JAGATJIT INDUSTRIES LIMITED versus THE INTELLECTUAL PROPERTY APPELLACE BOARD & ORS.

Citation: [2016] 1 S.C.R. 808 · Decided: 20-01-2016 · Supreme Court of India · Bench: KURIAN JOSEPH · Disposal: Dismissed

Judgment (excerpt)

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[2016] l S.C.R. 808 
JAGATJIT INDUSTRIES LIMITED 
v. 
THE INTELLECTUAL PROPERTY APPELLACE BOARD & 
ORS. 
(Civil Appeal No. 430 of2016) 
JANUARY 20, 2016. 
(KURIAN JOSEPH AND R. F. NARIMAN, JJ.) 
Trade and Merchandise Marks Act, 1999: s.125 -
.. pplicability of - Respondent no.4 engaged in manufacture and 
marketing of alcoholic beverage and claiming to have adopted the 
trade mark 'Blenders Pride' through its /icencee 'Seagram' -
Registration of said trade mark was granted in 50 countries -
Application for registration in India was pending -Appellant applied 
for registration of identical trade mark 'Blenders Pride' -
Respondent no.4 filed notice of opposition - However, respondent 
no.4 found that registration certificate was issued to appellant -
Writ petition by respondent no.4 - Meanwhile show cause notice 
issued by Registrar proposing to rectify the register uls.57(4) - Writ 
petition disposed of with direction to Registrar to decide the issues 
arising out of show cause notice - Meanwhile suit for infringement 
filed by appellant against licencee of respondent no.4 - While 
Registrar proposed to rectify the register uls.57(4) by removing the 
mark - Aggrieved appellant filed writ petition and High Court 
directed Registrar to dispose of the proceedings before it - Registrar 
recalled the show cause notice issued stating that he has no 
;urisdiction to proceed by virtue of s.12 5 and proceedings could 
only continue before the Appellate Board - Appellate Board held 
that when the show cause notice was issued, /icencee had not yet 
filed its counter statement as it was not even served with the suit 
papers and that since suit had not been filed against respondent 
no.4 but had only been filed against /icencee, s.125 would have no 
application and therefore Registrar order would have to be set aside 
- Registrar directed to expeditiously decide the opposition 
proceedings -
Appellant filed writ petition - High Court held that 
no injustice was done by Appellate Board in directing de novo 
hearing of the case - Held: s.124(1) refers only to the plaintiff 
and defendant of a suit for infringement, 
and 
s. l 24(1)(ii) 
808 
JAGATJIT INDUSTRIES LTD. v. INTELLECTUAL PROPERTY 
809 
APPELLATE BOARD 
specifically refers to the "party concerned"" who will apply to 
the Appellate Board for rectification of the register - Similarly, s.125 
also refers only to the "plaintiff' and the "defendant"" in a suit 
for infringement of a registered trademark - It is obvious, therefore, 
A 
that an application for rectification of the register can either be 
made by the defendant who raises a plea in the suit that the 
B 
registration of the plaintiff's trademark is invalid, or by the plaintiff 
who questions the validity of the registration of the defendant's 
trademark in a situation where the defendant raises a defence u/ 
s.30(2)(e) - It is clear therefore that the application for rectification 
of the register referred to-ins.125(1) could only be an application 
(given the facts of the present case) by the defendant in the suit 
for infringement - The defendant being licencee, it is clear that 
the Section would have no application - Respondent no. 4 has not 
been made a party defendant to the said suit - Also, the very issue 
as to validity of the registration of the trademark concerned has to 
·be determined in the application for rectification of the register, 
which would obviously bind only the parties to the suit and nobody 
else - For these reasons, the application for rectification, not 
having been made by any of the party defendants in the said suit 
for infringement and passing off. s.125(1) would have no 
application. 
· ss.21(2), 23(1) - Opposition to registration -Application for 
registration of impugned trade mark published in journal on 7'1' 
October 2003 - Respondent no.4 seeking extension of one month's 
time for filing its notice of opposition on 6.1.2004 ~On 19.1.2004, 
respondent no.4 filed its notice of opposition - On 16.2.2004, Trade 
Mark Registry issued a notice to appellant inviting its counter 
statement to the said notice of opposition and had stated that if the 
counter statement' was not filed within time, the trade mark would 
be deemed to be abandoned - On 20. 1 .2005. respondent no. 4 came 
to know that trade mark registration certificate had been issued to 
appellant on 13.1.2004 itself-Held: Time was extended by Registrar 
as evidenced by letter dated 16.2.2004 - There

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