Jyoti Singh, J
1. By way of present writ petition, Petitioner seeks a writ of Certiorari quashing the advertisement with respect to application No.731808, in Class 5,
filed by Midas Hygiene Industries Pvt. Ltd./Respondent No.3 herein for registration of trademark LAXMAN REKHA (label) and a further direction
to the concerned Registrar of Trade Marks to re-advertise the application.
2. Factual narrative to the extent necessary and relevant for the present writ petition is that Respondent No.3 filed an application on 29.01.1997, for
registration of trademark LAXMAN REKHA (label). Respondent No.3 also filed a suit for perpetual injunction, infringement of copyright, passing off,
delivery etc. against the Petitioner herein, in respect of trademark LAXMAN REKHA. Learned Single Judge of this Court granted injunction against
the Petitioner vide order dated 31.07.2001. In an Appeal before the Division Bench, the injunction order was vacated vide order dated 20.09.2001,
however, in Civil Appeal No. 107/2002, the Supreme Court, vide order dated 22.01.2004, set aside the order of the Division Bench and restored the
order granting injunction. The suit was transferred to the District Courts on account of pecuniary jurisdiction.
3. Before the learned Trial Court, Respondent No.3 preferred an application under Order 6 Rule 17 CPC in the year 2006, seeking amendment of the
plaint and along with the application filed copy of the registration certificate, whereby Respondent No.3’s trademark/label LAXMAN REKHA
was registered in Class 5.
4. It is averred in the writ petition that from the Registration Certificate, Petitioner learnt that the application for registration was advertised in Trade
Marks Journal MEGA-1 on 25.08.2003. Petitioner thereafter contacted its lawyers, who on inquiry found that the trademark (label) of Respondent
No.3 was advertised, but was totally black and illegible. Petitioner then approached the Registrar of Trade Marks, Mumbai (hereinafter referred to as
‘the Registrar’) vide letter dated 09.02.2004 and requested him to re-advertise the mark, on the ground that the mark advertised on page 618,
was not clearly visible and also enclosed photocopy of the relevant page for ready reference. This was followed by reminder letters dated 01.11.2006,
24.11.2006, 26.11.2006, 25.01.2007 etc., whereby Petitioner requested the Registrar to take action under Section 57(4) of the Trade Marks Act, 1999
(hereinafter referred to as the “Actâ€), more so, in larger public interest. Finally, a legal notice dated 10.06.2008 was sent to Respondent No.2
seeking redressal of the grievance relating to the illegible advertisement. Receiving no response, Petitioner approached this Court by way of the
present writ petition.
5. On 13.08.2008, notice was issued to the Respondents in the writ petition, but the stay application seeking stay of operation of the registration
granted in favour of Respondent No.3 was dismissed as not pressed at that stage.
6. Learned counsel for the Petitioner has sought quashing of the advertisement on many-fold grounds. It is contended that the Registrar failed to
appreciate the provisions of Section 20(2) of the Act, which empowers the Registrar to re-advertise the trademark application, after remedying the
flaws or errors in the advertisement.
7. It was contended that the Registrar failed to appreciate the purpose and purport of advertising the application, which is to inform the world at large
that an application has been filed seeking registration of a trademark. It is the obligation of the Registrar of Trade Marks to maintain a Register of
Trade Marks under Section 6 of the Act. If there is an error in the advertisement and the same is not rectified by the Registrar, it would result in an
impure entry in the Register. The Registrar took no action to re-advertise the trademark, despite the Petitioner pointing out that the advertisement was
illegible.
8. It was next contended by Mr. Bhatia that the Registrar failed to appreciate the Scheme of the Act. Application for registration of a trademark is
filed under Section 18(1) of the Act and Registrar of Trade Marks accepts or refuses the application under Section 18(4) or in its discretion, orders for
an advertisement, before acceptance. The application is then advertised under Section 20 of the Act. Section 21(1) of the Act provides for opposition
to registration within four months, from the date of the advertisement or re-advertisement of the application or within such further period, not
exceeding one month, as the Registrar allows, on an application made in the prescribed manner and on payment of prescribed fee. Petitioner would
have filed an opposition on seeing the mark, had the same been properly advertised. Since the parties were litigating in various forums in respect of the
trademark LAXMAN REKHA, there was legitimate expectation that Petitioner would file the opposition. A very valuable right and opportunity
available to the Petitioner under the Statute has thus been lost. The impugned action of the Registrar has resulted in an unfair advantage of registration
in favour of Respondent No.3, while Petitioner has suffered grave prejudice.
9. Learned counsel submitted that the Registrar has also failed to appreciate that advertisement of an application with correct particulars and legibility
is also in public interest as there may have been others who would have filed oppositions, but have lost the opportunity. Filing of an opposition is a
statutory right available to the Petitioner and others who have been adversely affected, by the grant of registration. Learned counsel relies on a
judgment of this Court in Virendra Sethi v. Kundan Das & Ors., 2002 (25) PTC 50 (Del), wherein it was held that it is the duty and responsibility of
the concerned Authorities under the Trade and Merchandise Marks Act, 1958, to ensure that the advertisement is published properly and nothing is
left vague or uncertain. In the said case, the Court having perused the copy of the Journal observed that the word ‘PRIKAS’ was not readily
and properly visible and thus the Petitioner lost a valuable right to seek amendment of his opposition and the Registrar ought to have allowed the
prayer for re-advertisement.
10. Learned counsel further urged that Petitioner has no other effective remedy in law to challenge the advertisement and the objection raised by the
Respondents that the Petitioner had a remedy of filing a rectification application, is misplaced. In opposition proceedings, the onus to prove the grounds
of registration is on the applicant as there is no absolute right in registration. However, rectification of a registered trademark is a discretionary relief
with onus of proof on the applicant preferring the rectification petition. Therefore, it is the case of the Petitioner that the equities should be balanced by
quashing the advertisement impugned herein and directing the Registrar to re-advertise the same.
11. The stand of Respondents No. 1 and 2, per contra, is that Petitioner had an alternative efficacious remedy under the Act, after registration of the
trademark LAXMAN REKHA. In any case, almost 17 years have elapsed from the date of issue of the advertisement and thus it is urged by the
learned counsel that the Court should not exercise its discretionary power to quash the advertisement and direct the same to be re-advertised, more so,
in view of the fact that registration had been granted in favour of Respondent No.3 on 16.04.2005, bestowing on him statutory rights under Section
28(1) of the Act.
12. It was further submitted by learned counsel appearing on behalf of Respondents No.1 and 2 that the impugned advertisement was published at a
time when printing of Trade Marks Journal was outsourced to clear the backlog and wherever the errors were found in the Journal, the same were
corrected during a rectification drive. With respect to the present case, though it cannot be disputed that the advertisement is not very clear but it is
certainly readable and thus does not require re-advertisement.
13. Learned counsel, albeit subtly, took an objection to the territorial jurisdiction of this Court in entertaining the present petition on the ground that the
impugned advertisement was issued by the Office of Registrar of Trade Marks, Mumbai.
14. Arguing on behalf of Respondent No.3, learned Senior Counsel at the outset, submitted that this Court lacks the territorial jurisdiction to entertain
the present writ petition on many-fold grounds, viz. (a) Respondent No.3 is carrying on business and works for gain in Mumbai; (b) the application for
registration of trademark was filed in the Office of the Registrar of Trade Marks, Mumbai; and (c) the letters authored by the Petitioner were
addressed to the Trade Marks Authority, Mumbai, save and except the letter dated 10.06.2008, which was a legal notice addressed to the Registrar of
Trade Marks, Delhi. Insofar as the legal notice is concerned, it was argued that the same was consciously and deliberately sent to the Registrar, Delhi,
only to create jurisdiction in this Court, despite the Petitioner knowing that the Competent Authority to redress the grievance, if any, was the Registrar,
Mumbai. Reliance was placed on a judgment of this Court in Rahul Yadav v. IDBI Bank, 2021 SCC OnLine Del 2443, wherein one of the objections
raised to the territorial jurisdiction of this Court was that the advertisement was issued from Mumbai and no cause of action had arisen at Delhi. This
Court, relying on a plethora of judgments on territorial jurisdiction and the concept of ‘cause of action’, as interpreted in various judicial
pronouncements, held that in the absence of even a miniscule cause of action arising within the territorial limits of this Court coupled with the admitted
fact that even the advertisement was issued in Mumbai, this Court lacked the territorial jurisdiction to entertain the petition.
15. Raising another preliminary objection to the maintainability of the writ petition, it was argued that even assuming that the Petitioner was aggrieved,
it had an alternative statutory remedy under Section 57 of the Act, to seek cancellation of the trademark, registered in favour of Respondent No.3 and
rectification of the Register. However, instead of exhausting the said remedy, Petitioner chose to file the present writ petition. It is a settled law that
writ petition will not be entertained where the Petitioner has an alternative efficacious remedy and that too statutory. The letters authored by the
Petitioner and addressed to the Registrar seeking rectification clearly reflect that the Petitioner was aware of the powers of the Registrar to cancel or
rectify the trademark registered by it and there is no explanation in the writ petition for not availing the statutory remedy.
16. It was also urged that the petition deserves to be dismissed on grounds of delay and laches. As a matter of record, parties are interlocked in
litigation for the last several years and the trademark was relied upon by the parties in several cases since the year 2000-01, wherein the trademark
underwent a judicial scrutiny upto the Supreme Court. Having been aware of the registration of the trademark in 2005, Petitioner spent time in writing
letters in the years 2006 and 2007, followed by a legal notice in 2008. The Trade Marks Journal was available in the public domain, when the
advertisement was issued on 25.08.2003 as well as when the trademark was registered in 2005, yet the Petitioner waited for three long years to
approach this Court. It is a settled law that merely writing letters or making representations does not give a sufficient cause or ground to a party to
seek condonation of delay. Assuming that the Registrar did not respond to the first letter of the Petitioner, it was at that stage that the Petitioner should
have approached the Court and not to wait for nearly three years assuming writ petition was a remedy.
17. Without prejudice to the aforesaid contentions, it is submitted that the advertisement is proper and the mark is readable, though the background
may be slightly dark. It is wrong to urge that the mark is totally black and completely illegible. It was also argued that there is a provision for obtaining
certified copy of the extract of the Register and the Petitioner could have easily obtained a copy of the extract of the Register on Form TM-46, which
would have given complete information of the advertisement. Instead of taking requisite steps to obtain the copy of the advertisement and availing the
remedy of seeking cancellation/rectification, Petitioner chose to wait for three years, corresponding with the Registrar without any sufficient cause
and then filed the present writ petition in 2008 and that too, in a Court which lacked the territorial jurisdiction.
18. It was next contended that when the present writ petition was filed in 2008 and was listed for admission on 13.08.2008, Petitioner did not press the
relief sought in the application for stay and the application was dismissed as not pressed. Even thereafter, no steps were taken by the Petitioner to
seek an expeditious disposal of the writ petition. The Court must take into account the fact that registration has been granted for the trademark
LAXMAN REKHA (label) in favour of Respondent No.3 way-back in the year 2005 and statutory rights have accrued in its favour. At this stage, if
the advertisement is quashed, even assuming that the advertisement was not completely legible, irreparable harm and injury shall be caused to
Respondent No.3.
19. In Rejoinder, Mr. Bhatia, learned counsel for the Petitioner, contended that the stand of Respondents No.1 and 2 in the Counter affidavit that the
advertisement is readable, though not very clear, is an incorrect statement. A bare perusal of the copy of the advertisement, as placed on record as
well as from the Journal itself, would reveal that the relevant part of the advertisement is totally black and the Registrar has faulted in exercising its
power to remedy the error and re-advertise. Reliance was placed on the judgment of this Court in Ashoka Dresses v. Bonn’S Shirts and Ors.,
2000(20) PTC 161 (Del), wherein it was observed that the very purpose of an advertisement in a Trade Mark Journal is to provide complete
information in respect of the trademark advertised so that public at large is not deprived of the opportunity to make an effective opposition. It was held
in the said judgment that an incorrect advertisement amounts to a misrepresentation and is required to be cancelled. Section 21(1) of the Act provides
an opportunity of opposition and is a very valuable statutory right, which the Petitioner has been unable to exercise on account of the illegible
advertisement.
20. Responding to the argument of the Respondents that the Petitioner has an alternate remedy of filing a rectification petition, it was submitted that
filing a rectification petition is not a proper remedy in the present case. Rectification and opposition proceedings are clearly different and distinct. The
differences sought to be brought forth have been tabulated by the Petitioner in its rejoinder to the counter affidavit.
21. It was strenuously argued that it is a statutory duty of the Registrar of Trade Marks to publish advertisements with correct facts, particulars and
also to ensure that the advertisement is clearly visible and readable. Not having performed its duty diligently, Respondents No.1 and 2 cannot take a
stand that the Petitioner at this stage should file for rectification under Section 57 of the Act. Insofar as objection to the territorial jurisdiction of this
Court is concerned, it was argued that the Trade Marks Journal bearing the impugned advertisement was made available in Delhi and having an all
over India circulation, it is open to judicial scrutiny by this Court. Moreover, the cause of action has arisen in Delhi, as Respondent No.3 is relying on
the registration which is a subject matter of litigation in a suit pending between the parties in the District Courts, Delhi and Offices of Respondents
No.1 and 2 are also located at Delhi.
22. Learned counsel for the Petitioner further argued that there is no delay in filing the present writ petition, as alleged by the Respondents. As soon
as the Petitioner became aware of the registration in the pending litigation between the parties in the year 2006, he rightly made representations to the
Registrar, being the Competent Authority, to cancel the advertisement and re-advertise and only when the Registrar failed to perform its statutory duty
for over 2 years, the writ jurisdiction of this Court was invoked.
23. I have heard the learned counsels for the Petitioner and Respondents No.1 and 2 as well as learned Senior Counsel appearing on behalf of
Respondent No.3.
24. The first and foremost legal nodus that this Court is called upon to address, is whether this Court lacks the territorial jurisdiction to entertain the
present petition. While there may be substance in the contention raised by the Respondents, with respect to the territorial jurisdiction of this Court,
however, this Court cannot overlook the fact that the writ petition was filed in the year 2008 and notice to show cause was issued by the Court on
13.08.2008. On 01.03.2011, ‘Rule’ was issued and the petition was admitted to hearing. The writ petition has remained pending since then and
at this distant point of time, when a long period of almost 14 years has lapsed, in my view, it would be inequitable to dismiss the writ petition on the
ground of lack of territorial jurisdiction. This is more so when this Court is not deciding the writ petition on merits and is relegating the Petitioner to
avail the alternative statutory remedy available under the Act.
25. This Court draws strength for the aforesaid view from the observations of a Division Bench of this Court in Azra Poultry Equipments v. Union of
India and Ors., in W.P. (C) 286/1991 decided on 07.03.2012, wherein the Division Bench held that though the writ petition was liable to be summarily
dismissed on the ground of lack of territorial jurisdiction alone, however, since the petition had remained pending for over 20 years, Petitioner could not
be ousted on that ground. I am also persuaded by a judgment of the High Court of Punjab and Haryana in Inder Pal Singh v. Union of India (UOI) and
Ors., in Crl. Writ Petition 465/1997 decided on 17.01.2003, wherein a preliminary objection was raised before the Division Bench that the Court had
no territorial jurisdiction to entertain the petition and the Petitioner had argued that when the matter was listed for final hearing, this preliminary
objection could not be raised also because the petition was admitted for regular hearing way back in the year 1996. Reliance was placed on a
judgment of the Supreme Court in Dinesh Chandra Gahtori vs. Chief of Army Staff and Anr. (2001) 9 SCC 525 in this regard. Agreeing with the
contention of the Petitioner, the Division Bench held that it would not be appropriate to dismiss the writ petition at that stage in the year 2003, on the
point of territorial jurisdiction, since the matter had remained pending for a long time.
26. Before dealing with the objection of delay and laches raised by the Respondents, it would be pertinent to examine the relief claimed by the
Petitioner in the present petition and for ready reference, the prayer clause is extracted hereunder :-
“It is prayed that the Hon’ble Court be :
(a) pleased to do superintendence in the matter.
(b) to issue a Writ of Certiorari to quash the advertisement of application no.731808 in class 5.
(c) quash the advertisement of application no.731808 in class 5.
(d) to direct the Respondent No.2 to re-advertise the application No.731808 in class 5.
(e) to direct Respondent No.2 to take adequate precautions in advertisements of trade mark applications in Trade Marks Journal.
(f) to direct the Respondents to provide Trade Mark Journal in printed form as well and provide for easy availability of journals.
(g) to grant such other and further reliefs as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case and in
favour of the Petitioner.â€
27. It is clear from the prayer clause that the Petitioner has invoked the writ jurisdiction of this Court to quash the advertisement and a direction to re-
advertise the same. Going into the chronology of dates and events, it is undisputed that the impugned advertisement was published in the Mega Journal
on 25.08.2003 and the trademark of Respondent No.3 was registered on 16.04.2005. As per the counter affidavit filed by Respondents No.1 and 2,
the mark was renewed on 29.01.2007 for ten years, which is undisputed by the Petitioner. Petitioner has averred in the petition that he learnt of the
registration of the mark in 2006, when the Registration Certificate was filed by Respondent No.3 along with an application for amendment in a suit
pending in the District Courts, between the same parties. The application is on record and is supported by an affidavit dated 15.09.2006. The aforesaid
narrative is only with a view to bring forth the fact that when the present petition was filed in the year 2008, Petitioner was aware that the trademark
of Respondent No.3 was registered in 2005. At this stage, the statutory remedy available to the Petitioner was to seek cancellation of the registered
trademark and rectification of the Register under Section 57 of the Act. It needs to be highlighted here that Petitioner was also aware of the power of
Registrar of Trade Marks, to rectify the register under Section 57 of the Act, which is reflected from the letters addressed by the Petitioner to the
Registrar in the years 2006 and 2007, followed by a legal notice, wherein a request was made to take action under Section 57(4) of the Act. However,
the Petitioner failed to take recourse to the appropriate remedy available to him under the Statute and instead filed the present writ petition, for the
reasons best known to him.
28. In response to the said objection raised by the Respondents, learned counsel for the Petitioner heavily relied on two judgments of this Court as
aforementioned, where the writ petitions were entertained in cases where there were defects/errors or misrepresentations in the advertisements,
issued in the Trade Marks Journal.
29. I have carefully perused the two judgments cited by learned counsel for the Petitioner and in my opinion, the common thread that runs in the two
judgments being Virendra Sethi (supra) and Ashoka Dresses (supra), is that in both the cases, challenge to the advertisements was laid prior to the
registration of the trademarks, with respect to which the advertisements were issued. There cannot be an iota of doubt on the observations of the
Courts in these two judgments that it is a duty of the concerned Authority under the Trade Marks Act, to ensure that advertisement is published
properly and nothing is left vague or uncertain and nothing is misrepresented. This, in my view, would no doubt include a case where the
advertisement is illegible, as in such a case, the public would never know of what is advertised and thus those who wish to file oppositions shall be
deprived of an important opportunity and a statutory right.
30. The observations, as aforementioned cannot, in my view, enure to the Petitioner’s advantage. It bears repetition to state that in both the
judgments, the writ petition was filed prior to the registration of the marks in question. In Virendra Sethi (supra), the writ petition was directed against
an order of the Assistant Registrar of Trade Marks by which an interlocutory application seeking amendment of the opposition by the Petitioner
therein was rejected. Petitioner had filed an opposition to the registration of the trademark ‘CHAAPAT’ applied for by the Respondent on the
ground that it was identical to the trademark ‘CHAAPAT’. Subsequent to the filing of the application, Petitioner discovered that publication of
the advertisement in the Journal was not proper as besides the said word, ‘CHAAPAT’, there were some other words which were not clearly
visible. The application for amendment of the opposition was rejected. It is in this context that the Petitioner had assailed the impugned order and the
Court finding that the word ‘PRIKAS’ appearing in the advertisement was not properly visible and allowed the writ petition allowing the
Petitioner to incorporate amendments in the opposition.
31. In Ashoka Dresses (supra), Petitioners challenged the advertisement published in the Trade Mark Journal on the ground of misrepresentation and
in this context, the Court observed that an incorrect advertisement which amounted to misrepresentation is required to be cancelled. The order of the
Registrar cancelling the advertisement on ground of misrepresentation was upheld.
32. Compared and contrasted with the two judgments aforementioned, relied upon heavily by the Petitioner in the present case, Petitioner approached
this Court after the trademark LAXMAN REKHA was registered in favour of Respondent No.3. It is undisputed that till date, the Petitioner has
taken no steps to challenge the registration of the trademark granted in favour of Respondent No.3 in accordance with the remedies available under
the Act. Chapter-III of the Act provides the procedure for applying for registration of a trademark. Section 18 details the procedure for making an
application as well as prescribes the power of the Registrar of Trade Marks to refuse the application or accept it absolutely or subject to such
amendments, modifications, conditions etc., if any, as he may think fit. In case of refusal or conditional acceptance, the grounds for doing so are
required to be recorded in writing. Section 19 provides for withdrawal of acceptance for the reasons stated in Section 19 (a) & (b) but the withdrawal
can only be before the registration of the mark. Section 20 provides for advertisement of an application, either after acceptance or before acceptance,
so as to afford an opportunity to the public, to oppose the registration of the mark. Section 21 enables any person to apply for opposition to the
registration, within four months from the date of advertisement or re-advertisement of the application for registration. Once the application is accepted
and either not opposed or if opposed, the opposition has been rejected, the Registrar registers the trademark under Section 23 of the Act.
33. After the registration of the trademark, statutory rights accrue under Section 28(1) of the Act, in favour of the registered proprietor of the
trademark for its exclusive use as well as for protection against infringement. Having perused the Scheme of the Act, in my view, what is discernible
is that post-registration of a trademark the remedy available to any person aggrieved is to seek cancellation of the mark and rectification of the
Register, under Section 57 in Chapter VII of the Act. It is evident that Petitioner was completely aware of the said remedy way-back in the year
2006, but chose to remain silent and took no steps to seek cancellation of the mark and rectification of the Register, with respect to the trademark in
question. Examined from this angle, in view of the statutory remedy available under the Act, the relief sought in the present petition cannot be granted.
Entertaining the petition at this stage and quashing the advertisement, assuming the same is illegible, would amount to entertaining the petition against
the settled principles of law that the High Court will ordinarily not exercise the extraordinary writ jurisdiction if there exists an alternative remedy,
more particularly, a statutory remedy. Additionally, this would amount to rendering the statutory remedy redundant and otiose. This Court cannot, by
entertaining the present writ petition, create an alternate mechanism to challenge the registration of a trademark, though indirectly, against the
legislative intent.
34. Although in view of the above finding, the issue of delay on behalf of the Petitioner in approaching the Court does not require any adjudication,
however, even on that score, the petition must fail. Petitioner admittedly took no steps to challenge the registration of the trademark between 2005 to
2008 or at least from 2006, when according to the Petitioner, he learnt of the registration. The only explanation rendered is that the Petitioner was
writing letters to the Registrar, followed by a legal notice, for redressal of his grievance. It is a settled principle of law that in a writ jurisdiction, which
is an extraordinary jurisdiction of the High Court, Court would not ordinarily assist those who are lethargic and indolent. If there is a delay on the part
of the Petitioner, which is not satisfactorily explained, the High Court may decline to exercise the writ jurisdiction. This principle applies with a greater
rigour, when the Petitioner on account of its lethargy permits time to lapse and in the meantime, third party rights are created. It is equally well-settled
that mere writing of letters or representations cannot furnish an adequate explanation for delay. This principle was settled way-back in KV
Rajalakshmiah Setty v. State of Mysore, AIR 1967 SC 993, and was reiterated in Rabindranath Bose and Others v. Union of India and Others, AIR
1970 SC 470. The judgments, in my view, squarely apply to the present case, where the Petitioner took no action, except to correspond with the
Registrar and admittedly in the meantime, statutory rights have accrued in favour of Respondent No.3. Court is thus not persuaded to exercise the writ
jurisdiction in favour of the Petitioner.
35. For all the aforesaid reasons, the writ petition is dismissed. Liberty is, however, granted to the Petitioner to resort to appropriate remedies
available, in accordance with law.
36. Pending application is disposed of.
37. No order as to costs.
