WHIRLPOOL CORPORATION versus REGISTRAR OF TRADE MARKS, MUMBAI AND ORS.

Citation: [1998] SUPP. 2 S.C.R. 359 · Decided: 26-10-1998 · Supreme Court of India · Bench: S. SAGHIR AHMAD · Disposal: Appeal(s) allowed

Judgment (excerpt)

WHIRLPOOL CORPORATION 
v. 
REGISTRAR OF TRADE MARKS, MUMBAI AND ORS. 
OCTOBER 26, 1998 
[S. SAGHIR AHMAD AND K.T. THOMAS, JJ.] 
Trade and Merchandise Marh; Act, 1958 : Sections 2(1) (x), 5-7, JO, 
12, 17, 19, 21, 23, 46, 47, 56, 107-109 and Ill. 
A 
B 
Trade MarhJ-Registrar of Trade Marh; and High Court-Jurisdiction C 
to act as Tribunal-Held, apparently concurrent-But in certain matters held 
mutually exclusive-Before "which the proceeding concerned is pending"-
Held has to be treated Tribunal. 
Trade Mar hi-Registration of Trade Mark 'WHIRLPOOL' by appellant-
. Initially renewal not obtained but subsequently obtained for three successive D 
periods-Jn the meantime registration of Trade Mark 'WHIRLPOOL' by Chinar 
Trust-Appellant's objection for registration dismissed-Appeal by appellant 
before High Court-Petition filed by appellant for removal of Trade Mark 
registered in favour of Chinar Trust-Appellant also filed a passing of suit 
against Chinar Trust-Grant of temporary injunction by High Court-
Thereafter appellant filed an amendment application in passing off suit to E 
include the ground of infringement-During tendency of proceedings Chinar 
Trust approached Registrar-Consequently show cause notice under Section 
56(4) issued to appellant for cancellation of certificate or renewal granted-
Held, issue of notice was without authority and consequently quashed 
Trade MarhJ-Legislative history of-Discussion regarding Constitution F 
of India, 1950 : Article 226 
High Court-Power to issue writ-Nature of -Power to refuse relief 
in case alternative remedy is al'ailable--Exception to-Show cause notice 
issued to appellant under Trade Mark Act-Challenge to notice in writ G 
jurisdiction-Held, permissible. 
Statutory lnterpretation-Definiticns-lnterpretation of 
Maxim-Grammatica falsa a non vitiat chartam (false grammar does 
not vitiate a deed)-Applicability of 
359 
H 
A 
360 
SUPREME COURT REPORTS [1998] SUPP. 2 S.C.R. 
The appellant, a Corporation based in USA registered its trade mark 
'WHIRLPOOL' under the Trade and Merchandise Marks Act, 1940 on 31st 
July, 1957. This Act was subsequently replaced by the Trade and Merchandise 
Marks Act, 1958. The registration certificate was renewed twice for a period 
of seven years once in 1962 and again w. e. f. 22.2.1970. As no further 
B renewal was obtained after 1977 the trade mark was removed from the 
register. However, the appellants continued to publicise their trade mark 
'WHIRLPOOL' and also the company name through publications which had 
made wide circulation in the country. On 6th August, 1986 two trustees of 
the Chinar Trust applied for registration of trade mark 'WHIRLPOOL' and 
the objections raised by the appellant against registration were dismissed by 
C Assistant Registrar. The appeal preferred by appellant was admitted by Delhi 
High Court. In the meantime 'WHIRLPOOL' was registered as trade mark 
of the Chinar Trust and a certificate of Registration was granted to it. A 
petition for rectification and removal of entry filed by the appellants on 
4.8.1993 under Sections 45 and 46 was admitted by Registrar. Since chinar 
Trust started using the aforesaid trade mark the appellant Corporation filed 
D a suit for passing off in the Delhi High Court for restraining the defendants-
Chinar Trust from using the trade mark, 'WHIRLPOOL'. A temporary 
injunction granted by the Single Judge was upheld by the Division Bench 
of the High Court. Against this order chinar Trust unsuccessfully filed 
special leave petition before this Court. Thereafter the appellant filed an 
E application for renewal of trade mark on 26.2.1997 and the Registrar allowed 
renewal for three successive periods namely 22.2.1977, 22.2.1984 and finally 
22.12.1991. The appellant also filed an application under order 6 Rule 17 
C. P.C. for amendment of the plaint in the passing off suit filed by it earlier 
so as to include the ground of infringement of trade mark also in the suit. 
Thereafter Chinar Trust approached Registrar for taking suo motu action 
F under Section 56( 4) for cancellation of the certificate of renewal granted to 
the appellant and consequently the Registrar issued a show cause notice to 
the appellant as to why the certificate of registration be not cancelled. 
Against this notice the appellant filed a writ petition before the Bombay High 
Court which was dismissed. Hence this appeal. 
G 
In appeal to this Court it was contended on behalf of the appellant that , 
(i) in

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