Whirlpool Corporation v. Registrar of Trade Marks, Mumbai, (SC) BS29744
SUPREME COURT OF INDIA

Before:- S. Saghir Ahmad and K. T. Thomas, JJ.

Civil Appeal No. 5201 of 1998 (Arising from S.L.P. (Civil) No. 748 of 1998). D/d. 26.10.1998.

Whirlpool Corporation - Appellant

Versus

Registrar of Trade Marks, Mumbai - Respondent

For the Appellant :- Mr. Iqbal Chagla and Mr. P. Chidambaram, Sr. Advocates with Mr. A. R. Lall, Mr. S. S. Rana, Ms. Anuradha Salhotra, Mr. Vikrant Rana, Advocates.

For the Respondents :- Mr. R. N. Trivedi, Additional Solicitor General, Mr. S. C. Agrawal, Sr. Advocate with Mr. N. K. Anand, Mr. R. K. Sanghi, Ms. Binu Tamta, Mr. D. S. Mehra, Mr. Narender Mohan Sharma, Ms. Ritu Singh and Mr. R. P. Singh, Advocates.

A. Trade and Merchandise Marks Act Sections 54(4) and 107 Registration of Trade Mark in favour of appellant - Appellant filing petition for passing off and infringement of Trade Mark by defendant - In view of pendency of proceedings before High Court, the Registrar of Trade Mark could not issue any suo motu notice to appellant under Section 56(4) for cancellation of Certification of Registration already granted.

[Paras 67 and 68]

B. Trade and Merchandise Marks Act Section 2(1)(c) Meaning of word 'Tribunal' in Section 2(1)(c) - If the proceeding, concerned is pending before High Court, it will be treated as 'Tribunal' - If on the contrary the proceedings concerned is pending before the Registrar, the Registrar will be treated as 'Tribunal'.

[Paras 25, 26, 58, 59 and 60]

C. Trade and Merchandise Marks Act, 1958, History of Trade and Merchandise Act traced from the year 1889 - Act of 1958 follows the pattern of Trade Marks Act, 1938 of United Kingdom.

[Para 27]

D. Constitution of India, Article 226 - Alternative remedy - High Court has imposed upon itself certain restrictions one of which is that if an effective and efficacious remedy is available, High Court would not normally exercise its writ jurisdiction - But alternative remedy would not be a bar in at least three contingencies namely :-
(i) Where writ petition has been filed for the enforcement of any of the Fundamental Rights.

(ii) Where there has been a violation of the principles of natural justice.
(iii) Where the order of proceedings are wholly without jurisdiction or the vires of an Act is challenged.

[Para 13]

E. Trade and Merchandise Act, 1958, Sections 107 and 56 - Validity of Registration of Trade Mark - Situation explained where registration of the Trade Mark can be determined only by the Court and not by the Registrar.

[Paras, 55 and 56]

Cases Referred :-

Rashid Ahmed v. Municipal Board, Kairana, AIR 1950 Supreme Court 163.

K.S. Rashid and Son v. Income Tax Investigation Commissioner, AIR 1954 Supreme Court 207.

State of U.P. v. Mohd. Nooh, 1958 SCR 595 .

A.V. Venkateswaran, Collector of Customs, Bombay v. Ramchand Sobhraj Wadhwani and another, AIR 1961 Supreme Court 1506.

Calcutta Discount Co. Ltd. v. Income Tax Officer, Companies Distt. I, AIR 1961 Supreme Court 372.

Vanguard Fire and General Insurance Co. Ltd., Madras v. Fraser and Ross, AIR 1960 Supreme Court 971.

Standard Pharmaceuticals v. Dy. Registrar of Trade Marks (Appeal) No. 213 of 1970 decided on 18.2.1975.

Registrar of Trade Marks v. Kumar Ranjan Sen and others, AIR 1966 Calcutta 311.

Cement Companies Ltd. v. P.N. Sharma and another, AIR 1965 Supreme Court 1595.

JUDGMENT

S. Saghir Ahmad, J. - Leave granted.

WHIRLPOOL, true to their name, have created a WHIRLPOOL of litigation in this country. Based, as they are, in the United States of America, they started the gyrating movement by applying for registration of their Trade Mark "WHIRLPOOL" to the Registrar of the Trade Marks under the Trade Marks Act, 1940, which has since been replaced by the Trade and Merchandise Marks Act, 1958 and which, for the sake of brevity, shall hereinafter be referred to as the "Act". The Trade Mark was duly registered and a Certificate of Registration was issued on 31st of July, 1957 which was renewed twice, in 1962 for a period of seven years and again for seven years with effect from 22.2.70. Since further renewal was not obtained after 1977, it was removed from the Register but the appellants continued to publicise their Trade Mark "WHIRLPOOL" as also the company name through publications which had wide circulation in this country and thus managed to maintain their reputation among the business circle including prospective customers and buyers.

2. On 6th of August, 1986, Mrs. Sumitra Charat Ram and Mr. N. R. Dongre, as Trustees of Chinar Trust, applied for registration of the Trade Mark "WHIRLPOOL" in Class 7 under Application No. 458134, which has duly advertised by the Registrar in Trade Marks Journal No. 945 on page 845 pursuant to which the appellant filed their Opposition on 6th January, 1989, but their objections were dismissed by the Assistant Registrar by his order dated 12.8.1992. An appeal against this order which was filed in the Delhi High Court on 7.11.1992 has since been admitted on 1.2.1993 and registered as C.M. (Main) No. 414 of 1992.

3. In the meantime, "WHIRLPOOL" was registered as the Trade Mark of the Chinar Trust on 30.11.1992 and a Certificate of Registration No. 458134 was granted to them. A petition for rectification and for removal of this entry from the Register has already been filed by the appellant before the Registrar on 4.8.1993 under Sections 45 and 46 of the Act. It is still pending.

4. Since Chinar Trust had also started using the Trade Mark "WHIRLPOOL" in relation to certain washing-machines, allegedly manufactured by them, the appellant, as owner of the Trade Mark "WHIRLPOOL", filed a Suit (Suit No. 1705 of 1994) for passing off in the Delhi High Court with an application for temporary injunction under Order 39 Rule 1 and 2 of the Civil Procedure Code for restraining the defendants, namely, Chinar Trust, etc., from using the Trade Mark WHIRLPOOL in relation to their products. A single Judge of the Delhi High Court granted temporary injunction to the appellant on 31.10.1994 which was upheld by the Division Bench on 21.4.1995. Special Leave Petition filed against this order by the Chinar Trust has already been dismissed by this Court on 30.8.1996.

5. On 28.2.1997, the appellant filed an application in Form TM-12 for renewal of the Trade Mark "WHIRLPOOL" in Class 7 and the Registrar, by his order dated 29th July, 1997, allowed the renewal for three successive periods, namely, 22.2.1977, 22.2.1984 and finally 22.2.1991. Thereafter, on 8th August, 1997, appellant made an application under Order 6 Rule 17 C.P.C. for amendment of the plaint in Suit No. 1705 of 1994, referred to above, so as to include the ground of infringement of the Trade Mark also in the suit but the application is still pending in the Delhi High Court which has already granted time twice to the defendants, namely, Chinar Trust, to file a reply.

6. In the meantime, Chinar Trust, through its attorneys, wrote on 10th September, 1997 to the Registrar to take suo motu action under Section 56(4) for cancellation of the Certificate of Renewal granted to the appellant on 29th July, 1997 and the Registrar, acting on that request, issued a notice to the appellant on 26th September, 1997 requiring it to show cause why the Certificate of Registration be not cancelled. Against this notice, the appellant filed a writ petition in the Bombay High Court which was dismissed on 8.12.1997. It is against this judgment that the present appeal has been filed.

7. Mr. Iqbal Chagla, senior counsel appearing for the appellant, has contended that a notice under Section 56(4) can be issued only by the 'TRIBUNAL', which has been defined in Section 2(1)(x), which means the Registrar or the High Court before which the 'proceeding concerned' is pending. Mr. Chagla has contended that it is either the Registrar or the High Court, which can issue a notice under Section 56(4), but out of the two, only that authority can issue the notice before which the 'proceeding concerned' is pending. It is, further, contended that since a passing-off suit was already pending in the Delhi High Court, where the appellant had also moved an application for amendment of the plaint so as to include the relief of infringement of its Trade Mark notice under Section 56(4) could have been issued only by the Delhi High Court and not by the Registrar.

7. Mr. R. N. Trivedi, ASG appearing for the Registrar, has, on the contrary, contended that the Registrar continued to retain his jurisdiction under Section 56 of the Act, notwithstanding the pendency of the passing off suit filed by the appellant in the High Court as the said suit could not be treated to constitute, in any manner, "proceedings" under the Act. Moreover, the application for amendment, by which the relief relating to infringement of Trade Mark was sought to be added in the plaint was still pending and unless that application was allowed and the additional paragraphs, including the above relief, were added in the plaint, the nature of proceedings would not change and they will continue to be treated as proceedings in a suit and not "proceeding" under the Act.

8. This is also the contention of Mr. Sudhir Chandra, Senior Counsel appearing for the Chinar Trust. He has also contended that the High Court was fully justified in dismissing that petition at the threshold particularly as the writ petition was directed only against a notice issued under Section 56(4) of the Act requiring the appellant to show cause why the Registration Certificate be not cancelled. The appellant, it is contended, should have submitted a reply to that notice and allowed the Registrar to dispose of the whole matter on merits particularly as the Registrar had initiated the action principally on the ground that the appellant had obtained the renewal of the Trade Mark by misrepresentation and concealment of relevant facts.

9. Mr. Chagla, in reply, has submitted that where the action initiated by a statutory authority is wholly without jurisdiction, it can be challenged under Article 226 of the Constitution and the writ petition cannot be dismissed summarily. In the instant case, the Registrar, it is contended, could not have legally acted as the Tribunal as the "proceedings concerned" was pending before the High Court and, therefore, the High Court alone could have acted as a "TRIBUNAL" and initiated action under Section 56(4) of the Act.

10. Learned counsel appearing on behalf of the parties have thus tried to create a whirlpool of arguments around the word "TRIBUNAL" as defined in Section 2(1)(x) of the Act and, therefore, in order to save ourselves from becoming the victim of "Vertigo" of this whirlpool at the Bar, we have, for the time being, dispassionately assumed the role of a grammarian, to consider the science of English language from the point of view of inflexion, punctuation and, of course, whole syntax, as the argument of the respondent's counsel is based, almost wholly, on the importance of "comma" and the pronouns, "which" or "whom", occurring in that definition keeping, at the same time, in our mind, the principle Grammatical falsa non vitiate chartam (false grammar does not vitiate a deed) and the question whether this would also apply to statutory interpretation. But before we do it, we will first dispose of the preliminary objection relating to maintainability of the writ petition as filed in the High Court, allegedly, being premature and having been brought without first exhausting the alternative remedies under the Act.

11. Learned counsel for the appellant has contended that since suo motu action under Section 56(4) could be taken only by the High Court and not by the Registrar, the notice issued to the appellant was wholly without jurisdiction and, therefore, a writ petition even at that stage was maintainable. The appellant, in these circumstances, was not obliged to wait for the Registrar to complete the proceedings as any further order passed by the Registrar would also have been without jurisdiction.

12. The power to issue prerogative writs under Article 226 of the Constitution is plenary in nature and is not limited by any other provision of the Constitution. This power can be exercised by the High Court not only for issuing writs in the nature of Habeas Corpus, Mandamus, Prohibition, quo warranto and certiorari for the enforcement of any of the Fundamental Rights contained in Part III of the Constitution but also for "any other purpose".

13. Under Article 226 of the Constitution, the High Court, having regard to the facts of the case, has a discretion to entertain or not to entertain a writ petition. But the High Court has imposed upon itself certain restrictions one of which is that if an effective and efficacious remedy is available, the High Court would not normally exercise its jurisdiction. But the alternative remedy has been consistently held by this Court not to operate as a bar in at least three contingencies, namely, where the writ petition has been filed for the enforcement of any of the Fundamental Rights or where there has been a violation of the principle of natural justice or where the order or proceedings are wholly without jurisdiction or the vires of an Act is challenged. There is a plethora of case-law on this point but to cut down this circle of forensic whirlpool, we would rely on some old decisions of the evolutionary era of the constitutional law as they still hold the field.

14. Rashid Ahmad v. Municipal Board, Kairana, AIR 1950 Supreme Court 163, laid down that existence of an adequate legal remedy was a factor to be taken into consideration in the matter of granting writs. This was followed by another Rashid case, namely, K.S. Rashid and Son v. The Income Tax Investigation Commissioner, AIR 1954 Supreme Court 207, which reiterated the above proposition and held that where alternative remedy existed, it would be a sound exercise of discretion to refuse to interfere in a petition under Article 226. This proposition was, however, qualified by the significant words, "unless there are good grounds therefor", which indicated that alternative remedy would not operate as an absolute bar and that writ petition under Article 226 could still be entertained in exceptional circumstances.

15. Specific and clear rule was laid down in State of U.P. v. Mohd. Nooh, 1958 SCR 595 , as under :

16. This proposition was considered by a Constitution Bench of this Court in A.V. Venkateswaran, Collector of Customs, Bombay v. Ramchand Sobhraj Wadhwani and another, AIR 1961 Supreme Court 1506 and was affirmed and followed in the following words :

17. Another Constitution Bench decision in Calcutta Discount Co. Ltd. v. Income Tax Officer, Companies Distt. I, AIR 1961 Supreme Court 372 laid down :

18. Much water has since flown beneath the bridge, but there has been no corrosive effect on these decisions which, though old, continue to hold the field with the result that law as to the jurisdiction of the High Court in entertaining a writ petition under Article 226 of the Constitution, in spite of the alternative statutory remedies, is not affected, specially in a case where the authority against whom the writ is filed is shown to have had no jurisdiction or had purported to usurp jurisdiction without any legal foundation.

19. That being so, the High Court was not justified in dismissing the writ petition at the initial stage without examining the contention that the show cause notice issued to the appellant was wholly without jurisdiction and that the Registrar, in the circumstances of the case, was not justified in acting as the "TRIBUNAL".

We proceed to the next question now.

20. Section 56, under which the notice to show cause has been issued to the appellant, provides as under :

56. Power to cancel or vary registration and to rectify the register -

21. Section 56(1) provides that on an application made to the High Court or the Registrar by the person aggrieved, the TRIBUNAL may cancel or vary the registration of the Trade Mark. Under sub-section (4) of Section 56, this power can be exercised by the "TRIBUNAL" suo motu.

'TRIBUNAL' has been defined under Section 2(1)(x) as under :

This definition treats "High Court" and "Registrar" both as "TRIBUNAL" for purposes of this Act.

22. High Court has been defined in Section 2(h) as the "High Court having jurisdiction under Section 3" which, in its turn, provides that it shall be that High Court within the limits of whose appellate jurisdiction the office of the Trade Marks Registry referred to in each of the sub-clauses (a) to (e) is situate.

23. We have to consider the meaning of these definitions in the context of other relative provisions of the Act so as to find an answer to the question relating to the extent of jurisdiction of the Registrar and the High Court functioning as "TRIBUNAL".

24. Now, the principle is that all statutory definitions have to be read subject to the qualification variously expressed in the definition clauses which created them and it may be that even where the definition is exhaustive inasmuch as the word defined is said to mean a certain thing, it is possible for the word to have a somewhat different meaning in different sections of the Act depending upon the subject or context. That is why all definitions in status generally begin with the qualifying words, similar to the words used in the present case, namely 'unless there is anything repugnant in the subject or context'. Thus, there may be sections in the Act where the meaning may have to be departed from on account of the subject or context in which the word had been used and that will be giving effect to the opening sentence in the definition section, namely 'unless there is anything repugnant in the subject or context'. In view of this qualification, the Court has not only to look at the words but also to look at the context, the collocation and the object of such words relating to such matter and interpret the meaning intended to be conveyed by the use of the words under those circumstances." (See : Vanguard Fire and General Insurance Co. Ltd., Madras v. Fraser and Ross, AIR 1960 Supreme Court 971).

25. Before considering the contextual aspect of the definition of "TRIBUNAL", we may first consider its ordinary and simple meaning. A bare look at the definition indicates that High Court and the Registrar, on their own, are not "TRIBUNAL". They become "TRIBUNAL" if "the proceeding concerned" comes to be pending before either of them. In other words, if "the proceeding concerned" is pending before the High Court, it will be treated as "TRIBUNAL". If, on the contrary, "the proceeding concerned" is pending before the Registrar, the latter will be treated as "TRIBUNAL".

26. Since "TRIBUNAL" is defined in Section 2 which, in its opening part, uses the phrase "Unless the context otherwise requires", the definition, obviously, cannot be read in isolation. The phrase "Unless the context otherwise requires" is meant to prevent a person from falling into the whirlpool of "definitions" and not to look to other provisions of the Act which, necessarily, has to be done as the meaning ascribed to a "definition" can be adopted only if the context does not otherwise require.

27. The history of legislation is more than a century old. The first legislation brought on the Statute Book was the Indian Merchandise Marks Act, 1889 (Act No. 4 of 1889). This was followed by the Trade Marks Act, 1940 (Act No. 5 of 1940). Both these acts were repealed by the Trade and Merchandise Marks Act, 1958. This Act follows the pattern of Trade Marks Act, 1938 of the United Kingdom. Prior to the enactment of Trade Marks Act, 1940, the disputes or problems, specially those relating to infringement of trade-marks or passing-off were decided in the light of Section 54 of the Specific Relief Act, 1877, while the registration problem was tackled by obtaining a declaration as to ownership of a trade-mark under the Indian Registration Act, 1908. The present Act which, as pointed out above, has repealed the Indian Merchandise Marks Act, 1889 and Trade Marks Act, 1940, also provides in Section 129 that any document declaring or purporting to declare the ownership or title of a person to a trade-mark other than a registered trade mark, shall not be registered under the Indian Registration Act, 1908.

28. We may now have a quick look at other relevant provisions of the Act.

29. Section 4 provides that Central Govt. shall appoint a person as Controller-General of Patents, Designs and Trade Marks who shall be the Registrar of Trade Marks under the Act. The functions of the Registrar, as are authorised by him, can also be performed by such other persons as the Central Government may appoint. Thus, there is an element of plurality in the sense that the functions of the Registrar can be performed by more than one person.

30. Section 5 provides for the establishment of a Registry known as Trade Marks Registry, with a Head Office and Branch Offices at such places as the Govt. may think fit.

31. Under Section 6 read with Section 7 of the Act, a Register of Trade Marks, in two parts, namely, Part A and Part B, is to be maintained with the original Register kept at the Head Office of the Trade Marks Registry and copies thereof at the Branch Offices. All registered Trade Marks with the names, addresses and descriptions of the proprietors, and all notifications of assignments are to be entered in that Register. Section 9 indicates the requisites for registration of a Trade Mark in Part A or Part B. Sub-section (5) of Section 9 gives guidelines to the TRIBUNAL to follow in determining one of the relevant criteria for that purpose.

32. There is a prohibition contained in Section 12 on the registration of a Trade Mark which is identical or deceptively similar to an already registered mark except as provided in sub-section (3) thereof which authorises the Registrar to permit the registration by more than one proprietor of Trade Marks which are identical or nearly resemble each other (whether any such Trade Mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations as he may think fit to impose.

33. Section 10(1) provides that a trade mark may be limited wholly or in part to one or more specified colours, and any such lamination shall be taken into consideration by the "TRIBUNAL" while deciding the distinctive character of the trade mark.

34. Section 17 contains the provision for "Registration of Trade Mark subject to disclaimer" and provides that the TRIBUNAL, in deciding whether the Trade Mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the TRIBUNAL holds him not to be entitled, or make such other disclaimer as the TRIBUNAL may consider necessary for the purpose of defining the rights of the proprietor under the registration.

35. Chapter III of the Act deals with the procedure for and duration of registration. Section 18 deals with the making of an application for Registration of a Trade Mark either in Part A or Part B of the Register. The application has to be made to the Registrar though filed in the office of the Trade Mark Registry within whose territorial limits the principal place of business of the applicant, or in the case of joint applicants, whose name is first mentioned, is situate. The Registrar may either accept or refuse the application or accept it with conditions. Section 19 empowers the Registrar to withdraw his acceptance if it was given in the circumstances enumerated in Clauses (a) and (b) of the section.

36. Where an application has been accepted either absolutely or subject to certain conditions and limitations, it has to be advertised (See : Section 20), though the Registrar may advertise it even before its acceptance in certain situations contemplated by that section. Under Section 21, Notice of Opposition may be given to the Registrar by any person opposing registration and the applicant may, in reply thereto, file a counter-statement. Thereafter the Registrar is required, after giving an opportunity of hearing to the applicant and his opponent, to decide whether registration is to be permitted absolutely or subject to such conditions or limitations as he may deem fit to specify. Then comes the stage of registration of the Trade Mark under Section 23 which provides that if the application is not opposed and the period of filing "opposition" has expired or the "opposition" has been decided in favour of the applicant, the Registrar shall register the Trade Mark either in Part A or Part B of the Register and issue a Certificate of Registration.

37. Registration of a Trade Mark is done initially for a period of 7 years which can be renewed from time to time in accordance with the provisions of Section 25. The renewal can be obtained by making an application to the Registrar in the prescribed manner within the prescribed period and on payment of the prescribed fee. The renewal will be for another period of 7 years. Sub-section (3) of Section 25 provides that the Registrar, at the prescribed time before the expiration of the last registration of the Trade Mark, shall send a notice to the registered proprietor of the date of expiration and the conditions as to payment of fees upon which a renewal of registration may be obtained. If, at the expiration of the time prescribed in that behalf, those conditions have not been duly complied with, the Registrar may remove the Trade Mark from the Register. But the Trade Mark can be restored and it can be renewed provided an application is made within one year from the expiration of the last registration and provided the Registrar is satisfied that it would be just so to do. Once a Trade Mark has been removed from the Register for failure to pay the fee for renewal, it would, nevertheless, be deemed to be a Trade Mark already on the Register for a period of one year for purposes of any application for registration of another Trade Mark, unless the "TRIBUNAL" is satisfied either :

38. Chapter IV of the Act deals with the effect of the registration. This chapter deals with the rights conferred by registration, infringement of Trade Marks and also defines the acts which do not constitute infringement.

39. Chapter V deals with assignment and transmission, while Chapter VI deals with the use of Trade Marks and Registered Users.

40. Chapter VII deals with Rectification and Correction of the Register, which begins with Section 56, around which the bulk of arguments made by both the sides, nay three, as Registrar has also addressed us, has revolved. This section also speaks of the "TRIBUNAL", "Registrar" and the "High Court".

41. Chapter VIII deals with Certificate of Trade Marks. Chapter IX contains "Special Provisions for Textile Goods", while Chapter X deals with offences, penalties and procedure therefor. Chapter XI contains the miscellaneous provisions which, inter alia, provides that suits for infringement etc. of the Trade Marks or relating to any right in a registered Trade Mark or for passing off arising out of the use by the defendant of a Trade Mark, which is identical with or deceptively similar to the plaintiff's Trade Mark, whether registered or unregistered, shall not be instituted in any court inferior to a District Court. (See : Section 105). Section 106 specifies the reliefs which may be granted in suits for infringement or for passing off.

42. Under Section 107 of the Act, any application for rectification of Register has to be made, in the circumstances specified therein, only to the High Court and not to the Registrar. The provisions of this section are quoted below :-

43. Since a reference in this section has been made to Sections 46 and 47 of the Act, they are reproduced below :-

44. Section 108 lays down the procedure and the manner in which the application for rectification shall be dealt with by the High Court. It provides as under :-

45. Section 109 makes provision for an appeal to the High Court against any order or decision of the Registrar under this Act or the rules made thereunder. The appeal is to be heard by a single Judge with a further appeal before the Division Bench of the High Court. Sub-section (6) of Section 109 provides that in disposing of the appeal, the High Court shall have power to make any order which the Registrar could make under the Act.

46. Section 111 provides for the circumstances in which proceedings in a suit are to be stayed. It is quoted below :-

the court trying the suit (hereinafter referred to as the court), shall, -

47. It is in the background of the above provisions that the question relating to the jurisdiction of the "Registrar" and the "High Court", which individually and separately constitute "TRIBUNAL" within the meaning of Section 2(1)(x), has to be considered.

48. The functions and extent of jurisdiction of the Registrar and that of the High Court which, incidentally, has also been constituted as the Appellate Authority of the Registrar, have been distinctly set out in different provisions of the Act. There are, however, certain matters for which jurisdiction has been given to the "TRIBUNAL" which, by its definition, includes the "High Court" and the "Registrar" and, therefore, the question is "can both be said to have "concurrent" jurisdiction over matters as are set out, for example, in Sections 9, 10, 26, 45, 46, 47 and 56".

49. If the proceeding is cognisable both by the Registrar and the High Court, which of the two will have jurisdiction to entertain such proceeding to the exclusion of the other or the jurisdiction being concurrent, can the proceeding go on simultaneously before the High Court and the Registrar, resulting, may be, in conflicting decisions at the end, is a question which seems to be answered by the words "before which the proceeding concerned is pending" occurring in the definition of "TRIBUNAL" in Section 2(1)(x) of the Act. Let us test whether the answer is correct.

50. 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".

51. 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 an application made in the prescribed manner by a "person aggrieved". The High Court or 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 Register. 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.

52. 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).

53. The Registrar and the High Court have also been given the jurisdiction under this section to order that a Trade Mark registered in Part A shall be shifted to Part B of the Register.

54. An order of rectification, if passed by the High Court, is implemented by the Registrar by rectifying the Register in conformity with the order passed by the High Court.

55. The extent of jurisdiction conferred by Section 56 on the Registrar to rectify the Register, is, however, curtailed by Section 107 which provides that an application for rectification shall, in certain situations, be made only to the High Court. These situations are mentioned in sub-section (1) of Section 107, namely, where in a suit for infringement of the registered Trade Mark, the validity of the registration is questioned by the defendant or the defendant, in that suit, raises the defence contemplated by Section 30(1)(d) in which the acts which do not constitute an infringement, have been specified, and the plaintiff in reply to this defence questions the validity of the defendant's Trade Mark. In these situations, the validity of the registration of the Trade Mark can be determined only by the High Court and not by the Registrar.

56. Section 107 thus impels the proceedings to be instituted only in the High Court. The jurisdiction of the Registrar in those cases which are covered by Section 107 is totally excluded. Significantly, Section 107(2) provides that if an application for rectification is made to the Registrar under Section 46 or Section 47(4) or Section 56, the Registrar may, if he thinks fit, refer that application, at any stage of the proceeding, to the High Court.

57. Similarly, under Section 111 of the Act, in a pending suit relating to infringement of a Trade Mark, if it is brought to the notice of the Court that any rectification proceedings relating to plaintiff's or defendant's Trade Mark are pending either before the Registrar or the High Court, the proceedings in the suit shall be stayed pending final decision of the High Court or the Registrar. Even if such proceedings are not pending either before the Registrar or the High Court, the trial court, if prima facie satisfied that the plea regarding invalidity of plaintiff's or defendant's Trade Mark is tenable, may frame an issue and adjourn the case for three months to enable the party concerned to apply to the High Court for rectification of the Register. If within three months, the party concerned does not approach the High Court, the plea regarding invalidity of Trade Mark would be treated as abandoned but if such an application has been given hearing, the suit would be stayed awaiting final decision of the High Court. The finding of the High Court would bind the parties and the issue relating to the invalidity of Trade Mark would be decided in terms of those findings.

58. 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.

59. 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" inasmuch 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 the 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".

The argument is fallacious.

60. Learned counsel for the Chinar Trust is trying to give a measure of importance to the punctuation mark "comma", more than it deserves. If "comma" were that important, there, incidentally, is another "comma" before and after the word "High Court". This "comma" obviously separates the phrase "before which the proceeding concerned is pending" from the word "High Court" with the result that this phrase becomes applicable both to "High Court" and the "Registrar". The word "concerned" in this phrase is also of significance inasmuch as the word "TRIBUNAL" has been used in different sections in relation to different proceedings. At some places in the Act, all the three words, namely, "Registrar", "High Court" and "Tribunal" have been used which indicate that if the proceeding under that particular provision is pending before the "Registrar" then on account of that proceeding, the Registrar becomes the "TRIBUNAL". So also, if the proceeding is pending before the High Court then that proceeding makes the High Court a "TRIBUNAL". It is in that sense that the word "proceeding concerned" has to be understood.

61. Not content with the rejection of the above contention, learned counsel for the respondent invoked another rule of English grammar relating to the use of pronouns "which" and "whom" and contended that if the phrase "before which the proceeding concerned is pending" were meant to apply to the "Registrar", the Legislature would have used the pronoun "whom" instead of "which" and the phrase would have read "before whom the proceeding concerned is pending." The High Court, it is contended, is an inanimate object and, therefore, the pronoun "which" has been used.

62. "Pronoun" means "for-a-noun". It is defined as a word used "instead of a noun". The Pronoun with which we are concerned in this case is the relative pronoun, namely, the pronoun "WHICH", which, incidentally, can be used in many other forms, namely, as an interrogative pronoun, an interrogative adjective, or as a relative adjective. Its use is not limited to inanimate objects or animals but it can also be used for "people" as explained in A Practical English Grammar (A. J. Thomson and A. V. Martinet - Fourth Edition). The two Nouns, namely, the "Registrar" and the "High Court", used in the definition of "TRIBUNAL" are followed by the relative pronoun "which" and, therefore, the phrase "before which the proceeding concerned is pending" would relate to both the Nouns, namely, the "Registrar" and the "High Court". This rule of Grammar which was sought to be pressed into aid by the learned counsel for the respondent is, therefore, of no use to him.

63. Moreover, in a situation of this nature, mere rule of Grammar would not lead to correct interpretation of the definition which has to be analysed, as we have already done, in the background of those provisions in which the word "TRIBUNAL" has been used together with the purpose for which it has been used keeping in mind the overall scheme of the Act.

64. Learned counsel for the respondent then cited before us a decision of the Calcutta High Court in Standard Pharmaceuticals v. Dy. Registrar of Trade Marks [Appeal No. 213 of 1970 decided on 18.2.1975 by Sabyasachi Mukherjee, J. (as His Lordship then was)], in which it was, inter alia, observed as under :-

65. As against the above decision, there is a decision of a Division Bench of the same High Court in Registrar of Trade Marks and another v. Kumar Ranjan Sen and others, AIR 1966 Calcutta 311, in which it was laid down as under :-

66. This decision has been considered by the learned single Judge in Standard Pharmaceutical's case (supra). In our opinion, both the decisions are in line with the view that we have taken in the instant case on the interpretation of the definition of "TRIBUNAL". But the point before us is a little different as we are concerned essentially with the extent of jurisdiction of the "Registrar" and the "High Court" vis-a-vis other provisions of the Act.

67. In the instant case, it has already been indicated above that when the Assistant Registrar of Trade Marks dismissed appellant's opposition to the registration of respondent's Trade Mark by its order dated 12.8.1992, it filed an appeal in the Delhi High Court, which was admitted on 01.02.1993 and has since been registered as C.M. (Main) 414 of 1992. Thereafter, on 04.08.1993, the appellant filed a rectification petition under Sections 45 and 46 of the Act for removing the entry relating to the Trade Mark for which Registration Certificate was granted to the respondents on 30.11.1992. The appellant has also filed a suit for passing-off (Suit No. 1705 of 1994) in the Delhi High Court against the respondents in which an order of temporary injunction has been granted in favour of the appellant which has been upheld by the Division Bench of the High Court as also by this Court. In that suit, an amendment application has also been filed so as to include the ground of infringement of the appellant's Trade Mark but that application has not yet been disposed of. It is, however, obvious that if the application is allowed, the amendments will relate back to the date of the application, if not to the date of plaint.

68. In view of the pendency of these proceedings in the High Court and specially in view of Section 107 of the Act, the Registrar could not legally issue any suo motu notice to the appellant under Section 56(4) of the Act for cancellation of the Certificate of Registration/Renewal already granted. The appeal is consequently allowed and the show-cause notice issued by the Deputy Registrar (respondent No. 2) on 26th of September, 1997 under Section 56(4) of the Act is hereby quashed. The appellants shall be entitled to their costs.

Appeal allowed.