest. Thereafter the impugned order has been passed by
the Assistant Registrar who is below the rank of a Deputy Registrar. If Section 57(4) can be invoked at any time then even an order of the Hon'ble
High Court or of the IPAB upholding registration in rectification proceedings, can be set at naught by an Assistant Registrar under Section 57(4).
15. We also find force in the appellants argument that the mark has been put to use since 1980 and the marks are registered as of 1987 and 1988
respectively. For this reason, the impugned order deserves to be set aside.
16. Accordingly, the appeals OA/9&10/2006/TM/DEL are allowed and the Registrar is directed to restore the applications under No. 479020 and
492090 in Class 5 in the register. There shall be no order as to costs.
